Assignment of intellectual property rights is a transaction in which the owner transfers its rights outright to another party, unlike licensing, which only permits use within an agreed scope and term. In business sales, group restructurings and carve-outs, trademarks and patents are often the most valuable assets on the table, and also where paperwork errors carry the heaviest consequences. This article sets out the assignment framework under the Law on Intellectual Property 50/2005/QH11 in its current consolidated text.
Scope of assignment of industrial property rights
Article 138 of the Law on Intellectual Property 50/2005/QH11 defines assignment of industrial property rights as the owner transferring its ownership to another organisation or individual, covering subject matter such as inventions, industrial designs, layout designs, marks and trade names. After assignment, the assignee becomes the new owner and the assignor no longer holds ownership rights in the subject matter.
For copyright and related rights, the hard boundary is that only economic rights can be assigned; the moral rights attached to the author are not assignable subject matter, save for limited arrangements the law allows around the right of publication. A buyer of copyright therefore needs to audit the chain of title carefully: works created by employees or commissioned creators may have a different rights structure from works of independent authors.
Assignment restrictions in Article 139
Article 139 of the Law on Intellectual Property 50/2005/QH11 imposes limits the parties cannot contract out of. An owner may only assign rights within the scope of protection. Assignment of a mark must not cause confusion as to the characteristics or origin of the goods or services bearing the mark. A trade name may only be assigned together with the entire business establishment and the business activities under that trade name. A collective mark may not be assigned to an organisation or individual that does not meet the conditions for using the collective mark under its regulations.
The confusion limit is the most underestimated point in real transactions: buying a mark while letting the seller keep using a similar sign for the same type of goods can push the assignment contract into prohibited territory and create mutual infringement exposure after closing. Chain-of-title diligence and a post-assignment sign-use plan should come before valuation.
Contract form and registration
Article 140 of the Law on Intellectual Property 50/2005/QH11 requires assignment of industrial property rights to be made by written contract. The contract should record the core contents: names and addresses of the parties, the basis of the assignment, the price and payment method, and the rights and obligations of each party. A contract with an unclear assignment basis, for example one that fails to identify the protection title being transferred, will run into difficulty at the registration stage itself.
On registration: assignment contracts for industrial property rights are registered with the Intellectual Property Office. Two layers of effect must be distinguished: between the parties, the contract takes effect as agreed and under the general law of contract; against third parties, the assignment only produces opposing effect once registered. It is incorrect to state that every unregistered assignment contract is void: the risk of non-registration lies in opposability to third parties and in updating the owner recorded on the protection title, not in automatically erasing effect between the transacting parties.
How assignment differs from licensing
Licensing, the transfer of the right to use under Articles 141 to 149 of the Law on Intellectual Property 50/2005/QH11, grants only a right of use within the agreed scope and term; the owner retains ownership and may keep exploiting the subject matter or license others, depending on the licence type. Assignment severs the assignors ownership position. This difference drives how the asset is treated in a business sale, what happens if a party becomes insolvent, and who may sue for infringement after the transfer date.
Frequently Asked Questions
Must an assignment of a trademark or patent be registered with the Intellectual Property Office?
For industrial property rights such as trademarks and patents, the assignment contract must be registered with the Intellectual Property Office for the assignment to be effective against third parties and to update the owner recorded on the protection title. Between the parties, a written contract under Article 140 of the Law on Intellectual Property 50/2005/QH11 takes effect as agreed; non-registration does not automatically void the contract, but the assignee cannot oppose third parties and faces risk if the former owner keeps dealing in the subject matter.
What must an IP assignment contract contain and what restrictions apply?
The assignment contract must be in writing under Article 140 of the Law on Intellectual Property 50/2005/QH11, with core contents: names and addresses of the parties; the basis of the assignment; the price and payment method; and the parties rights and obligations. Mandatory limits under Article 139 include: assignment only within the protected scope; assignment of a mark must not cause confusion as to characteristics or origin of goods or services; a trade name may only be assigned with the entire business establishment and activities; and a collective mark may not be assigned to a subject that fails the conditions for using the collective mark.
How does assignment of IP rights differ from licensing?
Assignment transfers ownership outright: the assignee becomes the new owner and the assignor loses the ownership position in the subject matter. Licensing, the transfer of the right to use under Articles 141 to 149 of the Law on Intellectual Property 50/2005/QH11, only allows the licensee to use the subject matter within the agreed scope and term; the owner keeps ownership. The difference shows up in standing to sue for infringement, asset treatment in business sales, and outcomes when a party becomes insolvent.
This article has been quality-reviewed by the FLAW AI Legal Council