By S&S Co. Advocates & Solicitors · Published 30 September 2026 · Informational content, not legal advice: see our disclaimer
Assignment Is Not the Same as a Licence
A licence and an assignment achieve very different legal outcomes, and each needs its own, distinct filing with the relevant Registry or Patent Office. A licence permits a third party to use the IP while ownership remains with the original owner; an assignment transfers ownership of the IP itself to the assignee. Where a business transaction is structured as a permanent transfer of IP rights, rather than merely a right to use them, the correct filing is an assignment recordal, not a registered-user or licence filing, using the wrong instrument can leave the actual legal position unclear on the official record even where the underlying commercial deal is clear between the parties.
Recording a Trademark Assignment
A trademark assignment is recorded by filing Form TM-P with the Trade Marks Registry, accompanied by the deed of assignment, under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. Certain categories of assignment carry an additional requirement: an assignment made without the accompanying goodwill of the business associated with the mark must be advertised, as required under Section 42 of the Act, so that the public record reflects that the mark has changed hands independent of the underlying business.
Recording a Patent Assignment
A patent assignment is recorded by filing Form 16 with the Patent Office under the Patents Act, 1970, to have the assignee entered as the new patentee of record. Until this recordal is complete, the assignee's position in enforcing the patent against an infringer, or claiming damages for infringement, can be constrained, since the Patent Office's own record continues to show the assignor as the patentee until the Form 16 recordal is processed and approved.
The Risk of Leaving an Assignment Unrecorded
An unrecorded assignment creates real practical exposure, beyond a mere administrative gap. An assignee who has not recorded its ownership may find its ability to sue for infringement, or to claim damages for infringement that occurred before recordal, is restricted. Separately, a third party dealing in good faith with the person shown as the registered owner on the official record, unaware of an unrecorded prior assignment, may be able to prevail in a priority dispute over the unrecorded assignee, since the official record is what third parties are generally entitled to rely upon.
Common Defects That Delay Recordal
Recordal applications are frequently objected to or delayed over avoidable defects: a deed of assignment that is not properly stamped, inconsistencies between the assignor's name as it appears in the deed and as it appears on the original registration certificate, missing supporting documents establishing the chain of title where the IP has changed hands more than once, or an incomplete description of the specific trademark classes or patent claims being assigned. Businesses completing an IP transfer as part of a larger transaction, such as an asset sale or restructuring, should build the time needed to cure these defects into their closing timeline rather than treating recordal as a formality that can be completed at leisure after closing.
Frequently Asked Questions
What is the difference between an IP licence and an assignment?
A licence permits use of the IP while ownership stays with the original owner, whereas an assignment transfers ownership itself: each requires a different filing with the relevant Registry or Patent Office to be properly reflected on the official record.
How is a trademark assignment recorded?
A trademark assignment is recorded by filing Form TM-P along with the deed of assignment, and certain assignments, particularly an assignment without the accompanying goodwill of the business, must additionally be advertised as required under Section 42 of the Trade Marks Act.
How is a patent assignment recorded?
A patent assignment is recorded by filing Form 16 with the Patent Office to have the assignee entered as the new patentee of record.
What happens if an assignment is never recorded?
An unrecorded assignee may face restrictions on suing for infringement or claiming damages until recordal is complete, and a third party dealing in good faith with the registered owner of record may prevail over the unrecorded assignee's claim.
References & Further Reading
This article references the following statutory provisions. Readers should always verify current rules, fees and timelines against the applicable statute and rules as amended, since these are revised from time to time.
- The Trade Marks Act, 1999, Section 42 (Assignment where goodwill not transferred), and the Trade Marks Rules, 2017 (Form TM-P).
- The Patents Act, 1970, and the Patent Rules, as relevant to recordal of an assignment via Form 16.