Assignment and Licences

FORMALITIES FOR RECORDING ASSIGNMENT DEEDS IN ITALY

The original assignment deed which is to be recorded, or a copy thereof, is required or, if the Registry of Deeds formalities are complied with, the copy of a Declaration of Assignment or of completed Assignment, signed by the assignor and the assignee with a detailed list of the rights which are object of the assignment: the Italian Patent and Trademark Office may request that the copy of the deed is declared to be in conformity with the original by a public official or other competent authority.

In the case of a foreign deed, the signatures should be authenticated by a Notary Public and legalized by Apostille, in accordance with the Hague Convention of October 15, 1961.

A single petition is sufficient for recordals concerning more than one industrial property right, whether pending or granted, on the condition that the beneficiary of the change of ownership or rights of use or security interest in the deed to be recorded is the same for all of the rights and that the numbers of all of the applications or registrations in question are clearly indicated in the petition itself.

Note: Recordal in the Italian legal system does not constitute ..but merely declaratory: in fact it renders that deed opposable by third parties in order to resolve conflicts between more than one claimant on the same right.

Recordal therefore is not obligatory, unless a renewal or other act is due which would entail the extinction of the name of the new holder, and can be carried out at any time.

Our standard assignment deeds also incorporate a power of attorney for the recordal, thus avoiding the need to execute a separate power of attorney and the relative costs for the filing thereof with relative stamp duty.

It is important to insert the amount of consideration of the assignment: it should be realistic and our advice is that the sum corresponds at least to the costs which were borne by the assignor for the filing of the rights indicated in the deed.

FORMALITIES FOR THE RECORDAL OF MERGER DEEDS

The certificate issued by the Companies Register or other competent authority is sufficient.

FORMALITIES FOR THE RECORDAL OF ASSIGNMENT DEEDS IN SAN MARINO

Two authentic copies of the deed to be recorded are required.

In the case of a foreign deed, the document should be translated into Italian and comprise signatures which have been authenticated by a Notary Public and legalized by Apostille, in accordance with the Hague Convention of October 15, 1961.