EPO – registration of assignment – both signatures required
The European Patent Office (EPO) is set to apply a stricter standard for the registration of patent transfers. Please note, this practice is specific to assignments of a European patent application itself.
Up until now, the EPO has taken a pragmatic approach and allowed recordal of patent assignments that have only been signed by the assignor. However, from 1 November, assignments with only one signature will be rejected. Pursuant to Article 72 of the European Patent Convention, “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”
The EPO’s Guidelines for examination have been amended to remove the statement that “A declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee.” Instead, the signatures of all the parties must appear on the documents submitted as evidence of the transfer.
Assignment documents issued by HGF will always ask for both signatures. However, where patent proprietors or assignees execute their own assignment document, they should ensure that any assignment to be recorded at the EPO contains all parties’ signature (as well as getting other formalities correct, such as including the names and official positions of the persons signing the documents). This will avoid any registration of assignment being rejected by the EPO.
This change is reflected in the revised Guidelines (E-XIII, 3) that are in force from 1 November 2016. We have been advised by the EPO that this change of practice has no effect on the registration of transfers that have already been effected.