Consideration is not necessary in order to validly assign the rights. Even if Assignment is by way of gift, the terms will still be enforceable between the parties. Whereas consideration is not necessary for a valid assignment, it is required for recording the assignment at the patent registry. However, Assignment Agreement is not required to necessarily cover consideration as it can be declared or disclosed separately from Assignment Agreement with the request for recording assignment.
Consideration can be a nominal amount and there is no specific minimum amount. for recording an assignment at the patent registry?
No, assignment should be done mutually and the express acceptance of assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.
Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.
As a rule, each co-owner has the right over their patent rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over patent rights. In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of the assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against Assignee.
No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent & to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the patent registry.
Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the Patent Register. In other words, it is not possible to put forward the rights on patent against third parties acting in good faith unless and until they are duly entered in the Patent Register.
Yes, confirmatory/declaratory assignment sufficient to record an assignment in the registry
Yes, consideration should be still declared or disclosed in case of a confirmatory/declaratory assignment. Consideration can be either declared or disclosed in the confirmatory/declaratory Assignment Agreement, or declared or disclosed with the request for assignment recordal.
No actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.
Yes, a Turkish translation approved by a sworn translator is required for recording assignment.
If European patent is assigned before EPO during the Opposition Period or Opposition Proceedings, assignment can be recorded before TURKPATENT by submitting a simple copy of EPO Form 2544 (no translation, notarization, certification or legalization required) without requiring Assignment Agreement and paying official fees for assignment. Please note that assignment before EPO does not result in national recordal automatically.
Assignments should be individually handled for each case (case by case) and number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the Patent Office.
Power of Attorney is not required for recording an assignment.
There is no deadline and requirement to record assignment of the rights in the patent registry to keep patent in force. Patents remain effective independently from the assignment.
Yes, official fees are payable for recordal of an assignment. If there are more than one patent within Assignment, official fees should be paid for each case separately.
Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.
Yes, it is acceptable provided that Assignment refers to Turkish patent or patent application numbers or European patent numbers therewithin.
Yes, change of ownership due to Assignment is published in Turkish Patent Bulletin.
Yes, a pending patent application can be assigned; there is no requirement for grant or registration of application for the assignment.
In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, ie. courts, chamber of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not drafted in Turkish.
Seizure is not an obstacle to assign the rights of a patent.
Pledge is not an obstacle to assign the rights of a patent.
There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by Assignee will be sufficient. Furthermore, patent or patent application number or numbers subject to Assignment should be listed in Assignment Agreement for validity.
Do you have further questions about patent assignments in Turkey? Please contact us. We will answer your questions as soon as possible.