The EPO is going to take a stricter approach for recording an assignment of EP applications. Up until now the EPO has accepted assignment documents evidencing a transfer that had only been signed by the Assignor.
Recordal of assignment is governed by Article 72 EPC which states that “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”
The November 15 edition of the “Guidelines for Examination” (at E-XII-3) states that “a declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee”.
The above-mentioned section of the EPO Guidelines for Examination has been revised, and the above wording deleted, to be replaced with “Article 72 requires that the signatures of the parties appear on the documents submitted as evidence of the transfer” at new section E-XIII-3.
The new Guidelines for Examination will enter into force on 1st November 2016. Registration of transfers already recorded will not be affected by this change.
Thus, the EPO are getting stricter in following the requirements of Article 72 EPC, and now require that the signatures of both the Assignee(s) as well as the Assignor(s) must appear on the assignment document when recording a transfer.
According to the new guidelines it is however still possible to provide the following other evidences of the transfer: “Any kind of written evidence suitable for proving the transfer is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer”.
In view of the above change, we should advise all our clients to ensure any assignment documents prepared for the transfer of EP patent applications include the signature(s) of the Assignors(s) as well as the signature(s) of the Assignees(s). Also, to avoid problems with the recordal of assignment at the EPO it is important to ensure printed names and capacity as signatory for both parties in the transfer document.
Although it may seem that the EPO is going belt and braces with this stricter approach it is important to remember the that once a transfer has been duly entered in the European Patent Register, the registration cannot be undone. In case of any doubt, proceedings may have to be stayed until the identity of the legitimate applicant/proprietor has been established.
Helle Friis Svenstrup, member of Awapatent’s EPC specialist team
