Are your assignments still EPO compliant?
The European Patent Office (EPO) has recently updated its Guidelines for Examination, which came into effect on November 1st, 2016. These Guidelines provide instruction on a wide range of European Patent matters including interpretation of Article 72 and Rule 22 of the EPC. Together, Art 72 and Rule 22 of the EPC govern the formal requirements for recording transfer of ownership at the EPO.
Article 72 (here) sets out that “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”; whereas, Rule 22 (here) indicates that transfers be recorded and published on the European Patent Register upon evidence and payment of a fee in order to be effective.
No change has been made to either Art. 72 and Rule 22 but the updated EPO Guidelines clarify what are deemed acceptable “documents providing evidence of such transfer” by the EPO.
While original signed copies of assignments seem a logical choice as “documents providing evidence of such transfer”, these will ultimately become publicly available via the EPO register, subject to Rule 22 of the EPC.
Many companies therefore prefer to retain the original key commercial assignment and avoid publication of certain confidential information that has significant value in not being made public!
Instead, companies opt to file extracts of the original transfer document or another document confirming such transfer, such as a confirmatory assignment, as is allowed by the EPO on the proviso that they immediately verify the transfer in accordance with European case law (J12/00).
The EPO Guidelines previously allowed such confirmatory documents to be signed by the Assignor only, provided that the confirmatory document and request for transfer be filed by the Assignee. The new EPO Guidelines (here) now requires that “the signatures of the parties appear on the documents submitted as evidence of the transfer.”
Evidence of the transfer must now strictly comply with the wording of Art. 72 by including the signatures of both parties, indicating that the EPO will no longer accept single-signature documents although it does suggest that the EPO will continue to accept alternative forms of evidence other than the original contract.
Furthermore it is stipulated that the assignment must include the “name and/or position of the person signing…” leading to anticipation that generic titles such as “authorised signatory”, will no longer be deemed acceptable by the EPO.
These requirements apply to both pending applications as well as assignments recorded during opposition proceedings, and represents a significant departure from prior practice on what the EPO accepted as evidence of a transfer of ownership.
As from November 1, 2016, when considering transferring your European Patent(s) you must ensure all documents used to verify patent transfers at the EPO are signed by all parties and that they clearly specify the name and capacity of all signatories.
For queries on this or any other European Patent law or practice matters please contact us at Post@cruickshank.ie
This information provides general information only and does not constitute legal advice.
