Sections 129 and 165: Changing the Ownership of Patents or Patent applications

This document provides guidelines on ownership changes of patent applications or granted patents under the Patents Act 2013. It discusses the types of change that can be requested through the ‘Change ownership’ function and provides detail on what documentation may be needed.

1. Introduction

1. Ownership changes are where the ownership of the patent application or granted patent is changing from one party to another party or where two or more parties have merged or amalgamated into another party.  Change ownership types include:

• Assignments 
  • Substitution of applicants in a patent application
  • Registering a change in ownership of a granted patent (or share in a granted patent)
• Amalgamation/merger of companies or entities
• Transfers resulting from the death of an owner/applicant
• Changes in Ownership made in the PCT application at WIPO.

2. For specific information on how to request a change of ownership, please visit our Maintain a Patent page.

Maintain a patent

2. Assignments

Substitution of applicants in a patent application

3. When a patent application is assigned to a new owner, the new owner or their agent must submit a change of ownership request via our case management system to substitute the applicant(s) before the grant of the patent. If the previous owner or their agent submits the change of ownership request, the request will be declined.

4. The request must meet the requirements of section 129 of the Patents Act 2013 and regulation 122 of the Patents Regulations 2014. If the supplied documentation mentions section 165 and/or regulation 122 then provided the change of ownership request is made by the new owner or their agent and it meets the requirements of section 129 and regulation 122, the request will be accepted.

Section 129 of the Patents Act 2013

Regulation 122 of the Patents Regulations 2014

5. If there are 2 or more applicants (co-owners) then consent under section 129 is not required. This was confirmed in the notes from the Patent Technical Focus Group meeting of 9 February 2016.  

Patents Technical Focus Group meeting, 9 February 2016

6. The requirements of regulation 122 may be met by the information recorded in the change of ownership request in our case management system and/or by the documents provided with this request. For example, if an assignment or agreement is supplied, none of the particulars, dates, or parties of the assignment are required.

Registering a change in ownership of a granted patent (or share in a granted patent)

7. When a granted application is assigned to a new owner, either the new owner or the previous owner must submit a change of ownership request via our case management system to register a change in ownership. The maker of the change of ownership request must identify whether the request is made under section 165(1) (assignee) or 165(2) (assignor).

8. The request should meet the requirements of section 165 and regulation 124.

Section 165 of the Patents Act 2013

Regulation 124 of the Patents Regulations 2014

9. If there are 2 or more patentees (co-owners) then consent of all the patentees, except the assignor(s), is required to assign a share of the patent in line with section 24 of the Patents Act 2013.

Section 24 of the Patents Act 2013

10. The requirements of regulation 124 may be met by the information recorded in the change of ownership request in our case management system and/or by the documents provided with the request. For example, if an assignment or agreement is supplied, none of the particulars, dates, or parties of the assignment are required.

11. Please note the Office accepts redacted versions of documents, if the parties, intent of the agreement and the patents being assigned are clear.

3. Changes that result in a transfer of rights

12. For an amalgamation or a merger that results in a transfer of rights, a request for a change of ownership should be made by the new owner.

13. A copy of the Certificate of Amalgamation or Merger issued by the relevant Registrar of Companies as evidence of the amalgamation or merger will be sufficient for the Office to accept the change of ownership request. However, in some cases the change of ownership will be on the basis of a deed of assignment, sale and purchase agreement or similar.

14. For an amalgamation or a merger which does not result in a transfer of rights see “Change a name or address” below.

15. Where a legal entity is changing, for example changing a company from a Limited Liability Company (LLC) to an incorporated company (Inc.), then this type of change falls under a change of ownership.

4. Transfers resulting from the death of an owner/applicant

16. Where the transfer occurs as a result of the death of the owner, the supplied documentation will relate to the probate or letters of administration.

17. If probate or letters of administration are issued:

• For granted patents: the request should be considered under section 165(1) as a transmission/operation of law/other means.
• For patent applications: the application should be considered under section 130(1). The applicant is substituted by their personal representative.

18. If probate or letters of administration are not issued:

• The application or patent can be transferred under section 167 and regulation 125 applies.

Section 167 of the Patents Act 2013

Regulation 125 of the Patents Regulations 2014

19. When an inventor of a PCT application is deceased, WIPO marks the inventor as “Deceased”.

5. PCT change made at WIPO

20. Where a change of ownership has been made at WIPO, then the change notification (form IB/306) should be submitted as part of the request. The form IB/306 is considered sufficient evidence of the change of ownership. In this case the request does not need to meet formal requirements.

6. General aspects of change of ownership requests

21. If the request is filed for both granted patents and applications, the request can be validated if the minimum requirements for each are met.

Documents and statements   

22. Each change of ownership request should have a statement clearly showing how the new owner is entitled to the patent (or share) or to proceed as the applicant (or co-applicant). The supplied documentation must identify how they entitle the new owner to the patent rights and should be consistent with this statement. 

23. Examples of suitable documents are a Deed of Assignment, Contract or Sale and Purchase Agreement, Statutory Declarations and/or Court Orders. Sometimes the supplied document can be a document confirming what was in the assignment document relating to the requested change. The Office normally will consider this type of document as sufficient evidence that transfer of the patent rights has occurred.

24. If the document is executed outside New Zealand, the Office must be satisfied that the document is legitimate and corresponds to the applicant’s statements regarding how the document entitles the new owner to the patent rights. 

25. The name and/or position of the signatories of the supplied document should be provided within the document or within the statement. 

26. Applicants should not rely on documents provided in a previous (declined) or related validated task as each request is treated on its own in the case management facility. All relevant documents should be provided with each request. The Office accepts redacted versions of documents as long as the parties, intent of the agreement and the patents being assigned are clear.

Trusts:  

27. Section 197(3) provides that:

No notice of any trust may be entered in the patents register, and the Commissioner is not affected by any notice of that kind.

28. Any reference to an owner acting as trustee constitutes a notice of a trust and is a breach of section 197(3). Pursuant to this section, an application may only be made in the name of a trust where the trust is incorporated (for example under the Charitable Trust Act 1957).

Section 197(3) of the Patents Act 2013 

29. If an application is filed in the name of an unincorporated trust, the application should be made in all of the individual names of the trustees of the trust, as it is the trustee(s) who legally own the property, not the trust itself.

30. Where property is held on trust for someone else, the trustee (as legal owner of the patent or patent application) should be entered as the applicant rather than the beneficiary.

31. For a Patent Cooperation Treaty application designating New Zealand, the reference to an owner acting as a trustee will be allowable.

Statuses 

32. A change of ownership request can only be completed for a patent or patent application with a case status of filed, under examination, accepted or granted. For a patent or patent application under a proceeding, the Hearings Office will be consulted before the change of ownership request is processed. 

33. For a closed provisional patent application, a request for a change in ownership will only be allowed if an identical request for change in ownership is concurrently made or has previously been made to the associated complete patent application. Closed provisional patent applications which do not have an associated completed patent application have no remaining rights and are treated the same as a ceased patent or patent application.

34. Where the change of ownership occurred after a patent has lapsed, the patent must be restored before the change of ownership can be requested. If a change of ownership is requested before the patent is restored, the request will be declined, and the applicant will be asked to request restoration first. The request for restoration must be in the name of the patentee who held the ownership rights at the time of lapse. This also applies for abandoned patent applications.

35. For expired or revoked patents, or withdrawn patent applications, a change of ownership request will only be accepted if the change of ownership occurred before the patent or patent application was ceased.

36. An assignment should be executed in accordance with the legal requirements in that country.

Deeds, and contracts: 

37. A deed should identify the intent of the parties relating to the patent(s) and/or patent application(s) in question and include an effective date for the transfer. 

38. A deed is properly executed in New Zealand if it has been signed by at least one of:

• An individual and the signature witnessed.
• One sole director of a company and the signature witnessed.
• Two or more directors of a company if the company has more than two directors.
• One director/authorised signatory if a company’s constitution allows and the signature witnessed. Any person signing on behalf of the company should be assumed to be authorised in the first instance (Companies Act 180(1)(b) and Property Law Act 13(2) (b) express or implied authority).
• One or more attorneys appointed by a company.

39. A deed may be properly executed outside of New Zealand in accordance with the domestic laws of the country or state of incorporation of the foreign company in question.

40. Specific requirements on witnessing a deed are:

• Witness must not be a party to the deed; and must sign the deed; and
• If the deed was signed in New Zealand, then the name of the city, town, or locality where they ordinarily reside; and their occupation or description should be added.

41. A contract can be any written document provided it meets the requirements of a contract. The contract should:

• Clearly identify the intent of the parties relating to the patent(s) and/or patent application(s) in question; and
• Contain a reference to consideration relating to the transfer or assignment of the patent(s) and/or patent application(s), and
• The date of effect of the agreement; and
• Be signed by both parties.
• If one of the parties is a company the agreement should be signed by:
• A director or, another authorised person.

Under regulation 34 the Address for service requirements for the new owner must be met.

Regulation 34 of the Patents Regulations 2014

7. Authorisations of agent for ownership changes

42. An authorisation of agent is not required for the current agent to record changes of ownership on behalf of the new owner. However, the Commissioner retains the discretion to require an authorisation of agent under certain circumstances.

43. Appropriate authorisation for a change of ownership request where a new agent is going to be the agent on file can either be: 

a) An authorisation of agent form signed by the owner(s) (in line with regulation 40); or

b) An authorisation of agent form signed by the agent, provided it is accompanied by an explicit statement to effect that the agent has been authorised by the owner to act as agent on file for the case in question (in line with the Technical Focus Group meeting of 12 November 2020); or

c) An explicit statement from the agent or the new owner to effect that the agent has been authorised by the owner to act as agent on file for the case in question (in line with the Technical Focus Group meeting of 20 October 2017). This explicit statement can be in the cover letter from the new agent, or it can be a separate email or similar correspondence from either the owner or the new agent.

Regulation 40 of the Patents Regulations 2014

Patents Technical Focus Group meeting, 12 November 2020

Patents Technical Focus Group meeting, 20 October 2017

44. For the options b) and c): The Commissioner may, at their sole discretion, still require an authorisation of agent.

Limited Authorisation / Third party agents 

45. Where the agent is only the agent for the change of ownership request (third party agent), and the original agent is meant to stay the agent on file for a patent or patent application our case management system provides the option of “I am acting on behalf of the owner for this request only”. 

This option will only be visible when all patent(s)/patent applications(s) selected currently have the same Agent(s)/Case Contact(s). 

46. The third-party agent should file the appropriate authorisations with the request for themselves and for the original agent to remain as the agent on file.  

47. Please note that the limited authorisation for the agent to act on behalf of the owner should be for this request only. If it is not clear who is going to be the agent on file, the Office will either contact the agent making the change of ownership request or decline the request.

8. Disputes between parties 

48. Section 28 applies to disputes for inventions made by employees.

Section 28 of the Patents Act 2013

49. Section 131 and regulation 123 apply if the change of ownership request involves a dispute between parties. 

Section 131 of the Patents Act 2013

Regulation 123 of the Patents Regulations 2014

50. Such change of ownership requests are referred to the Hearings Office for consideration.

51. For more information on disputes, please visit our guidelines on Other disputes between parties.

Other disputes between parties – Patents Act 2013

9. Other changes: 

52. When requesting a change of ownership, further additional changes to the name or address may also be included and processed at the same time. However, the Office will decline any change of ownership request that solely involves the correction of an error or a change of name or address

Change a name or address 

53. A change of a patent applicant’s or patentee’s legal name should be made as a change of name in our case management system. For more information on how to change a name of a party, please visit our Maintain a Patent page. 

Maintain a patent

54. A change of a patent applicant’s or patentee’s address should be made as a change of address in our case management system. For more information on how to change an address of a party, please visit our Maintain a Patent page.

Maintain a patent

Correction of error 

55. If the change in owner involves a correction of error in the ownership of a patent application or patent, then a correction of error request should be filed. 

56. More information on requesting a correction of error, please visit our Maintain a Patent page.

Maintain a patent