EPO changes requirements for patent assignments
From 1 November 2016, the European Patent Office (EPO) will no longer accept patent assignment documents which are signed only by the assignor; both parties’ signatures must appear.
The law in Europe technically always required a signature from both parties, but until now the EPO has tended to take a more pragmatic approach, recognising that the requirements are less strict in other jurisdictions, such as the US. This will now be changing as the EPO have decided that this practice is inconsistent with the Law.
With immediate effect, any new assignment documents for existing European patent applications, or priority/PCT applications destined for Europe, should therefore be signed by both the assignor and the assignee to ensure that they are accepted by the EPO.
The EPO have confirmed that the changes will have no impact on assignments which have already been recorded at the EPO.
For cases where an assignment has already taken place but has not been recorded at the EPO, and where the assignment document was only signed by the assignor, we recommend taking the following steps as appropriate:
- Obtaining a second signature if this is still feasible.
- Requesting recordal of the transfer at the EPO before 1 November 2016 if possible. However, this is not a guarantee because, in our experience, some examiners have already begun to follow the stricter new practice unofficially.
- Obtaining a “Confirmatory Assignment” document, signed by both parties, to confirm that an assignment took place on X date according to the laws of the relevant jurisdiction.
- Obtaining a declaration, signed by the assignee, confirming that they agreed to the assignment on the relevant date (less preferable than a single document signed by both parties).
If you have any questions or concerns about these changes, please do not hesitate to contact us and we will be pleased to give you more tailored advice.
We will, of course, be keeping an eye on this situation to see how the EPO applies the new practice after 1 November 2016 and will notify you if our advice changes.