Case study:
Assignment and representation of large patent portfolio

Initial situation

Our client, a multinational corporation in the electronics and communications field, decided to transfer a large IP portfolio to a newly created subsidiary and asked HOFFMANN EITLE to assume representation of the German and European IP rights. We were also asked to handle the assignment of the IP rights to the subsidiary throughout Europe based on the client’s (incomplete) IP-portfolio list that.

Action taken

To properly complete this extensive project, a team of patent attorneys, an attorney at law and paralegals specialized in this complicated task was composed. The team reviewed the incomplete list and then undertook the required status enquiries at the EPO and the different patent offices in Europe to update the data. The team then carried out the recordation procedures to change ownership, took over representation of the German and European IP rights, and identified all upcoming critical deadlines. The team also took over the filing of new applications.

Outcome

The patent portfolio was successfully assigned to the subsidiary, the assignment was properly recorded at the patent offices and the client's list of case-related data comprehensively updated. Although numerous cases required immediate action, the HOFFMANN EITLE team was able to meet all deadlines and is now continuing with prosecution of the applications.