Cannot I apply for transfer registration without this? About the “Deed of Assignment”

I’m looking into the procedure for applying for registration of transfer of trademark rights, but it seems that I need a “Deed of Assignment”. What kind of document is that?

The “Deed of Assignment” is an important document that must be submitted to the Japan Patent Office at the same time as the application for transfer registration. If it is incomplete, there is a possibility that an amendment order will be issued or the application will be rejected, so please check it before proceeding!

In the case of [registration of transfer by assignment], a “Deed of Assignment” is required.
This article explains what kind of information should be included.

Please refer to the following guide page for more information on “Application for Transfer Registration.”

What is a Deed of Assignment?

Intellectual property rights, including trademark rights, can be assigned to others.
When intellectual property rights are assigned to someone else, an “Application for Registration of Transfer” must be submitted to the JPO, and when you submit the application, you must attach a document certifying that the rights have been assigned from Company A to Company B. This is the “Deed of Assignment”.

In the case of a partial assignment of rights, it is a “Deed of Partial Assignment”, and in the case of a partial assignment of co-ownership of rights, it is a “Deed of Partial Assignment of Equity”.

Also, for a trademark under the examination, the rights created by an application for trademark registration can be transferred through an assignment. In this case, a “Deed of Assignment” is submitted to the JPO together with a “Notification of Change of Applicant’s Name”.

How to describe a Deed of Assignment

An example of how to describe a Deed of Assignment is available on the JPO website.
There are no detailed rules on how to prepare the form, so you can prepare it by yourself using the following as a sample.
The “Patent No. 000000” should be changed to the registration number of the trademark, and the rest of the information is the same.

• Stamps:
  “Revenue stamps” are to be affixed, and stamped with an allotment seal. The cost of stamps varies depending on the amount of the transfer, so please confirm the cost.
• Submission of original:
  Original documents must be submitted (those prepared for submission to the Japan Patent Office are acceptable).
  If a photocopy is submitted, a notary public must certify that it does not differ from the original.
• Date:
  Enter the date on which the assignee and assignor certify that they have assigned their trademark rights. If no date is provided, the date of creation will be considered the date of transfer or effective date.
• Information on the assignee:
  Address (place of residence)
  Name
  Representative’s name
• Trademark registration number:
  Please enter the trademark registration number of the trademark right pertaining to the deed of assignment, e.g., “No. 00000.
• Information on the assignor:
  Address (place of residence)
  Name
  Representative’s name

Although the JPO has eliminated the need for seals in various procedures in order to improve business efficiency, etc., the seal by the assignor will continue on the Deed of Assignment. Please affix the seal of the representative of the applicant.
If the same legal entity has applied to the JPO in the past, the representative seal must be the same as the seal used at that time.

Regarding an independent application

As a general rule, an application for transfer registration must be filed jointly by the registered right holder (the person who receives the right) and the registered owner (the person who transfers the right).
However, in general, the registered right holder often performs the procedure.
If a letter of consent (independent application consent) by the registered owner to the effect that the registered right holder may file the application alone attached, the independent application by the registered right holder will be accepted.

This consent can also be included in the Deed of Assignment.
If the consent for independent application has been obtained, a sentence such as “I hereby consent, without objection, to your independent application for registration of transfer.” to the above-mentioned deed of assignment.

Of course, you may also prepare a separate “Letter of Consent for independent application” and attach it to the application for transfer registration together with the deed of assignment.

Other procedural notes

• In the case of procedures by the representative
  The application form and required documents will be changed or added. It is recommended that the application be made in writing by a representative.

• When submitting the attached documents in a foreign language
  In addition to the original document, a Japanese translation must be submitted.

• In the case of omitting the submission of the attached document by cited document
  When two or more applications for registration are filed at the same time, and the documents to be attached to each application are identical, or when documents already submitted are used as references and the submission of attachments is omitted, the following information must be provided.

(1) XXXX 1 copy
(Since there is no change in its contents,) The said document shall be omitted in favor of XXXX attached to the application for registration of transfer of patent right pertaining to Patent No. 0000 filed on the same date (or dated DD/MM/YYYY).

I see that this is an essential document for a transfer registration application! I have to make sure that the contents of the description are correct. I’ll have a patent attorney check it once to make sure there are no omissions.

Summary

Although it is possible to prepare the “Deed of Assignment” by yourself, I think most of you are not familiar with it. In addition, if there is a deficiency in the description and an amendment order is issued, additional effort and expense will be incurred.
If you are concerned about the procedures, you can leave everything from the preparation and confirmation of the deed of assignment to the application procedures for transfer registration to our trademark attorneys. Please feel free to contact us using the inquiry form.