Changes in assignment practice at the European Patent Office


21-11-2016

European Patent Office (EPO) Guidelines on the evidence required to transfer European applications have changed.

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The updated EPO Guidelines (effective from 1 November 2016) reflect a change in evidence the EPO will accept with respect to a transfer of an European patent application. The EPO will only accept evidence of a transfer of an European patent application where the evidence is signed by all parties.  More detail is provided below.

Article 72 EPC states that any transfer of a European patent application must be signed by all parties to be effective.  There has been no change to this Article and so any assignment of an European patent application should still be signed by all parties.

However, it is not always desirable to file the original instrument of transfer at the EPO when, for example, the document contains confidential information.  Such a document becomes publicly available on the EPO register.

Accordingly, the EPO allows the filing of extracts of the original transfer document or other another document confirming such a transfer instead of filing of the original transfer document.  The document confirming transfer of the application must immediately verify the transfer.

Previously, the relevant section of the EPO Guidelines allowed these confirmatory documents to be a declaration signed only by the assignor, provided that the confirmatory document and request for transfer is filed by the assignee.

The relevant section of the new EPO Guidelines no longer allow such practice.  Instead, the documents submitted as evidence of the transfer must include the signatures of all parties.  The Guidelines suggest that confirmatory documents can still be submitted as long as the document is signed by all parties to the transfer.

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