It is becoming more and more common to take a debenture over assets which include intellectual property rights ("IPRs"). This is just a reminder that if those IPRs include any registered rights, such as patents, registered designs or registered trade marks, it is important to record the debenture at the relevant IP registry, as well as at Companies House. If the debenture over the IPRs is not registered, it is ineffective against anyone else who acquires a conflicting interest in the IPRs who did not know about the debenture. Also, in some cases, unless the debenture is recorded, you cannot rely on the debenture document in court as proof of your interest in the IPRs, unless the court directs otherwise.
The debenture should be recorded at the relevant IP registries as soon as it is granted. Recording the debenture is neither costly nor time consuming, although it is important that it is registered at the correct registry. In some registries, including the UK Intellectual Property Office (IPO), recordal is generally done using a form signed by the party granting the debenture. To avoid difficulties in effecting the recordal, it is advisable to ensure that you obtain the correct form completed and signed by the party granting the debenture at the same time as the debenture document is signed.
As from 6 April 2010, the IPO has introduced a fee for recordal of a debenture over a trade mark or patent. This gives yet further incentive to get any recordals done as soon as possible!In order to ensure that all of the necessary documents are obtained at the right time, that the correct recordal applications are sent to the correct IP registries, and that your valuable rights are not jeopardised, please give either me or Esther Kirwan, a Senior Associate in our Intellectual Property team, a call. Esther's number is 0113 336 3432.
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