Consultation document – Transfers, change of name and related documents

Patent applications and patents are intellectual property that can be sold, licensed or used to negotiate funding, venture capital or other forms of financing. Registering or recording these transactions, as well as changes to the names of applicants or patentees, in a timely manner allows the Patent Office to issue patents to the correct owners and maintain accurate records.

While it is not mandatory for applicants or patentees to register an assignment, a transfer or a change of nameFootnote 1 with the Patent Office, there are benefits to doing so in a timely manner. Registering an assignment or a change of name on a patent application ensures that the patent is granted to the correct person. Registering an assignment, a transfer or a change of name after a patent has been issued ensures that the Patent Office's records are up to date for third parties to easily recognize who owns the rights to the invention.

Current state

The current Patent Act and Rules accounts for these transitions and provides the authority for the Patent Office to:

  1. Register an assignment
  2. Register a change of name
  3. Register any document relating to a patent or application

Under the current Patent Act and Rules the process of registering an assignment or a change of name document with the Patent Office can be onerous. In order to register an assignment, the applicant or patentee must request the registration of the assignment, provide a copy of the assignment document along with an affidavit or other proof that the assignment has been signed and executed.

Registering a change of name is also onerous. The applicant or patentee must request registration of the change of name document and provide proof in the form of an affidavit, statutory declaration or a copy of the change of name document to show that the change of name has occurred.

It is also possible to register documents relating to a patent application or a patent on a file upon request.

Each registration (assignment, change or name, or document) requires payment of the $100 fee.

Proposed new state

Recent amendments to the Patent Act, which are not yet in force, updates the term 'assignment' to 'transfer' as well as updating terminology for 'registering' of transfers and changes of name to 'recording'. In the future, it is proposed that the Patent Office would:

  • Record the fact of the transfer rather than register the transfer document
  • Accept the request to record a transfer without the actual document, an affidavit or a statutory declaration if the request is made by the patentee or applicant
  • Accept the request to record a transfer by the transferee (the person or company who received the rights) if they provide evidence that the transfer has occurred
  • Remove the recording of a transfer of either a patent or patent application upon receipt of evidence that the transfer should not have been recorded
  • Accept the request to record a change of name without the actual document, affidavit or statutory declaration. The request to record a change of name must come from the applicant or patentee or anyone authorized to act on their behalf.

The proposed amendments to the Patent Rules will set out the specific requirements for registering documents and recording transfers and name changes.

Recording of transfers and name changes and registration of documents

1. Recording a transfer

Under the proposed Patent Rules, a request to record a transfer by the applicant or patentee will only require:

  • the request to record the transfer
  • the name and the postal address of the transferee
  • payment of the $100.00 fee

If a request to record a transfer is submitted by the transferee (and not the currently recognized applicant or patentee), the transferee will need to provide evidence of the transfer to the Commissioner.

2. Recording a name change

Changes of name that do not change the identity will be recognized on the request of the applicant or patentee under the proposed amendments to the Patent Rules. Changes of name are distinct and separate from the correction mechanisms for applicants under the Rules (see discussion paper on Corrections). There will no longer be a requirement to provide evidence of the change of name by way of statutory declaration or affidavit. The document effecting the change of name will also not be required. Payment of the $100.00 fee will still be required.

3. Related documents

Clients will continue to register documents in the same way they do now (other than a transfer or change of name document). The Commissioner will register any document relating to a patent or a patent application when requested and payment of the $100.00 fee.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References:

Bill C-43:

  • Transfers – Section 49 (not yet into force)

Proposed patent rules:

  • Related documents – Section 125
  • Name change – Section 126
  • Request to record transfer – Section 127

Annex: Comparison of requirements for recording of transfers and changes of name and registration of documents

Request to record transfer (from applicant or patentee)
N/A Current state Proposed new state
Request to register an assignment/record a transfer Apply Apply
Copy of the assignment /transfer document Apply Does not apply
Affidavit of witness or other proof that the transfer was executed Apply Does not apply
Name and postal address of transferee Apply Apply
Fee ($100) Apply Apply
Request to record a transfer (from transferee)
N/A Current state Proposed new state
Request to register/record an assignment/transfer Apply Apply
Copy of the transfer document Apply Does not apply
Affidavit of witness or other proof that the transfer was executed Apply Does not apply
Evidence of the transfer Does not apply Apply
Name and postal address of transferee Apply Apply
Fee ($100) Apply Apply
Name Change
N/A Current state Proposed new state
Request to register/record a change of name Apply Apply
Evidence (statutory declaration, affidavit or copy of the document) to show the change of name occurred Apply Does not apply
Fee ($100) Apply Apply
Registering related documents
N/A Current Patent Act/Rules Future Patent Act/Rules
Request to register a document Apply Apply
Document to be registered Apply Apply
Fee ($100) Apply Apply