Transfer of IP rights in Singapore

1.1 How may a patent be assigned (by law and/or transaction)?

A patent may be assigned through a Deed of Assignment or any relevant written and signed agreement evidencing the legal transfer of ownership.

1.2 Is it required to record the assignment in the national patent register to become effective?

No. However, recordal of the assignment of a patent is strongly encouraged to safeguard the rights of the assignee as non-registration may lead to certain adverse consequences. As per section 43(1) Patents Act 1994 ("PA”), any person who claims to have acquired the property in a patent or application for a patent by virtue of a later assignment is entitled as against any other person under an earlier unregistered assignment if the assignment is not registered.

2.1 Are original supporting documents essential or are copies sufficient?

In general, under no circumstances the original supporting documents are essential.  

As for copies of the supporting documents:

• if Form P19 (which is the specific form required for recording the patent assignment) is signed by or on behalf of the assignor, no supporting documents need to be provided at all; or 
• if Form P19 is signed by the assignee, copies of the supporting documents evidencing the assignment (for example, assignment agreement) are required.

2.2 Are there any legalization and/or notarization and/or translation requirements?

No. 
Any assignment of a patent must be in writing and signed by or on behalf of the assignor (if it is a person) or signed and under the seal of a body corporate (section 41(5) and (6) PA). 
The signed written document assigning the patent must include:

• Details of the parties
• Effective date of the agreement
• Subject matter of the assignment
• Consideration and other relevant commercial terms

A failure to do so will void the assignment.

2.3 Is there a must to use a specific form?

Form CM8 is required to request for recordal and filing in the IPOS.

There is no specific form for the abovementioned written signed document.

The record in the IPOS Registry has a declarative effect in that failure to do so will not render the assignment invalid as between the assignor and assignee, but it will affect rights of the assignee vis-à-vis third parties under certain circumstances.

According to section 43(1) Patents Act, any person who claims to have acquired the property in a patent or application for a patent by virtue of a later assignment shall be entitled as against any other person whose application of an earlier unregistered assignment

Where 2 or more persons are proprietors of a patent (not including persons contesting proprietary interest regarding the patent in question), the consent of all the proprietors is required to assign a share in the patent. This is subject to any agreement for the time being in force (section 46(3) PA).  

There is no requirement to appoint a domestic professional representative, but you need to have an address in Singapore for service of documents, as per Form CM8.

SGD 70 for filing Form CM8 (per application number).

7.1 Which forms of licensing patents exist?

The use of a registered patent, or a patent that is subject of an application for registration, can be licensed, or sub-licensed (see section 41 PA).

A licence may also be exclusive or non-exclusive (see section 2 PA).

7.2 Which ones must be recorded in the patent register to become effective (if any)?

Exclusive licences require recordal (registration within 6 months of the transaction, or as soon as practical thereafter) to be enforceable under infringement proceedings (section 75 PA). 

Note: Where 2 or more persons are proprietors of a patent (not including persons contesting proprietary interest regarding the patent in question), the consent of all the proprietors is required to grant a licence under the patent. This is subject to any agreement for the time being in force (section 46(3) PA).

8.1 Are original supporting documents essential or are copies sufficient?

In general, the original supporting documents are not essential. Copies are sufficient.

As for copies of the supporting documents:

• if Form CM6 (which is the specific form required for recording the patent registration) is signed by or on behalf of the Licensor, no supporting documents need to be provided at all; or 
• if Form CM6 is signed by the Licensee, copies of the supporting documents evidencing the licence (for example, licence agreement) are required.

8.2 Are there any legalization and/or notarization and/or translation requirements?

Notarization or legalization is not required for recording the patent assignment.  

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required. 

8.3 Is there a must to use a specific form?

Yes. Form CM6 is required to request for recordal and filing in the IPOS.

The recordal in the patent register has a declarative effect in that failure to do so will not render the licence invalid but it will affect rights of the licensee vis-à-vis third parties under certain circumstances.

According to section 43(1) Patents Act, any person who claims to have acquired the property in a patent or application for a patent by virtue of a later transaction, instrument or event shall be entitled as against any other person whose application of an earlier transaction, instrument or event.

Recordal (registration within 6 months of the transaction, or as soon as practical thereafter) is required for an exclusive licensee to commence infringement proceedings (sections 74 and 75 PA).

There is no requirement to appoint a domestic professional representative, but you need to have contact details (telephone number and email address) and an address in Singapore for service of documents, as per Form CM6.

SGD 60 for filing Form CM6 (per application number).

Yes. Recordal of the pledge is not necessary.

1.1 How may a trademark be assigned (by law and/or transaction)?

A registered trademark is assignable either in connection with the goodwill of a business or independently (see section 38 Trade Marks Act 1998 (“TMA”)).

An assignment of a registered trademark is not effective unless it is in writing signed by or on behalf of the assignor or (as the case may be) a personal representative (s 38(3) TMA). Signed writing is also satisfied where the assignor or personal representative is a body corporate by the affixing of its seal (s 38(4) TMA).

1.2 Is it required to record the assignment in the national trademark register to become effective?

No. However, recordal of the assignment is strongly encouraged to safeguard the rights of the assignee given that non-registration may lead to certain adverse consequences:

• the transaction is ineffective as against a person acquiring a conflicting interest in or under the relevant registered TM right(s) without knowledge of the transaction (s 39(3) TMA); and/or
• the person who becomes the owner of a trademark by virtue of the transaction (i.e. the licensee) will not be entitled to damages, an account of profits or statutory damages for any infringement of the trademark occurring after the date of the transaction and before the date of the application for the registration of the prescribed particulars of the transaction (s 39(4) TMA).

2.1 Are original supporting documents essential or are copies sufficient? 

The original supporting documents are not essential, and copies are sufficient.

As for copies of the supporting documents:

• if Form CM8 (which is the specific form required for recording the patent assignment) is signed by or on behalf of all relevant parties (e.g. the assignor and assignee), no supporting documents need to be provided at all; or
• if Form CM8 is signed by the assignee only, copies of the supporting documents evidencing the assignment (for example, assignment agreement) are required.

2.2 Are there any legalization and/or notarization and/or translation requirements?

There is no legalization or notarization requirement for registering a trademark assignment with the IPOS

2.3 Is there a must to use a specific form?

Yes. Form CM8 is required to request for recordal and filing in the IPOS.

The record in the trademark register has a declarative effect in that failure to do so will not render the assignment invalid as between the assignor and assignee, but it will affect rights of the assignee vis-à-vis third parties under certain circumstances. In particular:

• the transaction is ineffective as against a person acquiring a conflicting interest in or under the relevant registered TM right(s) without knowledge of the transaction (s 39(3) TMA); and/or 
• the person who becomes the owner of a trademark by virtue of the transaction (i.e. the assignee) will not be entitled to damages, an account of profits or statutory damages for any infringement of the trademark occurring after the date of the transaction and before the date of the application for the registration of the prescribed particulars of the transaction (s 39(4) TMA).

No specific formalities are required if the licensed trademark is held by more than one proprietor, other than that:

• all co-proprietors must consent to the full or partial assignment; and
• for recording the assignment, the Form CM8 needs to be signed by all co-proprietors, or an agent who is authorised to act for the co-proprietors.

No specific formalities are required for partially assigning a trademark. The same form, methods and requirements are applicable.

There is no requirement to appoint a domestic professional representative. But the assignee will need an address for service in Singapore. 

SGD 70 for registering an application to register a transfer of ownership (per trademark application/registration). 

A licence to use a registered trademark may be general (i.e. the licence covers all of the goods or services of the registration) or limited (i.e. the licence covers some but not all of the goods or services of the registration). (section 42 TMA);

A licence may also be granted as an exclusive licence or a non-exclusive licence (see sections 42 and 43 TMA). The grantor of an exclusive licence cannot grant a licence to any other person (except in respect of other goods or services, or in respect of use in another location) nor can he use the mark himself.

None of the above types of licences require recordal to become effective between the licensor and licensee. In respect of the effect of the recordal of a trademark licence (see Q10). 

9.1 Are original supporting documents essential or are copies sufficient? 

The original supporting documents are not essential, and copies are sufficient.

As for copies of the supporting documents:

• if Form CM6 (which is the specific form required for recording the patent registration) is signed by or on behalf of the Licensor, no supporting documents need to be provided at all; or
•  if Form CM6 is signed by the Licensee, copies of the supporting documents evidencing the licence (for example, licence agreement) are required.

9.2 Are there any legalization and/or notarization and/or translation requirements?

There is no legalization or notarization requirement for registering a trademark licence with the IPOS.

9.3 Is there a must to use a specific form?

Yes. Form CM6 is required to request for recordal at IPOS.

A licence must be in writing (section 42(3) TMA).

The record in the trademark register has a declarative effect in that failure to do so will not render the licence invalid but it will affect rights of the licensee vis-à-vis third parties under certain circumstances. In particular:

• the transaction is ineffective as against a person acquiring a conflicting interest in or under the relevant registered TM right(s) without knowledge of the transaction (s 39(3) TMA); and/or
• the person who becomes the owner of a trademark by virtue of the transaction (i.e. the licensee) will not be entitled to damages, an account of profits or statutory damages for any infringement of the trademark occurring after the date of the transaction and before the date of the application for the registration of the prescribed particulars of the transaction (s 39(4) TMA).

No. For a recording of a partially licensed registered trademark, Form CM6 provides options for you to fill out details of specific goods/services for which the granted licence is covered (Annex A). 

There is no requirement to appoint a domestic professional representative for a licencee.

SGD 60 for each application or notice to register a trademark licence for each trademark number.

Yes. Recordal of the pledge is not necessary.