Fri 26th Nov 2021
How to ensure an assignment will sail through at the European Patent Office
Our patent attorneys highlight some of the information that you need to provide to ensure that your assignment sails through at the EPO without delay.
At some point during a patent application’s life, an applicant may wish to transfer their rights in the patent application to another. This can happen when a business is sold or when a group of companies wishes to reorganise or consolidate its portfolio of patents as part of its IP asset management strategy.
If the application is for a European patent, then it’s best practice to record the change in applicant on the European Patent Office (EPO) register as soon as possible. This allows for the recordal to be made centrally for all jurisdictions pre-grant instead of separately at individual national offices post-grant.
The patent attorneys at Page White and Farrer have undertaken hundreds of assignments at the EPO on behalf of inventors and IP agents around the world/. Senior associate Elizabeth Mills highlights some of the things to watch out for, and the information that you need to provide to ensure that your assignment sails through at the EPO without a refusal or delay.
In order to register a change in applicant at the EPO, the old or new applicant must:
- file a request for the change in applicant;
- pay an official fee; and
- provide evidence that convinces the EPO that there has been a transfer of rights in the application.
What evidence does the EPO need to record assignment of a patent?
This last requirement is the trickiest to fulfil, and the reason why requests may get refused. As most issues arise when legal persons (e.g., companies) are considered, the following will focus on the requirements for companies.
Although any type of written evidence can be filed, it is most common to file a copy of an assignment document or similar that was used to effect the transfer of rights from the old applicant to the new applicant.
In general, the EPO is looking for appropriate evidence that the signatories of both the old applicant and the new applicant are allowed to sign such documents are behalf of the company. This is to avoid incurring costs associated with resolving entitlement issues in the event of a fraudulent assignment, and to avoid any delays in the grant of a patent resulting from stays to examination of the patent application while these entitlement issues are being resolved.
For a legal person, the evidence must fulfil all of the following – it must be:
- in writing;
- signed by at least one signatory for the assignee (i.e., the new applicant);
- signed by at least one signatory for the assignor (i.e., the old applicant);
- provided with proof of the signatory’s right to sign the document on behalf of the old and new applicants;
- signed physically (i.e., not signed electronically), although each signatory may sign different physical copies of the same evidence; and
- where addresses are provided for the old and new applicants in the evidence, these addresses should match the recorded company information.
Proving your right to sign the patent assignment
Although in some cases, the requirement for proof can be complied with by simply indicating the position(s) held in the company (e.g., CEO, Director, etc.), it has become increasingly common for the EPO to request evidence of the signatories’ right to sign is also filed.
This evidence may be provided in the form of:
- an extract of the registered company information that lists the company’s officers and/or any holders of procuration rights (e.g. via Companies House for a UK registered company, via the Securities Exchange Commission’s website or a State’s incorporation registry for a US registered company, or another relevant national Trade or Company register); or
- a document explicitly authorising the signer to execute assignment documents on behalf of the company which is signed by at least one person listed on the registered company information. This second type of evidence may also be accompanied by the extract of the register for evidencing the right to extend this signatory right.
If the EPO requires more evidence to record the change in applicant, they will issue a communication to request this. Failure to provide the right evidence at this stage can lead to delays in recording the assignment. The deadline for responding to this communication is normally two months. The deadline can be extended upon a request in writing by additional two months.
What happens when all information has been provided?
Assuming the request complies with the EPO’s requirements, the change in applicant is recorded on the EPO’s register.
The official registration date is the latest date by which the request is filed, the requisite evidence is filed, and the fee is paid. In case of a minor deficiency, e.g. if all requirements were present but not fulfilled completely (such as if the request was signed but the name and/or position of the person signing were missing), then the registration date may still be the date of receipt of the original request for registration.
Once a transfer has been recorded in the European Patent Register, the registration cannot be undone, regardless of whether or not one or more requirements were actually fulfilled when the transfer was registered by the EPO. It is therefore important to make sure that the original registration request is accurate in order to avoid later problems in procedures before the EPO.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in November 2021.