Consulting and Drafting Intellectual Property Rights Transfer Contracts

According to the definition of Intellectual Property law, “Industrial property rights are the rights of organizations and individuals to inventions, industrial designs, semiconductor integrated circuit layout designs, trademarks, trade names, geographical indications, trade secrets created or owned by you or you have the right to prevent unfair competition”.

It is possible that the owner of Industrial Property Rights (intellectual property rights) will wish to transfer these rights (transfer of ownership rights to other organizations or individuals).

Law on Intellectual Property requires that this transfer must be done in the form of a written contract (called an industrial property rights transfer contract).

Relevant legal documents

Intellectual Property Law 2005

Contents of industrial property rights transfer contract

According to regulations, industrial property rights transfer contracts must have these following main contents:

1. Full names and addresses of the transferor and transferee. Besides, the parties should also have other contact information such as phone number, fax, email, website; and bank account information.
2. Basis for transfer: information about the protected files of transferred industrial property rights.
3. Transfer price: This price is negotiated by the parties. The parties should clarify the information of payment period, payment method, and responsibility for incurred fees.
4. Rights and obligations of the transferor and transferee.

These following contents should be noted when determining the transfer object:

1. Do not transfer outside the protected scope.
2. Rights to geographical indications cannot be transferred.
3. Transfer of the trademark that may cause confusion
4. The trade name can only be transferred with the entire business and its activities
5. Rights to trademarks can only be transferred to organizations and individuals that meet the conditions of the owner of that trademark.
6. Rights to inventions, industrial designs, and layout designs that are the result of scientific and technological tasks using the state budget may only be transferred to organizations established under Vietnamese law, or ndividuals who are Vietnamese and living in Vietnam.

Register industrial property rights transfer contract

It should be noted that for industrial property rights such as inventions, industrial designs, layout designs, trademarks, and famous brands, the industrial property transfer contract is only valid when has been registered at the state management agency on industrial property rights.

Dossier for registration of the industrial property transfer contract includes:

1. Registered declaration according to the prescribed form;
2. Original or valid copy of contract;
3. Original certificate of protection
4. Written consent of the owners, explanation of any owner’s disagreement on the transfer of rights if industrial property rights are jointly owned;
5. Documents for payment of fees and charges;
6. Power of attorney if applying through a representative.

If you have any questions related to industrial property transfer contracts, feel free to contact An Luat Vietnam for support and advice.