As of 1st November 2016, the European Patent Office (EPO) Examination Directive that includes the acceptance conditions for recording an assignment underwent changes significantly altering the recordal procedure of an assignment at the EPO.

These amendments, which are in line with an increased formalization, primarily concern the obligation that the assignment contract is to be signed by all parties, and the introduction of a control of the signatories function.

I. Obligation that the assignment contract is signed by all parties

Article 72 of the Convention on the European patent provides that "An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract."

  • Directives before the 1 November 2016 amendments

Under the previous system, the EPO agreed to record an assignment where the assignment contract was signed solely by the assignor, provided that the application for recordation was submitted by the assignee or their representative.

In certain jurisdictions, notably the United States, the validity of an assignment is not determined by the acceptance of the assignee, this largesse offered by the EPO facilitated the recordal of assignments legitimately signed only by the assignor.

  • Directives after the 1 November 2016 amendments

The new directives now require the signature of all parties to the contract.

Thus, assignment contracts signed only by the assignor, while compliant with their original legislation (e.g. in the USA) cannot, as they stand, be recorded at the EPO.

In order to be recorded at the EPO, the assignment contract must be signed not only by the assignor but also by the assignee.

  • Consequences of these new directives

Firstly, these directives apply to all contracts subject to a recordal at the EPO as of 1 November 2016, including those signed prior to this date.

For assignment contracts that are only signed by the assignor, it is therefore necessary to also obtain the signature of the assignee.

It should be possible to add the assignees signature to the contract, or potentially on another document, providing that the contract is sufficiently identified.

A final alternative would be the signature of a confirmatory act of assignment by both the assignor and the assignee.

II. Control of the quality of the Signatories

  • Directives before the 1 November 2016 amendments

Under the previous system, the EPO required only that the title of the signatories was specified in the contract or recordal request.

  • Directive after the 1 November 2016 amendments

Henceforth, the EPO will control of the function of the signatories title.

Either it can be presumed from the title of the signatory that they are authorized to sign on behalf of of the company (e.g.: President, Vice-President, CEO, General Director ...).

Or it cannot be presumed, as the signatories title does not presuppose their capacity to act (e.g.: Head of the Industrial Property Department, Authorized Representative ...). In this case it is necessary to file documents stating that on the date of the signing of the contract the signatory is authorized to sign it on behalf of the Company.

  • Consequences of the new Directives

Differences in legislations do not permit a list of functions to be drawn up for which there is no need to justify the authorization to sign on behalf of the company and those for which it would be mandatory to do so.

In conclusion, to be certain that the recordal of assignment in the contract will be accepted without having to provide additional documents, it is necessary that:

The signatories occupy a function implying their authority to act,

Or

A notary certifies, on the contract, that the signatories are authorized to sign.

For other cases, it will be necessary to provide the EPO with copies of official documents showing delegations of power.