Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Guest post: Keeping the record straight

Popova-Pölzleitner-Anna-crop-168

Anna Popova, director of assignments at Brandstock, discusses the long and winding road of recordals

Popova-Pölzleitner-Anna
Anna Popova

Mention recordals to most in-house IP lawyers and the invariable response is, understandably perhaps, one of fear and loathing: fear of what can go wrong and loathing of the demands placed on time and resources. The sheer number and variety of documents required and the logistics involved in liaison with local agents can be daunting. Then there is the long tail of recordals (some can take as long as 14 years to complete) when inevitable staff changes can spell disaster. 

Recordals projects present some mighty challenges that even the most seasoned project manager would do well to approach with caution.

Recording changes in ownership, including name changes, matters for a number of obvious reasons including:

  • Pending applications and renewals may be adversely affected.

  • Civil and other enforcement actions (including Customs recordals) may be prejudiced.

  • Rights in trade marks may be compromised where there are licences in place.

Cost control

Cost is an ever-present concern and apparent savings from selective recordals can prove far costlier in the long run, even though financially or politically expedient in the short term.

From the start it is important to be able to predict and budget for expenditure accurately and transparently; this alone can be a huge task if handled in-house as enquiries have to be made with local agents just to get that information together - something that can take weeks, if not months.

Setting priorities

However efficient your process not everything can, or need be, done at once. It is advisable to set priorities and to formulate what we like to call priority buckets into which you place countries that should be addressed first, whether because they are more commercially important; because there are pending issues in those markets that require urgent attention; or because local procedural/regulatory rules make early commencement essential.

Managing priorities is a risk management call and so there are no hard and fast rules; experience and a close understanding of business needs is of paramount importance.

Docketing details

Maintaining an accurate and up-to-date record of what has been done in your IP management system is of course crucial.

The time-honoured principle of rubbish in, rubbish out is a persistent reality as is making sure that relevant documents (usually stored in PDF) are also available. It is not always possible for service providers to enter data direct into a management system (indeed some software providers prohibit it). However there are ways in which bulk transfer of data and/or documents can be achieved reliably.

Recordals is perhaps best thought of as a combination of science and art: it requires knowledge; experience and, at times, no small amount of creativity.

At Brandstock we have produced a series of short posts on this topic which we believe you will find informative and thought provoking: Recordals - the voice of experience; Top 10 priorities to consider when planning your next recordal project; and Seven arguments to file your recordals as a project.

(Managing IP is not responsible for the content in external links.)

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making