Assignment, modification and constitution of right

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Chapter 1. Type of acts

Section 1.1. Simple name change

Simple name changes are recorded in the REB (R143 (1) (f) EPC) on presentation of the supporting documents (such as a copy of the commercial register).

Section 1.2. Assignment of the request

1.2.1. Validity

The assignment must be written and include signatures Parties (A72 EPC).

If the EPO does not verify this condition in practice, the national courts will check it and this may be a condition of invalidity.

The other substantive conditions are governed by the national law applicable to the contract (A74 EPC).

1.2.2. Registration

1) Conditions

The assignment is recorded in the BER on production of the documents proving this transfer (R22 (1) EPC).

Must therefore (Directives E-XIII 1, J12 / 00):

  • produce a request to register the transfer.
    • this request must be signed by the party making the request (R50 (3) EPC);
    • this request must be submitted in an official language of the EPO (R3 (1) EPC):
      • TheA14 (4) EPC is not applicable because it is not a part to be produced within a specified period.
  • pay a administration fee (R22 (2) EPC).
    • it is fixed by the President of the EPO (A3 RRT) and published in the OJ.
    • She is today 95 € ( ' Schedule of taxes and fees », OJ EPO 3/2012, supplement, 2.1, point 1, p19).
  • produce the proof of the assignment.
    • it is not necessary to provide the surrender document, but a document proving consent parties (the signature of the transferor is obligatory, that of the transferee is not obligatory, Directives E-XIII 1);
    • this proof can be provided in any language because it is proof (R3 (3) EPC), but a translation may be required by the EPO;
    • a document mentioning the obligation to assign an invention (eg employee) does not constitute proof of assignment (J12 / 00), because the assignment may never have occurred even though the obligation exists.

The transfer is then entered in the REB (R143 (1) w) EPC and R22 (1) EPC).

2) Rejection

If the evidence is not convincing, the EPO will inform the party requesting the transfer (Directives E-XIII 1) and invites him to correct within a given period.

If the request or proof of the assignment is not presented (or incorrectly), the request is rejected (R22 (2) EPC).

If the fee is not paid, the request is deemed not presented.

1.2.3. Effect

1) No retroactivity

The registration of an assignment (and probably the registration of any other right) has no retroactive effect (D9 / 90).

2) For the EPO

The transfer is effective against the EPO from the date on which the three preceding conditions are fulfilled (R22 (3) EPC). The effect of the transfer is therefore not retroactive (T656 / 98).

From this date, the new applicant acts like any normal applicant before the EPO (Directives E-XIII 1).

For the universal successorthere is no requirement to have the estate issued to the REB in order to replace the former applicant (T15 / 01).

3) For the representation

It may happen that an applicant, the assignment leads to a plurality of applicants.

In this case, it is necessary to appoint a common representative (R151 (2) EPC):

  • thanks to the provisions of the R151 (1) EPC ;
  • if this is not possible, asking the applicants to appoint one;
  • if nobody answers, by appointing one of office.
4) In designated states / for third parties

The three preceding conditions are sufficient to make the assignment valid: States can not request additional conditions as a notarial act even if it is the case for national applications (indeed, theA72 EPC gives the conditions of validity and theA74 EPC indicates that these conditions take precedence over national conditions).

The transfer is opposable to third parties as soon as it is published the BWR (ie upon receipt by the EPO of the request, the proof and the administration fee and if the application is published).

Section 1.3. Licensing on a request

This section is also about licensing exclusive where the under licenses (R24 CBE).

1.3.1. Validity

The EPC does not provide conditions of validity.

So, we must refer to national legislation (A74 EPC). So you have to be careful because a license can then be valid in one country and not valid in another country.

1.3.2. Registration

The license is registered in the REB under the same conditions as for the assignment of the application (R23 (1) EPC).

Must therefore :

  • produce a request to register the license.
    • this request must be signed by the party making the request (R50 (3) EPC);
    • this request must be submitted in an official language of the EPO (R3 (1) EPC). TheA14 (4) EPC is not applicable because it is not a part to be produced within a specified period.
  • pay a administration fee (R22 (2) EPC).
    • it is fixed by the President of the EPO (A3 RRT) and published in the OJ.
    • She is today 95 € ( ' Schedule of taxes and fees », OJ EPO 3/2012, supplement, 2.1, point 1, p19).
  • produce the proof of licensing.
    • it is not necessary to provide the license agreement, but a document proving the consent of the parties (the signature of the licensor is obligatory, that of the concessionaire is not obligatory, analogy with Directives E-XIII 1);
    • this proof can be provided in any language because it is proof (R3 (3) EPC), but a translation may be required by the Office.

If the license is a exclusive license, it is also necessary to provide an authorization from the licensee or a power from him (R24 (a) EPC).

The concession is then registered in the REB (R143 (1) w) EPC and R23 (1) EPC).

1.3.3. Radiation

To apply for the cancellation of a license, you must (R23 (2) EPC):

  • present a request ;
    • this request must be signed by the party making the request (R50 (3) EPC);
    • this request must be submitted in an official language of the EPO (R3 (1) EPC). TheA14 (4) EPC is not applicable because it is not a part to be produced within a specified period.
  • pay a administration fee (R22 (2) EPC).
    • it is fixed by the President of the EPO (A3 RRT) and published in the OJ.
    • She is today 95 € ( ' Schedule of taxes and fees », OJ EPO 3/2012, supplement, 2.1, point 1, p19).
  • provide (R23 (2) EPC):
    • documents proving the extinction of the license;
    • or a declaration from the concessionaire agreeing to the cancellation.

1.3.4. Effect

The concession is enforceable against third parties as soon as it is published in the REB (ie upon receipt by the EPO of the request, the proof and the administration fee).

Section 1.4. Transfer of the patent

The section on the assignment of an application is also applicable here (R85 EPC) during the opposition period or during the opposition proceedings.

Nevertheless, conditions of validity patent does not exist in the EPC and national provisions take precedence (A74 EPC).

Similarly, theenforceability registration may depend on national provisions (A74 EPC).

Section 1.5. Licensing of a patent

There is no provision on patent licensing.

Therefore, it is necessary to go through the national route (A74 EPC) for their registration and he not possible to register this type of license with the REB (J17 / 91).

Section 1.6. Other

That does not stop there ... indeed, it is possible that the patent is pledged, be rich, etc.

Nevertheless, these other "constitutions of rights" are governed by national law (A74 EPC) and the EPC does not treat them.

Chapter 2. Scope of the act

It is possible to perform the act for one or more designated Contracting States (A71 CBE). Thus, there may be several 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 the opposition).

It is not possible to make an assignment for only part of a state. On the other hand, this is possible for a license (A73 CBE). Other rights are governed by national law (A74 EPC).

Chapter 3. Jurisdiction of the EPO

Section 3.1. Period

3.1.1. beginning

No registration (include "publicly available registration") can be done at the BPR prior to the publication of the application (A127 EPC).

Nevertheless, this does not mean that it is pointless to send documents to the EPO proving an assignment: the fact that the assignment is not published in the REB does not preclude the fact that the EPO will take account the assignment.

In fact, the assignment is opposable to the EPO from the date on which the conditions set out above are fulfilled (R22 (3) EPC).

From this date, the new applicant acts as any plaintiff before the EPO even if this assignment is not formally published on the REB (Directives E-XIII 1).

3.1.2. End

It is no longer possible to make REB registrations:

  • After the deliverance :
    • that is after the publication of the mention of the deliverance in the Bulletin (A97 (3) EPC), because after that it is the national law that applies (A2 (2) EPC);
    • unless, during the opposition period, the opposition (R85 EPC) or the opposition appeal (R100 EPC). However, registrations may not have effects in some designated states (depending on their national provisions).
  • if the request is deemed withdrawn:
    • until this date,
    • or if a restitutio in integrum is possible until the end of the re in integrum if the acts enabling the rights attached to the application to be restored are carried out at the same time as the application for registration of the transfer (J10 / 93).
  • if the request is rejected :
    • -? -

Section 3.2. Competent body

The Legal Division is competent (A20 (1) EPC and R22 (1) EPC or R23 (1) EPC).

Nevertheless, if the request does not pose any problem (simple transfer of name or transfer only) and does not seem to have to be rejected or contested by a partyit is possible to have it processed by another authority (J18 / 84, ex. Opposition Division, Examination Division, Filing Division, etc. ). Registrations of licenses and other rights are not affected by this "simplification".

If there is a challenge from an opponent, the Legal Division will be asked to make a decision (T553 / 90).

Chapter 4. Contestation of an inscription

When the reality of a registration (assignment, etc.) is legally challenged, the solution is not to cancel the registration until the case is decided (unless it is seriously justified).

The solution that the EPO must follow is to suspend the procedure where possible (J18 / 14).

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