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Changes in signatory requirements for recording a transfer of rights at the EPO

Changes in signatory requirements for recording a transfer of rights at the EPO

26/10/16

The latest updates to the European Patent Office’s (EPO’s) Guidelines for Examination, due to come into force on 1 November 2016, include a change in the requirements for recording an assignment of rights in a European patent or patent application at the EPO.

Article 72 EPC states that “(A)n assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”. Under the current Guidelines this requirement has been deemed to be met provided it was clear that both parties agreed to the transfer. Thus, it has been possible to record a transfer of rights where the assignment document had only been signed by the assignor, provided that the request was filed by the assignee.

Under the new Guidelines, the EPO will require documentary evidence of the transfer of rights signed by both the assignor and the assignee.

Where an assignment document is signed by an individual on behalf of a company, the new Guidelines also indicate that the signatory but must provide full information regarding their precise role in the company. Stock phrases such as “authorised representative” or “authorised signatory” will no longer being deemed sufficient by the EPO.

Actions to Take

In light of the upcoming changes, companies should ensure that new assignment documents are signed by an authorised signatory of both the assignor and assignee, clearly indicating the printed name of each signatory and their role.

Any assignments which have not yet been executed should be reviewed to ensure that they comply with the new signature requirement.  For assignment documents which have been executed only by the assignor but not recorded by 1 November 2016, it should be noted that the EPO will continue to consider any kind of written evidence suitable for proving the transfer is admissible in order to support of the recordal. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. It may therefore be possible to draw up a separate document attesting to the validity of a previously signed assignment agreement.

If you would like specific advice on how these changes may affect your business, or assistance in drawing up suitable assignment agreements or related documents, please feel free to contact one of our team at WP Thompson.