The European Patent Office (EPO) has revised its formality requirements for recording assignments of European patent applications. Previously, the EPO accepted any kind of written evidence suitable to prove the transfer, and assignment documents evidencing a transfer that had only been signed by the Assignor(s) were accepted where the document was submitted for recordal by the Assignee (see the EPO’s current “Guidelines for Examination” at E-XII-3).
However, Article 72 of the European Patent Convention (EPC) states: “[a]n assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”. The EPO is now being more strict in interpreting this provision, requiring that the signature of both the Assignor(s) and the Assignee(s) appear on the assignment document before the assignment will be recorded. The EPO Guidelines for Examination have been revised to mandate this change in practice (see the revised version of section E-XII-3 of the EPO’s Guidelines for Examination, available here), and the revised Guidelines come into force on 1 November 2016. Registration of transfers already recorded will not be affected by this change in practice.
Please contact any one of our professionals if you have questions about how this change in the EPO’s practice may affect your patent portfolio.