The latest European Patent Office (EPO) Guidelines for Examination have been issued including an important update regarding the recordation of transfers at the EPO. Article 72 EPC states: “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”
Transfers of pending European patent applications and granted European patents during the opposition period or during opposition proceedings can be recorded centrally at the EPO. Rule 22 EPC requires the production of documents providing evidence of such a transfer. While technically both parties to an assignment agreement have always been required to execute the assignment document, up to now it has been generally the practice that the EPO would accept assignment documents where only the Assignor’s signature was present as evidence of a transfer, and where the request for the transfer was made by or on behalf of the Assignee.
From 1 November 2016 however, it is necessary that both the Assignor and Assignee execute an assignment document in order for such document to be accepted as evidence of a transfer. It is believed that this change has been made in response to an acknowledgment by the EPO that the practice to date was not consistent with Article 72 EPC.
This will be the practice from 1 November 2016; there is no requirement to resubmit assignments which have been recorded at the EPO prior to this date and which contain only the Assignor’s signature.
However, for an assignment which has been signed by only the assignor and not yet submitted for recordation at the EPO, it will be necessary now for the Assignee to sign the original assignment document, for the Assignee to sign a declaration indicating their acceptance of the transfer, or for both parties to execute a confirmatory assignment attesting to the assignment. Such a declaration or confirmatory assignment can be filed with the original assignment document.
It is also important to note that the titles of the signatories of the assignment must be indicated on the assignment document. Thus, not only is it a requirement that both the Assignor and Assignee sign the assignment document, but also that the specific titles of the signatories are present. A generic phrase such as “authorised representative” will not be accepted as sufficient by the EPO. The absence of the titles of the signatories thus also constitutes a deficiency which needs to be rectified in order for the assignment document to be fully compliant with the requirements of the EPO. The signatories of an assignment document must also be authorised to do so by the company of either the Assignor or the Assignee.
It is also important to note that these guideline changes only apply to transfers of pending European applications or granted European patents during the opposition period or during opposition proceedings. Thus, the updated requirements would not apply to an assignment of a priority application in a jurisdiction, such as the US, completed before the filing of any related European application. The validity of such an assignment would be governed by the jurisdiction in which the assignment was executed or the laws governing the assignment. Thus, such an assignment, if validly executed, could be accepted as evidence of a transfer of the related European application.