ARCHIVED — Registration/Recordal of assignments and other transfers

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NOTE: This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/right holder to decide how to proceed with respect to a particular application or other matter.

The documents effecting assignments and other transfers (herein “assignments”) are often complex and diverse, frequently reaching beyond IP rights.  Any ambiguity in these documents necessitates a significant effort from CIPO in order to ensure that the corresponding assignments are registered/recorded accurately.

Therefore, in order to assist CIPO in its effort to simplify and expedite this process while maintaining a high quality standard, CIPO has developed new forms for requesting registration/recordal of assignments and strongly recommends their use. 

The forms will be part of the record and ensure that all the required information has been submitted to CIPO. CIPO will use the content of the forms for registration/recordal of the assignment and will not identify or resolve discrepancies between the forms and any supporting documents submitted therewith. It is important to note that CIPO does not assess the validity/legality of the assignment document(s).

Please note that the assignment documents submitted may be made available to the public. Parts of these documents may display personal information that is not relevant to the assignment being registered/recorded and the Office will accept that requesters omit or black out any such information. 

In the case where the forms are not used, CIPO urges any requester to submit clear instructions. More specifically, in addition to the prescribed fee, a request shall include:

For Patents

The following information, ideally on a cover sheet:

• the name and complete address of the assignee(s).
• clear indication of the application or patent number against which the assignment is to be registered.
• 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.

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 sections 49 and 50.  The following proofs are all considered to be satisfactory:

• 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.
• a similar statement of a subscribing witness;
• the signature of a witness or the presence of a corporate seal on the assignment document;
• a document showing that the assignment was registered in a patent office of another country.

For Trade-marks

The following information:

• the name and mailing address in Canada for the new owner/applicant (see paragraph 30(g) of the Trade-marks Act for representative for service information);
• the trade-mark(s) and registration(s) or application(s) number(s) for each trade-mark affected by the transfer;
• evidence establishing that the transfer has occurred. Such evidence may be:
  1. the completed form, OR
  2. an affidavit stating that the transfer has occurred OR
  3. a copy of a document, or portion thereof, effecting the transfer; and
• the prescribed fee (Tariff of Fees - Item 6)

For Industrial Designs

The following information, ideally on a cover sheet:

• the name and complete address of the new owner(s).
• clear indication of the Industrial Design application or registration number against which the assignment is to be recorded.
• clear indication whether all or a particular portion of the interest in a right is being assigned.

The original or a copy of the original assignment document, to satisfy the requirements of subsection 13(1) of the Industrial Design Act.

Copyrights*

The original instrument, a certified copy of it or other evidence of the assignment must be submitted as per subsection 57(1) of the Copyright Act. 

Also, as per section 6 of the Copyright Regulations, the following information, ideally on a cover sheet:

• the names and addresses of the assignor and assignee or the licensor and licensee,
• a description of the interest being granted by assignment or licence, and
• 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.

*  It is worthwhile noting that a request for the registration of an assignment for copyright can be done online.