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17 October 2016

EPO gets Stricter on Requirements for Recording Assignments

The EPO is tightening their formality requirements for recording assignment of EP patent applications.

The provision in question is 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” (emphasis added).

Previously, the EPO had accepted assignment documents evidencing a transfer that had only been signed by the Assignor.  Furthermore, the EPO’s current “Guidelines for Examination” (at E-XII-3 here) state that “Any kind of written evidence suitable for proving the transfer is admissible” and that “a declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee”.

However, 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.

Consistent with this change in practice, the above-mentioned section of the EPO Guidelines for Examination is being 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, here).

These new Guidelines for Examination will come into force on 1st November 2016, but from first-hand experience, we know that the EPO are already following this new, stricter practice.  However, registration of transfers already recorded will not be affected by this change.
Practical advice: In view of the above change, we advise all our clients to ensure any assignment documents prepared for the transfer of EP patent applications include the signature(s) of the Assignees(s) as well as the signature(s) of the Assignor(s), together with each of the Assignee(s) printed name and capacity as signatory, to avoid problems recording the transfer at the EPO.

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