Cipo Assignment Database Template

Registration of assignments and correction of assignment-related information

This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/right holder to decide how to proceed with respect to a particular application or other matter.

Registration

Assignments are often complex and diverse, frequently addressing matters reaching beyond IP rights. The complexity of these documents may necessitate a significant effort from the Patent Office in order to ensure that the documented changes in title are accurately reflected in Office records.

Therefore, in order to assist the Office in its effort to simplify and expedite the processing of assignments while maintaining a high quality standard, the Office has developed new forms for requesting the registration of assignments and strongly recommends their use.

The forms will be part of the record and will help ensure that all the required information has been submitted to the Office. The Office will use the content of the forms to assist with the registration of the assignment.

Please note that the assignments submitted will continue to be made available to the public. Parts of these documents may display personal information that is not relevant to the assignment being registered and the Office will accept that requesters omit or obscure any such information.

In the case where the forms are not used, the Office urges any requester to submit clear instructions. More specifically, in addition to the prescribed fee a request should include the following information, ideally on a cover sheet:

  • the name of the assignor(s);
  • the name and complete address of the assignee(s);
  • the application or patent number against which the assignment is to be registered;
  • specific information identifying which rights are being assigned and whether the interest in a right is being transferred in whole or in part.

A copy of the document effecting the transfer and either an affidavit or another proof satisfactory to the Commissioner that the assignment has been signed and executed must be submitted as per sections 49 and 50 of the Patent Act. The following proofs are all considered to be satisfactory:

  • with respect to a patent, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by all parties;
  • with respect to a patent application, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
  • a similar statement of a witness;
  • the signature of a witness or the presence of a corporate seal on the assignment document;
  • a document showing that the assignment was registered in a patent office of another country.

Correction

Occasionally, an error is present in an assignment (in the document effecting the change in ownership) and/or an error is made in the entry of information in the Patent Office's records.

It is important to note that despite the fact that, as discussed below, many errors can be corrected; all documents that are registered by the Office will remain on record subject to a court order to the contrary.

Error introduced by the Office

Where the registered document provides the correct information but an error is introduced in the process of extracting the information from the document and reflecting it in Office records, the Office will correct the error upon receipt of a request from any person providing details about the error and referring to the registered document containing the accurate information. No fee will be required for the correction.

Error in an assignment document

In accordance with sections 49 and 50 of the Patent Act, the Office will proceed with the registration of an assignment provided that the request for registration complies with all procedural requirements. The Office takes the position, however, that an assignment may be registered without necessarily being recognized or, in other words, without being given effect. The Office will consequently not give effect to an assignment where it is satisfied that the assignment is invalid or where the assignor identified in the assignment does not correspond to the owner currently recognized by the Office.

Therefore, where a wrong document has been registered or where a registered document contains a mistake, Office records may be updated to reflect the correct situation following the receipt of:

  1. a request for the registration of a newly submitted correct assignment, which complies with all formal requirements for the registration of an assignment; and
  2. an acceptable request to the effect that the previously registered assignment document (hereafter referred to as the “incorrect assignment”) no longer be given effect.

    To be considered acceptable, a request under b) must meet the following requirements:

    • Where the error in the incorrect assignment does not relate to the name of the assignee
      • originate from one of the parties identified in the correct assignment; and
      • contain a statement signed by the requester to the effect that the previously registered assignment contains a mistake and containing information describing the mistake.
    • Where the assignee mistakenly identified in the incorrect assignment does not exist or is the same entity as the assignee identified in the correct assignment
      • originate from one of the parties identified in the correct assignment;
      • contain a statement signed by the assignee identified in the correct assignment to the effect that:
        • the assignee was incorrectly identified in the previously registered assignment;
        • the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead; and

        either

        • the incorrectly identified assignee does not exist; or
        • the incorrectly identified assignee is the same entity as the assignee identified in the correct assignment
    • Where the assignee mistakenly identified in the incorrect assignment exists and is different from the assignee identified in the correct assignment
      • originate from one of the parties identified in the correct assignment;
      • contain a statement signed by the mistakenly identified assignee to the effect that their name appeared in error on the incorrect assignment; and
      • contain a statement signed by the assignee identified in the correct assignment to the effect that the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead

This mechanism cannot be used after the grant of a patent to correct errors that were introduced during the application stage.

Clerical errors

Certain errors in assignment documents may qualify as clerical errors that arose in the mechanical process of typewriting or transcribing.

These errors may be corrected under section 8 of the Patent Act rather than via the mechanism set out above. A request for a correction under section 8 of the Patent Act should be accompanied by the required supporting information and the prescribed fee.

The applicant must determine which correction mechanism applies to their particular situation and submit their request accordingly.

If a request for correction under section 8 of the Patent Act has already been submitted but is not the appropriate mechanism, a new request will be necessary and will have to refer explicitly to the appropriate mechanism.

Jurisdiction of the Federal Court

In order to obtain a change that will further alter the content of Office records, such as the removal of a previously registered document, a requester may need to seek an order from the Federal Court.

Date modified:

Template of an assignment

I/We (name of assignor(s)) _____________________________________________________________________
__________________________________________________________________________________________
____________________________________________________________________________________________________________________________________________________________________________________
__________________________________________________________________________________________

Whose full postal address is ____________________________________________________________________
___________________________________________________________________________________________
______________________________________________________________________________________________________________________________________________________________________________________
___________________________________________________________________________________________

In consideration of $_________________ the receipt of which is hereby acknowledge do hereby sell and assign to (Full name of Assignee) ___________________________________________________________________________ ___________________________________________________________________________________________

Whose full postal address is ____________________________________________________________________
___________________________________________________________________________________________
______________________________________________________________________________________________________________________________________________________________________________________
___________________________________________________________________________________________

All/part (state particular fractional interest) ___________ of my rights, title and interest in Canada to my (our) invention relating to (Title of invention and/or Canadian Patent/application number) ___________________________________________________________________________________________
___________________________________________________________________________________________

As fully described and claimed in my (our) application or patent for such invention and to all my (our) corresponding right(s), title and interest in and to any Patent which may issue therefor.

Signed at (City or Town/Country) ___________________________________________________________________________________________

Date (day / month /year) ___________________________________________________________________________________________

Witness (signature)

_________________________

Signature of assignor(s)

_________________________

_________________________

Date modified:

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