It should go without saying but….
EPO Enlarged Board of Appeal significantly changes formal requirements for making a valid priority claim.
The European Patent Office (EPO) has updated its guidelines concerning the recordal of a transfer of a European patent application. This update (found here) is particularly relevant to those looking to transfer ownership of a European patent application.
Generally speaking, to transfer ownership of a patent application (and other IP) an assignment document is required. To confirm the transfer, the assignment document must normally:
Recently, the European Patent Office had been refusing to register transfers unless it was clear that the person signing was authorised to enter into legally binding contracts on behalf of their company. Now, the guidelines have been altered to confirm that this approach is correct.
Where an assignment document is signed on behalf of a company an indication of the signatory’s entitlement to sign must be submitted at the time of registration of the assignment.
For example, this indication may be provided by reference to a signatory’s name and position within a company (which will typically be included on an assignment document). Where the entitlement to sign results from a special authorisation, the relevant authorisation document must also be submitted.
If the EPO has any doubt as to whether a signatory has the entitlement to sign, the guidelines now provide that it may ask for documentary proof of this. Whilst the guidelines do not specify any requirement for a signatory have a senior position, they must be able to demonstrate their authority to enter into legally binding contracts on behalf of the company if requested to do so by the EPO. It would be advisable to provide this evidence when requesting registration of the assignment, so as to avoid delay.
We routinely prepare standard assignment documents that meet the EPO requirements and handle registration of transfers of global IP portfolios. We are happy to assist in drafting suitable assignment documents and registering assignments of your IP (not just at the EPO, but around the world). Alternatively we can review any executed assignment document you may already have, to determine whether it complies with the current EPO guidelines, before filing it at the EPO to register a transfer. Please contact one of our attorneys for further details.