Alex Bajjon

November 2016

Article 72 of the European Patent Convention 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.  Such assignments can be recorded centrally at the EPO for pending applications and patents that are within their 9-month opposition period.

Up until now, the EPO have been prepared to record a change of owner on the European Patent Register, where an assignment document, as evidence of the change of ownership, is only signed by the assignor, provided that the request for recording the change was filed by the new owner or their representative.

The EPO’s practice regarding the recording of assignments has now been tightened and the EPO now require that any documents submitted as evidence of a transfer of ownership are signed by both the assignor and assignee.  This change is evident from the latest version of the EPO’s Guidelines for Examination (E-XIII, 3), which came into effect early this month.

Therefore, it is important that assignments that cover patents and/or patent applications in multiple jurisdictions are signed by or on behalf of all parties to ensure that the assignment serves as sufficient evidence of the transfer of ownership in as many countries as possible. 

It is also important to try and execute such assignments as soon as possible after the transfer.  Not only do some jurisdictions require recordal of the assignment in given time periods to benefit from certain remedies (e.g. in the UK an assignment must recorded within 6 months of its date to maximise any costs awarded in infringement proceedings), but it may also be more difficult to obtain the signatures of parties years after the transfer had taken place.