Effective November 1, 2016, new European Patent Office (EPO) Examination Guidelines governing the transfer of European patent applications will take effect. The new Guidelines make two changes that transacting parties need to know:
- the assignment document must include the signatures of both parties (i.e., assignor and assignee); and
- the assignment document must include the precise job title of each person who signs the document.
In the past, it was common for a patent holder to execute an assignment in favor of an assignee, without the assignee signing the document. Under the new Guidelines, the EPO will no longer accept an assignment document that uses the single-signature format.
In the past, some assignment documents would list the signing party as something like "authorized representative." This EPO will no longer accept this practice, either.
The new Guidelines only affect the transfer of pending applications, not granted patents. However, transacting parties should consider following the new Guidelines in all patent assignments, since the general contract laws of several European countries (including Great Britain and France) typically require both parties to sign a contract. The new Guidelines are also consistent with Article 72 of the European Patent Convention, which states that an assignment of a European patent application requires "the signature of the parties to the contract" (emphasis added).
(Thanks to my Fox Rothschild partner Marilou Watson for bringing this change to my attention.)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
