If your company has bought, sold, or otherwise transferred rights in a Pakistani patent, your transfer is not fully effective until it is officially recorded with the Intellectual Property Organization (IPO) of Pakistan. This is because an assignment of a patent does not become public knowledge or binding upon third-parties (such as subsequent buyers/licensees or IPO itself) merely by virtue of a private agreement between the assignor and the assignee. The relevant forms for recording an assignment at IPO Pakistan are the Form P-24 and Form P-25, below.
Why Recording Assignments of a Patent is Important
A patent is treated as a personal property under the Patents Ordinance 2000. This being so, a patent can be assigned, licensed, or even mortgaged in accordance with the general law of property. However, in the case of a patent, such a transfer of ownership only takes effect upon registration of such a transfer with IPO Pakistan by way of a recordal. This is because the IPO maintains a register of all patents and the relevant details about them (such as proprietor). Until a change in proprietor is noted on the register, any assignment remains a private matter between the assignor and the assignee. In cases of a dispute over the ownership of a patent (e.g., double assignment), an unrecorded assignment would place the assignee in a significantly disadvantaged position vis a vis any subsequently recorded assignment. This is because the unrecorded assignee will not be able to enforce the patent, claim damages, royalties etc. from a third-party assignee, and will not be able to use IPO procedures (such as opposition) to defend or enforce the patent in his or her own right. In short, recording an assignment of a patent is important to protect the buyer’s investment and to keep the IPO records updated and accurate.
Forms P-24 and P-25: Difference Explained
The IPO Pakistan splits the recordal request into two forms depending on who is applying for recordal:
| Form | Purpose | Fee (PKR) |
|---|---|---|
| P-24 | Application for recordal of an assignment, etc., by the assignee | 2,250 |
| P-25 | Application for recordal of an assignment, etc., by the assignor | 2,250 |
Both the assignor and the assignee can apply for a recordal (though in practice, it is normally the assignee who applies for the recordal). However, both the forms require that supporting documentary evidence of the assignment transaction be submitted with the request. This normally includes the assignment deed or the assignment agreement, and the prescribed fee mentioned above. A patent number (or numbers) for the assignment also needs to be provided. The relevant fee schedule for IPO Pakistan can be found here.
How to Apply to Record a Patent Assignment
Here is a brief step-by-step procedure for recording a patent assignment:
- Execute a patent assignment deed between the assignor and assignee, identifying the relevant patent(s) and the parties to the assignment.
- Decide whether you will use Form P-24 (assignment, etc., by the assignee) or Form P-25 (assignment, etc., by the assignor).
- Attach the assignment deed (or a certified copy) to the Form and submit together with the Power of Attorney (if filing through a patent agent) and the required fee.
- Once the IPO has verified your assignment documents, the Patents Register will be updated to reflect the new proprietor of the patent(s) assigned.
Typical scenarios where a patent assignment recordal is needed
A patent assignment recordal with IPO Pakistan is typically needed in cases where a company divests itself of a patent or a patent portfolio (by sale, assignment, or licensing). Similarly, when a start-up assigns its patents to a new parent entity. Or when an inventor assigns his or her rights in a patent to a third-party (such as an employer or a venture capitalist). In all such cases, the assignment must be recorded with IPO Pakistan, in order that the new proprietor may be able to enforce the patent, protect the investment made, and take advantage of the legal protection offered by the patent in IPO procedures.
If you are looking to buy, sell, or restructure ownership of a Pakistani patent, our professionals can prepare the assignment deed, help you file the Form P-24 or Form P-25 (depending on which party you are) and keep you posted regarding the status of your recordal. View our other services related to patent registration in Pakistan, and if you have yet to file a patent application in Pakistan, view our guide to patent an invention in Pakistan.
Frequently Asked Questions
Do I need to record a patent assignment to IPO Pakistan, or is a private agreement enough?
An assignment between a private party does not update the records of the IPO. Whereas recording the assignment with the IPO updates the records to show that the proprietor of the patent is now different. This is important for various reasons, including enforcing the patent against third-parties.
What is the difference between Form P-24 and Form P-25?
Both the forms are for recording assignments, but the P-24 is by the assignee whereas the P-25 is by the assignor.
How much does it cost to record a patent assignment in Pakistan?
The fees for recording an assignment are Rs. 2,250 for each application (for either of the forms).
What documents are needed for recordal of a patent assignment?
Typically, the completed form along with the assignment deed (or evidence of the assignment transaction) are needed. The patent application/registration number(s) are also needed. A Power of Attorney is also needed, if you are using a patent agent to file the documents.
