Are IP renewals together with IP assignments worth it?

The trademark renewal process could be approached in different ways. When assigning intellectual property (IP) assets to a new owner, the relevant records must be amended so as to reflect this change in ownership. Many people instinctively think that it is easier to wait until the term for protection is up and record the IP assignment at the same time as the renewal.

However, waiting until the renewal date is not necessarily always free from complications. A company wishing to assign IP assets will need to consider whether waiting until the renewal is worth the potential difficulties it can cause, or whether the best course of action is to assign the IP as soon as possible.

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Why wait until trademark renewal?

A commonly shared belief is that waiting until the renewal date before assigning IP will save both work and money. However, this is often not the case, and a company wishing to wait until the renewal must weigh up the potential costs of doing so against the benefits.

Benefits

Generally, companies who defer IP assignments until the renewal are looking to delay undertaking a potentially lengthy and bureaucratic process in the interests of making savings.

Although the process for IP assignments differ according to territory, generally filing these changes involves an undertaking to update any relevant details on the records concerned. Obviously, the completion of such administrative documents can embody a dreaded process for some, and it is understandable that they would wish to delay this process as long as possible.

Similarly, this process has been viewed as requiring less work if completed along with the renewal, as filing these two updates together arguably halves the work required.

It is also seen as financially desirable to postpone IP assignments until renewal as it is believed that doing so will be cheaper, both in terms of official and agent fees, as owners hope to combine the two processes into one.

However, this desire to postpone the process does not necessarily make it any easier or cheaper to complete, in fact, it may make matters worse.

Disadvantages

Despite the common misconception that the process amounts to less work if completed with the renewal, delaying only serves to extend the time it takes and can, potentially, create more work for the owner.

Indeed, despite delaying the process, the requirements of IP assignments themselves do not diminish over time. Choosing to delay this process will not lower the workload.

As well as taking a much longer time to complete, delaying the IP assignments may interfere with any existing IP rights. Discrepancies on IP records mean that owners may struggle to enforce their ownership rights against infringing parties, as well as encountering potential difficulties with ongoing license or royalty agreements.

These interferences, in turn, create more work than would result from merely assigning the IP promptly.

In addition to potentially increasing the workload, choosing to delay assignments may prove to be more expensive. Contrary to belief, assigning IP together with renewal does not mean that only one fee is paid – the two processes remain separate and are charged as such.

Choosing to wait until renewal will mean that, in addition to paying the official and agent fees for renewal, the parties will also be charged for any fees relating to filing the assignment. Far from being cheaper, filing the assignment along with the renewal is of equal cost to filing immediately and completing the renewal at a later date.

Indeed, choosing to delay the filing of an assignment may result in the payment of late fees – meaning that postponing the process is potentially more expensive than simply completing it promptly.

Worth it?

When determining whether assigning IP together with the renewal is worth it, the company concerned must weigh the benefits against the potential costs of doing so. The outcome of this balancing act will depend upon the full circumstances of each case, particularly the specific terms of the assignment and how far away the renewal date is.

However, given the difficulties which can arise from waiting to file IP assignments, including increasing the workload, difficulties with existing rights and licenses, and increasing costs, it is likely that, save in certain circumstances, it is beneficial to file assignments promptly and not to wait for the renewal.

Regardless, due to the potentially complex nature of filing IP assignments, it is always advised that companies seek professional IP advice to ensure that they achieve the best possible results.