Hoffmann Eitle - München, London

Hoffmann · Eitle Newsletter 2/2010 - Recordation Matters - Consequences of Delayed/Lacking Recordation of Change of Ownership in DE

Author(s): Dr. Matthias Wolf

When an IP right is transferred to a new owner, it is not an uncommon practice to postpone or even avoid the efforts and costs connected with the recordation of the new owner at the respective patent authorities. It is a far spread belief that the recordation could still be effected at a later stage if necessary. However, this attitude can result in substantial disadvantages for the new but unregistered owner in at least some jurisdictions, including Germany, as far as the rights of the actual patent owner as a party of court proceedings are concerned. This has also been expressed in a recent leading order (Hinweisbeschluss) of the Higher Regional Court of Düsseldorf in a patent infringement case (I-2 U 53/04, Dolorgiet GmbH & Co. KG, et al. vs. Inverness Medical Switzerland GmbH, dated February 25, 2010) and, in addition, it has been expressly indicated that not only the legal status but also the right to claim damages from an alleged infringer exclusively depends on the patent owner’s registration. Referring to this order, we will outline the consequences of a delayed or lacking recordation of a change of ownership under German jurisdiction.