EPO – registration of transfer of the European patent application – proof of authority
The European Patent Office (EPO) is seeking more documentary proof of a signatory’s authority for the registration of patent transfers. Please note, this practice is specific to assignments of a European patent application itself.
The addition below, is included in the revised Guidelines (E-XIV,3) that are in force from 1 November 2017:
“Where a document is signed on behalf of a legal person, only such persons as are entitled to sign by law, by the legal person’s articles of association or equivalent or by a special mandate may do so. National law applies in that respect. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. The EPO will in particular examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity.”
It appears that this addition is resulting in a rise in the number of transfers rejected by the EPO unless further documentary proof of the signatory’s authority to sign the assignment is provided at the time of registering the transfer.
Assignment documents drafted by HGF will always ask for signature by both parties, together with an indication of the signatory’s entitlement to sign the document, e.g. his/her position within the company. However, where patent proprietors or assignees prepare their own assignment document, they should ensure that any assignment to be recorded at the EPO contains at least the same standard. Taking these steps should avoid any registration of assignment being rejected by the EPO. In some circumstances, the EPO may still seek documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. In which case, HGF will contact you to provide such proof. If you would like HGF to review any assignment documents before registration of transfer of the European patent application to check where they comply with EPO Guidelines, then you can instruct us to do so.