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Process for recording intellectual property security interests

On Behalf of | Dec 12, 2019 | Intellectual Property

Similar to how tangible assets can be utilized, intellectual value can also be used to secure a loan based on the intellectual property’s inherent value. Filing documents with relevant and specific organizations for the purpose of establishing a lender’s security interest in intellectual property is known as perfection. However, intellectual property owners in California will follow slightly different processes when officially pursuing perfection for a loan based on whether the intellectual property is a trademark, patent, or copyright.

Although the federal Lanham Act addresses issues related to trademarks, it does not discuss pursuing security interests. In the absence of federal level governing language, a security interest pertaining to a trademark falls under the review of Article 9 of the Uniform Commercial Code. Instructed by the Uniform Commercial Code, the parties involved must file a UCC-1 financing statement. Typically, for further security, lenders also choose to file a document at the U.S. Patent and Trademark Office confirming the existence of the security interest as well.

Recording a security interest for a patent would follow the same two-step process as a trademark because the federal Patent Act does not address security interests. However, unlike trademarks, there is no filing fee for recording a security interest for patents or pending patents with the U.S. Patent and Trademark Office.

Copyrights differ from trademarks and patents because the federal Copyright Act does specifically address ownership transfers. Because this federal level law applies to copyrights, a lender would document a security interest by preparing a form for the U.S. Copyright Office. Copyrights, however, might have patents or trademarks associated with them. Accordingly, recording a security interest for a copyright might also include a UCC filing to document related intellectual property.

Thorough documentation is essential for any matters involving any type of intellectual property, including when pursuing security interests. Accordingly, legal advice might be instrumental whenever someone wants to buy, sell or license intellectual property. Legal issues may also arise when a person needs to defend a patent, trademark or copyright from infringement or stands accused of infringing upon another party’s intellectual property. Services available from an attorney can range from preparing paperwork, conducting negotiations, and or managing litigation.