Member Article

Effective November 1^st, new guidelines came into effect for patent applications before the European Patent Office (“EPO”). One significant change affects what the EPO will accept as evidence of transfer of ownership of a patent application, an assignment. The EPO will now strictly enforce the requirement that an assignment of a European patent application have the signature of both parties involved in the assignment, the assignor(s) (the party giving up ownership) and the assignee(s) (the party receiving ownership). Assignments executed (signed) by both parties have been required for ownership transfer in other jurisdictions.

Previously, the practice of the EPO had been to accept an assignment document that had only been signed by the assignor(s). In addition to now requiring signatures of both parties on an assignment, the new EPO guidelines require that a signatory, if signing on behalf of a corporate owner, must give a precise job title, i.e., it is no longer sufficient to simply indicate “authorized representative” or “authorized signatory.”

It should be noted that this change will only affect what the EPO accepts as evidence of transfer – it does not affect the requirements of legal transfer as required by the national law in the country where the assignment is executed. In addition, the change has no effect on assignment documents previously recorded with the EPO.

There is increased interest in the U.S. in filing patent applications in the EPO, with approximately 43,000 applications filed in 2015, which was a 16% increase over 2014. In light of the new rules at the EPO, it is recommended that U.S. patent applicants use assignment documents that are executed by both the assignor(s) and the assignee(s), and clearly indicate the printed name of each signatory and his or her role. Use of an assignment document with these changes will allow for preparation and execution of a single assignment document that will be valid in the U.S. and in jurisdictions like the EPO that require signatures from both the assignor(s) and assignee(s).

If you would like specific advice regarding your assignment documents or international patent strategies, please feel free to contact members of the Intellectual Property Practice at Morris, Manning & Martin, LLP.

Relevant Links:

• EPO Guidelines for Examination
• EPO Article 72