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secondary-recordals

Manage registrations of Intellectual Property assets during ownership changes

Changes in ownership, corporate mergers and other situations have many secondary and tertiary effects on organizations and their assets — and IP rights are no exception. If the handover of IP is not recorded with proper authorities, the lapse can result in a loss of legal protections for the patents, trademarks or design rights in question. Let Dennemeyer & Associates oversee recordal operations for your business, so that IP is never left floating in legal limbo.


Order Management Feature

Your recordal status in real-time

Are you looking for an easy way to streamline your recordals processes with maximum efficiency and minimum errors? Our digital solution for all your changes is now available in IP Lounge, making things simpler than ever.

How can we help?

Summary

The key benefits of Recordals

Recordal benefit Recordal benefit
Cost-efficient workflows

Our four-step recordals procedure is designed to ensure optimal efficiency at reasonable rates even if your organization operates in multiple jurisdictions.

Recordal benefit Recordal benefit
Ready for legal action

Dennemeyer can assume power of attorney when necessary to make any necessary declarations on your behalf as part of the recordals process.

Case studies

Our team is passionate about helping clients achieve their goals 

Audio and music

Full spectrum of trademark management

M&A support

Complex ownership changes and a variety of parties involved

Semiconductor technology

Effective management of a large global patent portfolio

  • Situation
  • Approach
  • Results & Benefits

Situation

 

The client is a holding company in the audio and music products sector with a portfolio of 814 trademarks in 93 countries

The holding company was understaffed and could no longer manage the various trademark deadlines 

The client’s partnerships with multiple providers and local agents were becoming difficult to manage

The client engaged Dennemeyer for the complete spectrum of trademark management services, including trademark filing and prosecution, trademark renewals and recordals 

 

Approach

 

A team of subject-matter experts under the lead of our trademark attorneys was assigned to manage all procedures for the client. Our focus was to funnel the client’s workstreams by prioritizing and consolidating all actions, deadlines and documents.

We set up an information channel to reflect the latest recordal updates. These could then be coordinated with other upcoming actions and instructions, narrowed down to the individual trademark level 

We established a dedicated communication flow for urgent and “call to action” matters 

We gathered all official receipts into regular reports, following naming convention rules and providing ready-to-be-uploaded files

 

Results & Benefits

 

The client was released from the burden of managing and prioritizing deadlines and documents across multiple actions

Our customer could place greater focus on strategic portfolio decisions 

No additional staff resources needed to be employed to handle recordals worldwide

All trademarks matters were efficiently aligned with the recordal status at any given time (e.g., filing or prosecuting new marks or renewing existing registrations with the latest ownership details)

 

  • Situation
  • Approach
  • Results & Benefits

Situation

 

Following a complex M&A, the customer engaged Dennemeyer’s Recordals team with the appropriate changes for 2077 trademarks in 179 countries 

The recordals had to reflect up to eight subsequent changes per trademark and five chains of ownership 

The customer had two main challenges: 

  1. The transfer documents did not correctly reflect the owners registered with the IPOs and therefore required correction or re-execution. Signatures from 38 assignors spread all over the world had to be collected
  2. A tight deadline for filing the recordals in close connection with market authorization procedures

 

Approach

 

We immediately allocated a team of six recordal experts to work under the supervision of our trademark attorneys and in close communication with the client. 

The team reconstructed the portfolio’s history and the correct chain of titles to be recorded

All 38 assignors were reached, and the proper documentation was obtained from all parties

We employed end-to-end recordal project management to meet our client’s business needs and other related deadlines such as the prosecution and renewal of the obtained IP rights

While ensuring efficacy in the documentation and recordal management, our team followed a strict budget allocation as approved by the customer

 

Results & Benefits

 

We corrected the chain of titles and obtained all documentation in four months

The recordals were completed within a month of obtaining the documents

Our customer benefited from the skills and experience of recordal experts without having to recruit additional / temporary staff

Our client’s recordal project was accomplished worldwide in excellent time

Transparent pricing and process efficiency meant there were no unexpected costs

Our customer enjoyed the simplicity we brought to what seemed to be an overwhelming recordal hurdle for them

 

  • Situation
  • Approach
  • Results & Benefits

Situation

 

The client is a multinational technology corporation in the field of semiconductors

The customer is very active in M&As and has experience managing and outsourcing recordal projects

The customer entrusted Dennemeyer & Associates with the recordal of changes for 752 patents in 48 jurisdictions 

The customer expected:

  1. No unforeseeable costs and cost predictability over time
  2. The recordal to go smoothly and efficiently with minimum involvement from their side
  3. To be informed throughout the entire process

 

Approach

 

Our standard recordal process was highly applicable to this client’s situation:

  1. A detailed quotation accompanied the overall cost estimate for the project
  2. A primary contact was allocated to the customer under the supervision of one of our team leaders and the guidance our IP attorneys
  3. The client was provided with a full project plan of the recordal timelines and cost allocations upfront
  4. Through a proxy power of attorney, we executed documents and empowered local agents on behalf of our customer
  5. We managed all notarization and legalization procedures
  6. All recordal filings and registrations were reported to the customer

Additionally, we provided our customer with customized reports reflecting the project’s progress and financials (incurred and upcoming costs, availabilities vs. budget). To minimize our client’s involvement, we docketed the recordal filing receipts and official registration confirmations directly into their database.

 

Results & Benefits

 

All recordal changes were completed on budget within the forecast period 

Our customer was relieved from dealing with administrative tasks

Every step of the project was clearly defined and structured, producing an efficient, surprise-free experience for the client

We were able to tailor our entrepreneurial solutions to the customer’s specific needs and expectations