The European Patent Office (EPO) will now only record an assignment of rights in a European patent application or European patent if signed by both the assignor(s) and the assignee(s).
Article 72 EPC states that: “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”
Whilst Article 72 EPC requires the signature of all parties to the contract, the practice of the EPO has been to allow an assignment to be recorded even if the document was signed only by the assignor(s) provided that the request for a transfer was made by or on behalf of the assignee(s). This practice is confirmed in the current Guidelines for Examination.
However, we have been made aware that the EPO will only record an assignment if it is signed by all parties to the agreement. An assignment signed by the assignor(s) only will be considered to be deficient. We understand from correspondence with the EPO that this change in practice has been made in the wake of decision J 17/14 resulting in the Legal Division’s acknowledgement that the current procedures for recording an assignment are not consistent with Article 72 EPC.
This change in practice has not yet been announced by the EPO. However, we are aware from recent experience that the new practice is already in effect and have been informed that the Guidelines for Examination will be updated in November. There is no indication that the EPO plans to revisit assignments already recorded under the previous practice.
Therefore, with immediate effect, all assignments to be recorded at the EPO must be signed by all parties to the agreement.
Should you have any questions or need assistance regarding this change, please get in touch.