Once an applicant files an invention, utility model or design patent application with China's National Intellectual Property Administration (CNIPA), the applicant will then obtain the rights related to the patent application, i.e. the rights of ownership of the patent application. The rights of ownership include, among others, the right to assign the patent application to others. Assignment made during the prosecution of a patent application is called assignment of application right, while assignment made after the grant of a patent is called assignment of patent right.

Pursuant to the provisions in the Chinese Patent Law, "Where the right of patent application or the patent right is assigned, the parties shall conclude a written contract and register it with the patent administration department under the State Council. The patent administration department under the State Council shall announce the registration. The assignment shall take effect as of the date of registration."

Registering the assignment with the patent administration department, i.e. recording the change of applicant or patentee, is the very formalities the applicant/patentee shall go through for recording the transfer of rights. We will discuss how to fulfill the relevant procedures in the following paragraphs.

Where to file?

The documents for assignment registration shall be filed with the CNIPA. The patent administrative agencies at provincial and municipal levels, which handle patent affairs on behalf of the CNIPA, can also receive and process the documents filed by applicants.

How to file?

If the patent application was filed on paper from the very beginning, then the documents for assignment registration shall also be filed on paper. However, if the applicant/patentee has become a user of CNIPA's E-filing service and has converted the paper application to an electronic application before filing such documents, then such documents can be filed electronically. Of course, if the patent application itself was initially filed through the CNIPA's E-filing system, then the documents for assignment registration can also be filed directly through the E-filing system.

What to file?

First, a Request for Recording a Bibliographic Data Change, which can be downloaded from the CNIPA's website, needs to be filed. If the E-filing platform is used, a latest Request form will be available on the platform.

Second, an Assignment Agreement signed by both the assigner and the assignee is required. If the transfer of rights is the result of a dispute over ownership, then the applicant/patentee needs to file further documents, which may vary depending on different situations. For example, if the dispute is settled through negotiation, then an Agreement on the Transfer of Rights signed or stamped by all the concerned parties shall be filed; if the dispute is resolved through mediation by a local IP administrative department, then a mediation document issued by such department shall be filed; while if the dispute is settled through mediation or adjudication by a people's court, then a binding mediation document or decision issued by the court shall be filed.

In practice, the transfer of rights may also arise in the following circumstances:

  • the right holder is merged, divided up or dissolved or the organization form of the right holder is changed, where the right holder is a company;
  • there is a change of right holder due to inheritance;
  • there is a change of right holder due to an auction, etc.

Right holders need to prepare corresponding supporting documents in accordance with the different requirements in different circumstances.

Third, if the applicant/patentee has not entrusted a patent agency to handle matters related to the application/patent, the formalities for recording a bibliographic data change shall be handled by the applicant/patentee themselves or their representative; while if a patent agency has been entrusted, such formalities shall be handled by the patent agency on behalf of the applicant/patentee. As the bibliographic data change mentioned here mainly refers to the change of applicant/patentee caused by a transfer of rights, the assignee who will become the right holder after the change may also directly entrust a new patent agency to handle this matter, in which case a new Power of Attorney signed by the assignee is also required.

Fourth, under special circumstances, i.e. when the assignor is an individual or entity of Mainland China while the assignee is a foreign individual, enterprise or other type of organization, a Technology Export License or a Registration Certificate of Freely Imported Technology Contract issued by the competent department of commerce under the State Council, or a Registration Certificate of Freely Imported Technology Contract issued by the local competent department of commerce needs to be filed. In a word, for any technology transfer from within Mainland China to outside Mainland China, technology export document is required, while for any technology transfer from outside Mainland China to within Mainland China, or from Hong Kong, Macau or Taiwan to outside China, no such document is required.

How much is the official fee? When to pay?

The official fee for recording a bibliographic data change relating to a transfer of rights is RMB200. Where an item in the bibliographic data (e.g. applicant, patentee, or inventor) is successively changed several times, and such changes are recorded altogether through one request, then the official fee only needs to be paid once. For example, where the right is transferred first from A to B and then from B to C, if such changes are recorded through one request, then the official fee only needs to be paid once, while if such changes are successively made through two requests, then the official fee needs to be paid twice. Therefore, for successive transfers of rights, it is preferable to have all the required documents prepared and then file one request for recording all the changes together, so as to save costs.

The official fee shall be paid within one month from the filing of the request, otherwise the request will be deemed not to have been filed.

How long does it take to finish the formalities?

Generally, within 3 weeks from the filing of the request for recording a bibliographic data change, a Notification of Passing Examination on Formalities will be issued, which marks that the formalities for assignment registration has been finished. The issue date of such Notification will be indicated as the effective date of the bibliographic data change in the patent register.

What to note after the assignment registration?

Once the Notification of Passing Examination on Formalities is issued, it means that the CNIPA has recorded the information of the new right holder and will publish this change in the patent gazette. In business activities, the assignee of a patent may often need to prove that they are the current owner of the patent. For this purpose, they may request from the CNIPA a copy of the patent register, wherein the information about the current patentee as well as the effective date of the transfer of rights are all indicated. According to the law, a patent register includes the most up-to-date bibliographic data of the patent and has legal effect.

To sum up, when it comes to a patent application or patent, once a transfer of rights occurs, the right holder shall timely go through the formalities for assignment registration and bibliographic data change, otherwise the time of obtaining the Notification of Passing Examination on Formalities will be delayed, which may pose an obstacle to the right holder's enforcement of rights, or even adversely affect the progress of their important business projects.

Hope you find the above information helpful. Should you have any questions, please feel free to contact us.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.