New Canadian Trade-marks Office Practice Notice Consultation Regarding Assignments and Transfers; Comments due January 20, 2011

The Canadian Intellectual Property Office (CIPO) is requesting comments, due January 20, 2011, on a proposed new Practice Notice regarding the required documentation to record assignments, ownership transfers and licenses for copyrights, industrial designs, patents and trade-marks.

The proposed Practice Notices sets out two mechanisms for requesting that a copyright, industrial design, patent or trade-mark’s ownership be updated, or a license be recorded against a copyright or industrial design registration. Those mechanisms are outlined below.

I. The person or its agent requesting that the ownership update submits the appropriate form developed by CIPO, in addition to the prescribed filing fee. In the proposed Practice Notice, CIPO advises it will rely only on the information in the submitted form if there is a discrepancy between the form and any supporting documents submitted with the request.

II. Submit specific information documentation outlined in the proposed Practice Notice in addition to the prescribed filing fee. The documentation and information required for updating the ownership of copyright, industrial designs, patents and trade-marks is outlined below.

A. Copyrights

1. The original assignment, a certified copy of the assignment or other evidence of the assignment as required by Copyright Act subsection 57(1).

2. The following information required by Copyright Regulations section 6, ideally on a cover sheet:

a. The names and addresses of the assignor and assignee; and

b. A description of the interest being granted by the assignment; and

c. The title of the work, performer’s performance, sound recording or communication signal, and if available, the registration number of that work, performer’s performance, sound recording or communication signal.

A license agreement can also be recorded against a copyright registration, provided the foregoing requirements applicable to copyright assignments are satisfied.

B. Industrial Designs

1. The original or a copy of the original assignment document as required by Industrial Design Act subsection 13(1).

2. The following information, ideally on a cover sheet:

a. The name and complete address of the new owner(s).

b. The Industrial Design application or registration number against which the assignment is to be recorded.

c. Whether all or a particular portion of the interest in an industrial design is being assigned.

A license agreement can also be recorded against an industrial design registration, provided the foregoing requirements applicable to industrial design assignments are satisfied.

C. Patents

1. The assignee’s/assignees’ name(s) and complete addresses.

2. The application/patent number against which the assignment is to be registered.

3. Specific information with respect to which rights are being assigned and, when applicable, whether all or a particular portion of the interest in a right is being transferred.

4. The original or a copy of the original assignment document and either an affidavit or another proof satisfactory to the Commissioner that the assignment has been signed and executed as per Patent Act sections 49 and 50. For e.g.:

a. A statement from the requester or the agent on file stating that, to their knowledge, the document effecting the transfer has been signed and executed by all parties; or

b. A similar statement of a subscribing witness; or

c. The signature of a witness or the presence of a corporate seal on the assignment document; or

d. A document showing that the assignment was registered in a patent office of another country.

D. Trade-marks

1. The name and mailing address for the new owner/applicant, along with the name and address of the new owner/applicant’s representative for service if the new owner/applicant is 2. outside of Canada.

3. The trade-mark(s) and registration(s) and/or application(s) number(s) for each trade-mark affected by the transfer.

4. Evidence establishing that the transfer has occurred. Such evidence may be:

a. The completed form reference in (I) above; or

b. An affidavit stating that the transfer has occurred; or

c. A copy of a document, or portion thereof, effecting the transfer.

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