Changes in patent description items - more than just changes

In the process of patent operation, various business changes or measures may affect the survival and validity of patents. For example, when there is a new license, patent pledge or ownership transfer (such as assignment, inheritance or merger), the patent owner often does not forget to register the corresponding changes with the Patent Office. However, when a company changes its name or address, the change of patent information is often ignored. Unfortunately, this neglect may have serious consequences for the company.

Importance of Change Registration

Patent recordal refers to the process of updating patent-related records at the national patent office to ensure that patent rights remain valid and enforceable in the face of third-party infringement. Any change in information involving patent applicants or rights holders, or changes in authorized third-party rights (such as licenses or pledges), needs to be registered. If it is not updated correctly and in a timely manner, it may affect the relevant rights of all parties.

Even the most basic administrative changes (such as a change of company address) must be registered. Failure to update may have serious consequences if the patent needs to be relied upon in legal proceedings at a later date.

During the patent application stage, the agent information change procedure must also be handled promptly at the Patent Office so that official correspondence can be sent to the correct contact person and address. Usually, the Patent Office will only send correspondence to its current address on file. If the recipient does not respond, the Patent Office is not obliged to investigate whether the address has been changed, and the patent or application may even be deemed abandoned. Therefore, it is recommended to entrust a professional agency to handle related matters.

The same applies to annual fee payment. If the annual fee is managed internally by the company, the address has not changed and you may not receive payment reminders, which may eventually lead to loss of rights.

Patent transfer: a key step in mergers and acquisitions or sales

Patent address information not being updated in a timely manner can also cause problems in mergers and acquisitions or asset sales. In order for the buyer to complete the registration of the change of ownership, the seller's address must be kept up to date in the national patent register. In some countries (such as South Korea and Greece), the transfer of ownership can only be registered after the change of address is registered, which may result in additional fees and time costs. In some countries, failure to register a change of address may even result in the loss of rights.

Address change: Far from a simple operation

To update the address in a registered patent or patent application, you must apply to the patent office of the corresponding country. For example, in France it is INPI, in the UK it is UKIPO, and in the United States it is USPTO. It is important to note that simply changing the address at the local business registry (such as Companies House in the UK or RNCS in France) will not automatically be synchronized with the relevant IP office records - even if the two registries are actually affiliated with the same entity. Therefore, separate measures must be taken to apply for changes to the IP office separately.

After completing the changes, you will also need to register the updated information in each country separately, especially the countries where the patent application or patent has been granted, effective or extended.

Patent offices in various countries usually require proof of change from business registration agencies. Depending on the country, the relevant proof may require scanned copies, notarized copies, apostilles, etc. Some countries may also require more additional documents, such as a power of attorney.

Advance preparation is essential

Before making a name or address change, special attention should be paid to the PCT international phase and European national phase processing. If arranged properly, the change can be registered centrally through WIPO or EPO, avoiding the high costs of handling the change procedures in each country separately.

• Since PCT applications will enter multiple national phases in the subsequent procedures, it is recommended to handle the address change at WIPO as early as possible, and preferably before entering the national phase. In this way, the relevant national patent offices will directly adopt the updated new address, avoiding the need to handle the change procedures one by one in each country, saving both time and costs.
• For European patents, according to Article 85 of the European Patent Convention, the EPO accepts changes to patents that have been granted or are in the process of being applied for. However, after the EP is granted, the registration information can only be modified during the opposition period or during the opposition procedure, that is, the change procedure must be completed within nine months after the grant, or during the opposition period.
• The EPO's change registration is valid in many member states. Some countries will automatically accept the changed information (such as France and Spain); other countries require submission of EPO forms to confirm the change (such as Germany) or payment of certain fees (such as the United Kingdom and the Netherlands).
• Some other countries do not accept changes in the EPO records at all, and applications must be submitted separately at their own patent offices. These countries are still in the minority.