Durán-Corretjer SLP

On March 24, 2010, the practice for recording assignments, licences and changes of name for patents and utility models in Spain changed.From now on, it will be possible to make these recordals by submitting the following documents:
1) ASSIGNMENTS & LICENCES

1. The original assignment or licence document with the signatures of the parties, legalised by Notary Public and with the Apostille or corresponding Consular legalisation; or


2. a copy of document a) notarised and legalised with the Apostille or corresponding Consular legalisation; or


3. a certificate of assignment or licence form signed by the assignor/licensor and assignee/licensee without any legalisation.


4. In all cases, a power of attorney, signed by the applicant, who may be the assignor/licensor or the assignee/licensee, will be necessary. No legalisation of the signature will be required.

2) CHANGES OF NAME
Only a power of attorney, as above, will be required. No evidence of the change of name will be required unless the Spanish Patent and Trade Mark Office raises any reasonable doubts about the certainty of the change.As you will see, the above changes considerably simplify the burden of evidence for these recordals.These changes do not mean that in order to record an assignment, licence or change of name, it is no longer required for a formal document of assignment, licence or change of name, valid according to the laws of the country of the parties, to exist, since otherwise the recordal would be void.In addition, these changes also mean that it will no longer be necessary to show proof before the Spanish Patent and Trade Mark Office that the payment of the Tax on the Transmission of Property in Spain has been carried out.Nevertheless, the obligation to make these payments prevails and we advise that they be made in all cases, since otherwise, the Spanish Tax Authorities could very easily see that they have not been paid (by simply checking the recordal at the Spanish Patent and Trade Mark Office) and order that these taxes be paid with fines. The Spanish Tax Authorities can claim and review these payments within 4 years.
If you need any additional information about these changes or if you have any questions, please do not hesitate to contact us.