Types of Acts
Simple Name Change
Simple name changes are recorded in the EPR (European Patent Register) (R143(1)(f) EPC) upon simple submission of supporting documents (such as a copy of the commercial register).
Assignment of the Application
Validity
The assignment must be in writing and include the signatures of the parties (A72 EPC).
While the EPO does not verify this condition in practice, national courts do, and failure to comply may result in nullity.
Other substantive conditions are governed by the national law applicable to the contract (A74 EPC).
Recording
Conditions
The assignment is recorded in the EPR upon submission of documents proving the transfer (R22(1) EPC).
The following are required (Guidelines E-XIII 1, J12/00):
- Submit a request for recording the transfer.
- This request must be signed by the party submitting it (R50(3) EPC);
- The request must be submitted in an official language of the EPO (R3(1) EPC):
- A14(4) EPC does not apply, as this is not a document to be submitted within a set time limit.
- Pay an administrative fee (R22(2) EPC).
- This is set by the President of the EPO (A3 RFees) and published in the OJ.
- It currently stands at [montant_epo default= »95 € » name= »Schedule of fees and official fees – Recording of transfers »] (« Schedule of fees and official fees« , OJ EPO 3/2012, supplement, 2.1, point 1, p19).
- Submit proof of the assignment.
- It is not necessary to provide the assignment document itself, but a document proving the consent of the parties (the signature of the assignor is mandatory, that of the assignee is not, Guidelines E-XIII 1);
- This proof may be submitted in any language, as it constitutes evidence (R3(3) EPC), but the EPO may require a translation;
- A document stating the obligation to assign an invention (e.g., employee) does not constitute proof of assignment (J12/00), as the assignment may never have taken place even if the obligation exists.
The transfer is then recorded in the EPR (R143(1)(w) EPC and R22(1) EPC).
Rejection
If the proof is not convincing, the EPO informs the party requesting the transfer (Guidelines E-XIII 1) and invites them to correct it within a given period.
If the request or proof of assignment is not submitted (or is incorrect), the request is rejected (R22(2) EPC).
If the official fee is not paid, the request is deemed not to have been filed.
Effect
No Retroactivity
The recording of an assignment (and likely the recording of any other right) has no retroactive effect (J9/90).
For the EPO
The assignment is effective against the EPO from the date on which the three aforementioned conditions are met (R22(3) EPC). The effect of the assignment is therefore not retroactive (T656/98).
From this date, the new applicant acts as any normal applicant before the EPO (Guidelines E-XIII 1).
For the universal successor, there is no obligation to publish the succession in the EPO Register in order to replace the former applicant (T15/01).
For representation
It may happen that an assignment from one applicant results in a plurality of applicants.
In this case, a common representative must be appointed (R151(2) EPC):
- through the provisions of R151(1) EPC;
- if this is not possible, by requesting the applicants to designate one;
- if no one responds, by appointing one ex officio.
In the designated States / for third parties
The three aforementioned conditions are sufficient to render the assignment valid: States cannot require additional conditions such as a notarized deed, even if this is the case for national filings (indeed, A72 EPC sets out the validity conditions and A74 EPC states that these conditions take precedence over national conditions).
The assignment is effective against third parties from its publication in the EPO Register (i.e., from the receipt by the EPO of the request, the evidence, and the administration official fee, and if the application is published).
Granting of licenses on an application
This section also applies to exclusive licenses or sublicenses (R24 EPC).
Validity
The EPC does not provide for validity conditions.
Thus, reference must be made to national laws (A74 EPC). Care must therefore be taken, as a license may be valid in one country while being invalid in another.
Recording
The grant of a license is recorded in the Register with the same conditions as for the assignment of the application (R23(1) EPC).
The following is therefore required:
- file a request for recording the grant of a license.
- this request must be signed by the party filing the request (R50(3) EPC);
- this request must be filed in an official language of the EPO (R3(1) EPC). A14(4) EPC is not applicable, as this is not a document to be filed within a set period.
- pay an administration fee (R22(2) EPC).
- it is set by the President of the EPO (A3 RFees) and published in the OJ.
- It is currently [montant_epo default= »95 € » name= »Barème des taxes et redevances – Inscription des transferts »] (« Schedule of fees and official fees« , OJ EPO 3/2012, supplement, 2.1, point 1, p19).
- provide evidence of the grant of the license.
- it is not necessary to submit the license agreement, but a document proving the consent of the parties (the signature of the licensor is mandatory, that of the licensee is not mandatory, analogy with Guidelines E-XIII 1);
- this evidence may be provided in any language, as it is evidence (R3(3) EPC), but a translation may be required by the Office.
If the license is an exclusive license, it is additionally necessary to provide an authorization from the licensee or a power of attorney from the licensee (R24 a) EPC).
The grant is then recorded in the Register (R143(1) w) EPC and R23(1) EPC).
Cancellation
To request the cancellation of a license, the following is required (R23(2) EPC):
- file a request;
- this request must be signed by the party filing the request (R50(3) EPC);
- this request must be filed in an official language of the EPO (R3(1) EPC). A14(4) EPC is not applicable, as this is not a document to be filed within a set period.
- pay an administration fee (R22(2) EPC).
- it is set by the President of the EPO (A3 RFees) and published in the OJ.
- It is currently [montant_epo default= »95 € » name= »Barème des taxes et redevances – Inscription des transferts »] (« Schedule of fees and official fees« , OJ EPO 3/2012, supplement, 2.1, point 1, p19).
- provide (R23(2) EPC):
- documents proving the termination of the license;
- or a declaration from the licensee consenting to the cancellation.
Effect
The grant is enforceable against third parties from its publication in the Register (i.e., from receipt by the EPO of the request, the evidence, and the administration fee).
Assignment of the patent
The section on the assignment of an application also applies here (R85 EPC) during the opposition period or during opposition proceedings.
However, the validity requirements for the transfer of a patent are not provided for in the EPC, and national provisions therefore prevail (A74 EPC).
Similarly, the enforceability of the recording may depend on national provisions (A74 EPC).
Grant of licenses on a patent
There are no provisions regarding the grant of licenses on a patent.
Therefore, the national route (A74 EPC) must be followed for their registration, and it is not possible to register this type of license in the EPR (J17/91).
Other matters
This does not end there… indeed, it is possible for the patent to be pledged, charged, etc.
Nevertheless, these other « rights in rem » are governed by national law (A74 EPC), and the EPC does not address them.
Scope of the act
It is possible to perform the act for one or more designated Contracting States (A71 EPC). Thus, there may be multiple applicants: they will be treated as co-applicants for the purposes of the grant procedure (A118 EPC), and the text of the application must be identical (even during opposition).
It is not possible to perform an assignment for only part of a state. However, this is possible for the grant of a license (A73 EPC). Other rights are governed by national law (A74 EPC).
Jurisdiction of the EPO
Period
Start
No entry (meaning « publicly accessible entry ») may be made in the EPR before the publication of the application (A127 EPC).
However, this does not mean that it is useless to submit documents proving an assignment to the EPO: indeed, the fact that the assignment is not published in the EPR does not prevent the EPO from taking the assignment into account.
In fact, the assignment is opposable to the EPO from the date on which the aforementioned conditions are met (R22(3) EPC).
From this date, the new applicant acts as any applicant before the EPO, even if this assignment is not formally published in the EPR (Guidelines E-XIII 1).
End
It is no longer possible to make entries in the EPR:
- after the grant:
- i.e., after the publication of the mention of the grant in the Bulletin (A97(3) EPC), since thereafter national law applies (A2(2) EPC);
- unless during the opposition period, the opposition (R85 EPC) or the appeal against the opposition (R100 EPC). However, the entries may not have effect in certain designated states (depending on their national provisions).
- if the application is deemed withdrawn:
- until this date,
- or if restitutio in integrum is possible, until the end of the restitutio in integrum period if the acts to restore the rights attached to the application are performed simultaneously with the request for registration of the transfer (J10/93).
- if the application is refused:
- – ? –
Competent Body
The Legal Division is competent (A20(1) EPC and R22(1) EPC or R23(1) EPC).
However, if the request does not raise any issues (simple name transfer or transfer only) and does not appear likely to be refused or challenged by a party, it may be processed by another body (J18/84, e.g., opposition division, examination division, filing section, etc.). Registrations of licenses and other rights are not covered by this « simplification ».
If there is a challenge from an opponent, the Legal Division must be requested to issue a decision (T553/90).
Challenge to a Registration
When the validity of a registration (assignment, etc.) is legally challenged, the solution is not to cancel the registration pending resolution of the matter (unless this is seriously justified).
The solution the EPO must follow is to stay the proceedings where possible (J18/14).