JURISDICTION REPORT: HUNGARY
TECHNOLOGY TRANSFER AND ASSIGNMENT OF IP RIGHTS: REGISTRATION OF THE FACTS
Michael Lantos Danubia Law Office LLC
Assignment of IP rights Te methods for registering different IP rights at the Hungarian Intellectual Property Office (HIPO) are, in the main, uniform, but owing to a few special properties of the trademark system, there are a few differences.
Te assignment of ownership should be filed at the HIPO by a petition setting forth what is required, and a document that proves the assignment must be attached. Tere are different ways of making an assignment:
i. Transfer of rights between two legal and/or natural persons. Te document need not be the full assignment contract concluded by the parties—a simplified version is sufficient, setting out clearly that the registered owner of the rights assigns the particular single, or listed multiple, IP rights to the assignee. Te assignee must sign the document and confirm that he/she accepts the assignment.
ii. If the transfer is part of a merger and the old owner(s) merge into a new entity, then instead of the assignment in point (i), an extract from the commercial register or company register that indicates that companies A and B merged to form company C is sufficient.
iii. Power of attorney: if the assignee is not a Hungarian entity and not a member of the EU, a local patent attorney or attorney at law must be entrusted.
iv. Fees: there is a uniform fee of HUF 16,500 ($72) for registering the assignment of an IP right. Tis must be paid for each right transferred, ie, if multiple rights are concerned, multiple payment is needed.
Registration of changes of names and/or address To register a change of name or address, filing a copy of the official publication of the change in the company register is sufficient. Relevant IP cases have to be listed. Tere is no official fee for such changes.
Registration of licence rights When the owner of an IP right grants a licence to a licensee, it is advisable to register this fact in the official register of the concerned right. Any document filed in the official register becomes a public document, so parties that do not like submitting the whole of what is usually a complex licence agreement may prepare a simplified version that contains only the list of the concerned rights, and the most important limitations.
Tese are: full patent or certain claims only; in the case of trademarks, all goods or only a part of them; and then whether the licensee is authorised to grant sub-licences, or that the licence is exclusive. In case of an exclusive licence it is advisable also to indicate whether the owner of the right has
62 World Intellectual Property Review May/June 2012
“ANY DOCUMENT FILED IN THE OFFICIAL REGISTER BECOMES A PUBLIC DOCUMENT, SO PARTIES THAT DO NOT LIKE SUBMITTING THE WHOLE OF A COMPLEX LICENCE AGREEMENT MAY PREPARE A SIMPLIFIED VERSION.”
authorisation to use, or that the exclusivity prevents even the owner of the right from exercising it.
It is also possible to include whether the licensee is authorised to sue unauthorised users in his own name.
Te same fees as for assignments apply to the registration of licence rights.
Special additional conditions of assignments/licences of trademark rights include (i) that if the concerned IP right is a trademark, care should be taken that neither assignment nor the granting of a licence can lead to the deception of consumers, since such agreements are null and void; and (ii) that in the case of a trademark licence, use by the licensee qualifies as use by the owner of the rights, so that when use has to be substantiated, use by the licensee can be an acceptable proof of use.
Registration of security interests/collaterals Owners of IP rights are allowed to register a security interest or collaterals in the IP register, which means that if licensing conditions are not fulfilled, the equity owner can still draw the financial benefits from the rights. It is therefore advisable to enter all these conditions in the corresponding agreement.
Is registration of the changes compulsory? Te registration of the listed rights is optional, ie, valid agreements can be concluded between the parties without entering the changes or conditions/ limitations in the register, but in such unregistered situations the parties cannot refer to the existence of such agreements before third parties. In some cases, however, there are special rights which cannot be utilised unless the underlying situation was entered in the register.
Michael Lantos is deputy managing partner at Danubia Law Office LLC. He can be contacted at:
lantos@danubia.hu
www.worldipreview.com
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