If we handover a patent it means that we have “sold” it to a company or private person which now becomes effectively the owner. In such case all the related responsibilities, including payment of the annual fees, are up to the new owner and not the original requestor who has nothing more to do with it. However, the fact that the office filing the application originally has sent a notice rouses some doubts. It could be that there has not been a handover but a simple licensing, which means allowing the firm to produce it upon authorization and keeping a percentage on the profits. If this is the case, then it is still the responsibility of the original owner (as he is still the holder of it) to keep up the validity of the patent. In order to establish the situation, the agreed contract must be read very carefully to see what has actually been set up. Another hypothesis, the most likely one, is that the handover has actually been done but the Italian Patents and Trademarks Office have not registered the contract, in which case, according to the Office, the owner remains the original requestor, even if, in fact, he has sold it. This is the reason why all the duties are not requested from the buyer but from the original holder. Given the opportunity of the annual payment, it is wise to make the situation clear. The best thing to do is to contact the company and bring to their attention the situation in order to weigh up what needs to be done. If there has been a handover and it has not been registered, it is advisable to do this as soon as possible, so that this situation appears also on record at the Patents Office, consequently the original owner can release himself of any obligations once and for all.
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