The European Patent Office (EPO) has recently introduced more stringent checking of documents filed in support of a transfer of rights. This will apply whenever the EPO is asked to update its records of the ownership of a patent application or patent in view of an assignment of rights or other transfer. This is not expected to affect assignments that have already been recorded by the EPO or assignments that are recorded elsewhere, for example if an assignment is recorded with the International Bureau of WIPO before a PCT application is brought into the national phase at the EPO.
In November 2016, the EPO updated its Guidelines for Examination to require that assignment documents be signed by all parties to the agreement[1]. An assignment document that has been signed only by the assignor is not acceptable for recordal of a change of ownership at the EPO.
In addition, the EPO has now introduced additional checks relating to the individuals who have signed the assignment document[2]. If a person signs an assignment document on behalf of a company or other legal entity, the person's name and their entitlement to sign on behalf of that party should be indicated on the document alongside their signature. The EPO will then examine whether the signatories indicated in the assignment document had the authority to enter into a legally binding contract on behalf of the relevant parties. The EPO will only accept signatories that it is satisfied were entitled to sign by law, by the company's articles of association or equivalent, or by a special mandate, on the date when the assignment was signed.
If the EPO is not satisfied on the face of the documents that the signatories had authority to sign, then it will request further evidence. The assignment will not be recorded by the EPO until satisfactory evidence is provided.
It is understood that persons having certain positions within a company, such as the President, Chairman, Chief Executive, or a company Director, will be assumed by the EPO to have the authority to sign and the ability to authorise others to do so. However, a mere statement that someone is an "Authorised Signatory", with no supporting evidence, or an indication of a position that does not automatically imply authority to enter into such an agreement (such as "General Counsel" or "Director of Operations"), is likely to result in a request for supporting evidence. If entitlement to sign results from a special authorisation, then a copy of the authorisation will need to be submitted.
The process of recording assignments with the EPO is likely to be quicker and simpler if supporting evidence of authority to sign is provided when the assignment document is filed at the EPO. Because the EPO requires the signatures of both the assignor and assignee, it should be ensured that the relevant evidence of authority is obtained from both parties when an assignment is completed.
Footnotes
[1] See our earlier blog post at https://www.finnegan.com/en/insights/blogs/prosecution-first/stricter-rules-for-patent-assignments-in-europe.html
[2] EPO Guidelines for Examination, November 2017 edition, E-XIV, 3
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