EPO November Changes 2016 - UPDATE

EPO November Changes 2016 - UPDATE

What are the changes? 

In relation to assignment recordal, there has been a change to the EPO’s practice, as opposed to any law change.  These changes are:

  1. Both (or all) parties to an assignment of a European application must have signed the transfer document, and evidence of this is required;
  2. A signatory on behalf of a corporate entity must give their precise job title.

 

When did the change to assignment recordal come into effect?

From the 1st November 2016.

 

What does this mean for IP owners/IP agents?

In the UK and Europe, it has long been good practice (and often legally required) for both parties to sign an assignment document – that’s just basic contract law.  However, in the US, it is not unusual for an assignment document to have been signed by only the assignor.  We have had several instances recently where a US attorney has effected an assignment of a portfolio or family of patents and applications, including one or more European applications, using an assignment document signed only by the assignor.  Whilst this is perfectly reasonable under US law and practice, this document cannot now be used to effect the recordal of the assignment of the European application(s) at the EPO.  The only recourse, in these cases, has been to try and execute a confirmatory assignment in respect of the European application(s) using a contract signed by both parties.  Not only is this inevitably more costly, but in some cases it is very difficult (or even impossible) to get both parties to sign such a document – the Assignor may be unavailable or unwilling to sign such a document after the main assignment has been executed.  Where the Assignor is a company that is no longer in existence, such a confirmatory assignment may not be valid, and alternative measures may need to be sought, further increasing the cost and complexity of (what should be) a simple assignment recordal.

 

Our advice

In countries e.g. the USA, where it is typical or at least not unusual for an assignment document to include only the assignor’s signature, consider what is being assigned.  If a family or portfolio of patent applications, including one or more EP applications, is being assigned, consider using an assignment that is executed by both (or all) parties.  If, for some reason, that is not feasible, consider preparing and executing a separate assignment document just for the European application(s) for use in the assignment recordal process at the EPO.

 

 

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