epo fee for assignment

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Recording an assignment at the European Patent Office

Article updated October 2023

This article was originally published on 14 May 2021, but has been updated in light of changes at the EPO.

Document signing has presented novel challenges in the new remote-working environment. Recording an assignment at the European Patent Office (EPO) can be straightforward provided that the formal requirements are understood and complied with. This article aims to set out those formal requirements so that pitfalls can be avoided.

Article 72 EPC relating to Assignment reads:

An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.

Written evidence

Documents evidencing the transfer must be filed with the request for recordal. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy) or other official documents or extracts thereof, including a confirmatory document prepared for the purposes of the recordal.

Signatories

Although the Article of the EPC has not changed, the EPO Guidelines for Examination relating to Article 72 EPC changed in 2016 and again in 2017. They require now that the signatures of all parties to the contract i.e. assignee and assignor must appear on the documents submitted as written evidence proving the transfer.

Entitlement to sign

An indication must be given as to the signatory's entitlement to sign. This will typically involve listing the job title of any signatory of the assignment. The EPO has the right to request documentary proof of the signatory's authority to sign. Our understanding is that, in practice, the EPO will usually request proof of a signatory’s authority to sign unless the relevant signatory is a Director, Managing Director, President or CEO of the relevant company. If the signatory is entitled to sign as a result of a special authorisation, best practice is to submit a copy (which does not need to be certified) of the authorisation in order to obviate the need for the EPO to request such proof.

Form of signatures

In the current circumstances, electronic signatures might be more readily obtainable than an original (wet) signature. In a notice dated 22 October 2021, available here , the EPO announced it would now be accepting electronic signatures to support registration of a transfer or a licence.

However, in a Board of Appeal decision dated 4 September 2023 (J5/23, available here ), the Board decided that this notice deviated from Article 72 EPC. Instead, the Board concluded that Article 72 EPC ‘must be understood as referring to a handwritten depiction of someone’s name’ (Reasons 2.9).

If the evidence presented is found to be unsatisfactory or where doubts arise as to the authenticity of the signature, the EPO may require the submission of further relevant documentary evidence.

The EPO will also accept a scanned copy of an original signature and the parties may sign in counterparts.

The national law of China, Japan and Korea foresees that a seal or stamp can take the place of a signature. As we understand current practice, this will be accepted by the EPO for China, Japan and Korea, provided it is accompanied by the seal holder's name in printed form.

The administrative fee must be paid in full, otherwise the request is deemed not to have been filed. Where the request relates to multiple applications, a separate fee has to be paid for each application.

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

Schedule of Fees

The interactive schedule of fees can be accessed without a smart card. Links to it are provided in various places on the EPO website.

• In the Online services main menu, click Interactive schedule of fees .

On the Schedule of Fees page, you can view and download the complete schedule of fees and search for individual fees. The list contains all currently valid EPO fees applicable for the existing patent application procedures.

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• Enter a date prior to 01.01.2002 in the Valid at field.

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Recording assignments with electronic signatures at the EPO

05 May 2022

To record a transfer of ownership of a European patent (application) before the European Patent Office (EPO), evidence of the transfer must be provided in the form of a written document (such as an assignment) signed by all of the parties. Until recently, the only form of signature that the EPO would recognise was a handwritten signature. This therefore required assignment documents to be printed, signed by hand, and scanned before filing electronically with the EPO.

New signature rules

Following a Notice from the EPO published in OJ 2021, A86, the EPO now additionally accepts some very specific forms of electronic signature.

As explained in the notice, the EPO will now accept for the purposes of recording a transfer of ownership, assignment documents that have been signed using a qualified electronic signature as defined in EU Regulation No 910/2014.

Qualified electronic signatures

Not all electronic signatures are created equal and electronic signatures generally fall into one of three main categories: basic electronic signatures, advanced electronic signatures, and qualified electronic signatures.

• A basic electronic signature refers to any signature that is rendered digitally, (for example, where the signatory’s name is typed between slashes).
• An advanced electronic signature is an electronic signature that is uniquely linked to and capable of identifying the person signing; is created by means that the person signing can use with a high level of confidence and over which they have sole control; and is associated with the electronic document to be authenticated in such a way that any subsequent change in the data is detectable.
• A qualified electronic signature is an advanced electronic signature with a qualified digital certificate that has been created by a qualified signature creation device.

According to the EPO’s new practice, the EPO will only accept qualified electronic signatures that meet the definition provided in EU Regulation No 910/2014 (also known as the eIDAS regulation). Notably, this requires a very particular form of qualified digital certificate to be used that is ultimately backed by a supervisory governmental body in the EU.

Whilst major electronic signature platforms (for example, DocuSign®) are able to support qualified electronic signatures, in almost all cases, signatures from these platforms do not meet the requirements of the eIDAS regulation and hence will not recognised by the EPO for the purpose of recording the transfer of ownership. The requirement for a qualified electronic signature according to the eIDAS regulation is a high bar – so high that as of March 2022, the EPO had not accepted as single request for recording a transfer of ownership involving an electronic signature.

Whilst the acceptance of electronic signatures in principle represents a positive step by the EPO towards recognising a commonly-used method of signing documents, the requirement for an eIDAS-compliant qualified electronic signature will mean that in most cases, the easiest way to meet the EPO’s requirements for having a transfer of ownership recorded will be to have the documents executed with handwritten signatures.

It is also worth considering who signs the assignment document as the EPO will typically request documentary proof of the signatory’s authority to sign unless the relevant signatory is a director, president, or CEO of the relevant company. See our previous article on this subject: “ EPO patent assignment recordal: signatures & evidence ”.

Applicants considering filing a request for recordal of assignment should contact their usual D Young & Co patent attorney who will be happy to advise as to whether your documentation will meet the EPO’s new requirements and any further steps that should be taken.

EPO notice dated 22 October 2021

View the notice from the European Patent Office dated 22 October 2021 concerning electronic signatures on documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC and requests for registration of a licence or other rights under Rule 23 EPC.

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Fri 26th Nov 2021

How to ensure an assignment will sail through at the European Patent Office

Services: International reach , IP portfolio management , IP strategy , Patents

Sectors: AI and data science , Chemistry , Cleantech and renewables , Electronics and telecoms , Life sciences and health , Materials science , Mechanical engineering , Software patents

Our patent attorneys highlight some of the information that you need to provide to ensure that your assignment sails through at the EPO without delay.

If the application is for a European patent, then it’s best practice to record the change in applicant on the European Patent Office (EPO) register as soon as possible. This allows for the recordal to be made centrally for all jurisdictions pre-grant instead of separately at individual national offices post-grant. 

The patent attorneys at Page White Farrer have undertaken hundreds of assignments at the EPO on behalf of inventors and IP agents around the world/.  Senior associate Elizabeth Mills highlights some of the things to watch out for, and the information that you need to provide to ensure that your assignment sails through at the EPO without a refusal or delay.

In order to register a change in applicant at the EPO, the old or new applicant must:

• file a request for the change in applicant;
• pay an official fee; and
• provide evidence that convinces the EPO that there has been a transfer of rights in the application.

What evidence does the EPO need to record assignment of a patent?

This last requirement is the trickiest to fulfil, and the reason why requests may get refused. As most issues arise when legal persons (e.g., companies) are considered, the following will focus on the requirements for companies.

Although any type of written evidence can be filed, it is most common to file a copy of an assignment document or similar that was used to effect the transfer of rights from the old applicant to the new applicant.

In general, the EPO is looking for appropriate evidence that the signatories of both the old applicant and the new applicant are allowed to sign such documents are behalf of the company. This is to avoid incurring costs associated with resolving entitlement issues in the event of a fraudulent assignment, and to avoid any delays in the grant of a patent resulting from stays to examination of the patent application while these entitlement issues are being resolved.

For a legal person, the evidence must fulfil all of the following – it must be:

• in writing;
• signed by at least one signatory for the assignee (i.e., the new applicant);
• signed by at least one signatory for the assignor (i.e., the old applicant);
• provided with proof of the signatory’s right to sign the document on behalf of the old and new applicants;
• signed physically (i.e., not signed electronically), although each signatory may sign different physical copies of the same evidence; and
• where addresses are provided for the old and new applicants in the evidence, these addresses should match the recorded company information.

Proving your right to sign the patent assignment

Although in some cases, the requirement for proof can be complied with by simply indicating the position(s) held in the company (e.g., CEO, Director, etc.), it has become increasingly common for the EPO to request evidence of the signatories’ right to sign is also filed.

This evidence may be provided in the form of:

• an extract of the registered company information that lists the company’s officers and/or any holders of procuration rights (e.g. via Companies House for a UK registered company, via the Securities Exchange Commission’s website or a State’s incorporation registry for a US registered company, or another relevant national Trade or Company register); or
• a document explicitly authorising the signer to execute assignment documents on behalf of the company which is signed by at least one person listed on the registered company information. This second type of evidence may also be accompanied by the extract of the register for evidencing the right to extend this signatory right.

If the EPO requires more evidence to record the change in applicant, they will issue a communication to request this. Failure to provide the right evidence at this stage can lead to delays in recording the assignment. The deadline for responding to this communication is normally two months. The deadline can be extended upon a request in writing by additional two months.

What happens when all information has been provided?

Assuming the request complies with the EPO’s requirements, the change in applicant is recorded on the EPO’s register.

The official registration date is the latest date by which the request is filed, the requisite evidence is filed, and the fee is paid. In case of a minor deficiency, e.g. if all requirements were present but not fulfilled completely (such as if the request was signed but the name and/or position of the person signing were missing), then the registration date may still be the date of receipt of the original request for registration.

Once a transfer has been recorded in the European Patent Register, the registration cannot be undone, regardless of whether or not one or more requirements were actually fulfilled when the transfer was registered by the EPO. It is therefore important to make sure that the original registration request is accurate in order to avoid later problems in procedures before the EPO.

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in November 2021.

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For the foreseeable future, wet-ink signatures are back as the only recommended approach to executing assignments of European Patent applications (EPAs).

In recent case J 0005/23 , the EPO has backtracked from its notice issued on 22 October 2021 (referred to here as the October 2021 Notice), which we reported here , in which it had said that it would accept, as evidence supporting a request for a recordal of a transfer of an EPA, either a copy of an assignment executed in wet-ink or executed via qualified electronic signature (QES).

Background facts

In J 5/23, the parties to an EPA assignment signed using text string signatures (see below for what this means) had attempted to record the transfer at the EPO. In issuing a deficiency notice to the request, the Legal Division referred to the October 2021 Notice and informed the applicant that the electronic signatures on the assignment did not fulfil the requirements of a QES. It invited the applicant to re-submit the document in PDF format bearing either QES or handwritten signatures. As the applicant failed to do so, the Legal Division rejected its request for the transfer to be recorded.

The applicants appealed, causing the EPO’s Boards of Appeal to consider the valid form of signature for assignments of EPAs.

Relevant law

The law setting out the requirements for a valid assignment of an EPA is at Article 72 of the European Patent Convention:

“ An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract. ”

Article 72 is supported by the Implementing Regulations, specifically rule 22 , which states that:

“ The transfer of a European patent application shall be recorded in the European Patent Register at the request of an interested party, upon production of documents providing evidence of such transfer. ”

Based on these provisions, we know that an assignment of an EPA must be in writing and signed and that evidence of the assignment must be provided for the EPO to record the transfer, but neither the Article nor the Implementing Regulation provides express requirements as to the form of the document and what is meant by “ the signature of the parties ”.

What form of signature?

When the EPC was enacted in 1973, digital signature was but a theory (the earliest digital signatures came into use in the late 1970s), and so perhaps it was not considered necessary to specify what was meant by “signature”.  Now, however, there are any number of different signature methods.

The Boards of Appeal considered several of the available types of signature and what was intended by Article 72.  The signature types considered included: wet-ink (or by hand execution), text string signatures, or qualified electronic signatures.

Wet-ink : a signature which has been handwritten, e.g. using “wet-ink”. Wet-ink signatures include no ID verification measures.

Text string signatures : “A text string signature is a string of characters, preceded and followed by a forward slash (/), selected by the signatory to prove their identity and intent to sign” ( https://www.epo.org/en/legal/guidelines-epc/2023/a_viii_3_3.html ):

//CARPMAELS & RANSFORD LLP//

Text string signatures are acceptable to the EPO on documentation filed using the EPO’s own filing software. This form of signature is often used for procedural matters.

Qualified electronic signatures : A QES is a digital signature which includes identity verification measures, including:  

• Having the ability to uniquely identify and link its signatory to the electronic signature.
• Allowing the signatory to have sole control of the keys used to create the electronic signature.
• Identifying if the data has been tampered with after its accompanying message has been signed.
• Invalidating the signature if signed data has been altered in any manner.

A signature meeting all of the requirements above is an “Advanced electronic signature”.  A QES is all of the above plus the addition of a qualified certificate. This certificate is issued by a qualified trust service provider and it attests to the authenticity of the electronic signature to serve as proof of the identity of the signatory.

Under the relevant EU law, a QES has the same legal effect as a handwritten signature and this is recognized in all member states of the EU.

The Boards of Appeal’s Decision

The Boards of Appeal considered various points including the legal status of the EPC (an international treaty) vis-à-vis the possible instruments to amend or interpret the EPC, including, the October 2021 Notice.  Significantly, the Boards found,

“The Notice’s aim of “facilitat[ing] communication by electronic means” with users is commendable. In the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this. While a notice from the EPO may be a source of legitimate expectations (see J 10/20, Reasons 1.15), it is, as such, only a document providing information. In particular, the Notice is not a legal instrument passed by a competent legislative body … and therefore is not to be taken into account for a systematic interpretation of Article 72 EPC.”

As a result, the October 2021 Notice – with its statement that the EPO would accept assignments executed via QES – was not an authoritative interpretation of the meaning of “signature” under Article 72 EPC.  The most that the October 2021 Notice could do was create “legitimate expectation”, i.e. an expectation on the part of applicants recording assignments at the EPO that the EPO would accept an assignment executed via QES.  The result being that, while the applicant could expect the EPO to accept an assignment executed via QES as evidence to support the recordal of change of applicant, that did not mean that the assignment had been validly executed under Article 72, and so it was possible that such an assignment was not a valid assignment.

Indeed, the Board went on to determine that, “ In the absence of any such handwritten signature, an assignment agreement does not comply with the formal requirements under Article 72 EPC and, under Rule 22(3) EPC, has no effect vis-à-vis the EPO. ”

Practical advice:

• E-signed assignments dealing with the transfer of EPAs may still be binding on the parties to the contract, this will be a matter for the governing law of the assignment.
• At the time of writing, the EPO has not withdrawn the Notice and so it may still be possible to record an assignment of an EPA executed via QES.
• Our recommendation for anyone executing assignments of EPAs is for the document to be executed by hand. This can be executed in counterparts (i.e. each signatory executing their own copy), and only a scanned copy of the wet-ink signed agreement will be required for filing at the EPO.

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice.

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Ownership transfer of european patents and european patent applications, what are assignments of issued european patents.

An assignment of a European Patent is the act of transferring ownership of the issued European Patent from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Issued European Patents always need to be assigned on a country by country basis complying with the various national assignment requirements where the European Patent takes effect (is validated) in the respective contracting countries of the European Patent Convention (EPC). In addition, while the European Patent is still within the 9-month opposition term or an opposition is pending, the European Patent Office records assignments for the purpose of the opposition upon request, payment of the fee, and submission of a validly executed assignment document.

What are assignments of pending European Patent Applications?

In contrast to assignments of issued European Patents requiring recordation of the assignment on a country by country basis, the assignment of pending European Patent Applications is recorded centrally at the European Patent Office (EPO) upon request, payment of the fee, and submission of a validly executed assignment document.

Is the recordation of assignment of a partial ownership interests possible at the EPO?

Yes, it is for instance possible to add or remove a co-owner or co-applicant. Unless expressly specified otherwise in the assignment document, equal shares are assumed between the co-owner and co-applicant, often also called joint owners or joint applicants. Although not recordable at the EPO, certain partial rights can be assignable separately and independently from the underlying IP right, for instance the priority right that if properly claimed can determine the time rank of a later filed patent application.

What is required for valid assignments of issued European Patents?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national recording authorities such as national Patent Offices. When looking at a bigger patent family in what EPC countries the European Patent is validated and takes effect, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, European Patent Applications should be assigned at the EPO while still pending for avoiding the hassle of dealing with such wide variety of national requirements.

What are typical national form requirements for assignments of issued European Patents?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments of issued European Patents?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

What are the form requirements for assignments of pending European Patent Applications?

Article 72 EPC in conjunction with Rule 22 EPC governs assignments at the EPO, see http://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar72.html in conjunction with http://www.epo.org/law-practice/legal-texts/html/epc/2016/e/r22.html . Further details fleshing out the meaning of Article 72 EPC and Rule 22 EPC can be found in the Guidelines for Examination in the EPO, Part E, Chapter XIII, downloadable as PDF documents at: http://www.epo.org/law-practice/legal-texts/guidelines.html . As of November 1, 2016, the Guidelines expressly clarify that “Article 72 requires that the signatures of the parties appear on the document submitted as evidence of the transfer”.   As an alternative to filing the original assignment document with the signatures in ink, submitting copies or when filed electronically scans of the signed assignment form is admissible. If not filed, the original should be kept in a safe place. No specific assignment form is required. The assignment is just a very short document identifying the right that is assigned and the parties, the signatories and if applicable their job titles or other sources of signatory authorization. If only a specific percentage of ownership is assigned, this percentage also needs to be identified in the assignment.

Why are assignments important?

For pending European Patent Applications or for issued European Patents for the purpose of opposition proceedings, under Article 60 (3) EPC only the recorded assignee = applicant can exercise the right to a European Patent, see http://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar60.html , ruling that “(3) In proceedings before the European Patent Office, the applicant shall be deemed to be entitled to exercise the right to a European patent.”   For issued European Patents, on a country by country basis, the failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. Also, a proper assignment is required for validly claiming priority rights.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 

2. which formalities must be met to record a patent assignment which supporting documents are required, 3. what are the legal consequences of not recording the patent assignment does the record in the patent register have declarative or constitutive effect, 4. are there specific formalities in case the patent is held by more than one proprietor , 5. is there a need to appoint a domestic professional representative, 6. which official fees (if any) arise from recording a patent assignment, 7. which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any) , 8. which formalities must be met to record a patent licence which supporting documents are required, 9. what are the legal consequences of not recording the patent licence does the record in the patent register have declarative or constitutive effect, 10. is there a need to appoint a domestic professional representative, 11. which official fees (if any) arise from recording a patent licence, 12. it is possible to pledge a patent if yes, is it required to record such pledge in the patent register.

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Patents: Assignment

A European patent application or patent may be assigned as a whole or in part for one or more of the designated contracting states.

Assignment of a European patent application must be registered at the European Patent Office (EPO).

Assignment of European patent can also be registered during the opposition period or during opposition proceedings.

2.1 Are original supporting documents essential or are copies sufficient?

An assignment of a European patent application must be signed by, or on behalf of, both the assignor and the assignee.

2.2 Are there any legalization and/or notarization and/or translation requirements?

Form 5050 can be used to register an assignment, although it is not required to use this specific form.

2.3 Is there a must to use a specific form?

Furthermore, any kind of written evidence (original or copy) suitable for proving the transfer is admissible should be filed.

The record in the patent register has a declarative effect.

Assignments require the consent of all proprietors.

A domestic professional representative is required for European patent applications, where the applicant is neither a resident nor has a principal place of business in an EPO contracting state.

Registration of transfer: EUR 115

Patents: Licensing

Patent licences may be exclusive, sole or non-exclusive. Sub-licences are also allowed.

Licences may be geographically limited to parts of the territories of the designated contacted states only.

Licences can be recorded at the EPO.

Documentary evidence must be submitted to record a licence but a copy is sufficient.

There are no legalisation or notarisation requirements.

8.1 Are original supporting documents essential or are copies sufficient?

For registration, applications can be in the official languages of the EPO: English, French and German. If the application is not filed in one of these languages, a translation has to be submitted.

8.2 Are there any legalization and/or notarization and/or translation requirements?

In the case of co-applicants, the registration of licences requires the consent of each of the co-applicants.

8.3 Is there a must to use a specific form?

Form 5050 can be used to register a licence, although it is not required to use this specific form.

Patents: Pledge

It is possible to pledge a patent. There is no requirement to record a pledge on the patent register, although it is possible to do so. 

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30 January 2024

• EPO announces fee increases from 1 April 2024
• Insights & events

Following the Decision of the Administrative Council of 14 December 2023, the European Patent Office (EPO) has announced a general increase in official fees, a year after its last fee increase in 2023 . A complete breakdown of the increases is available on the EPO website .

Whilst some fees have been left unchanged, others have undergone modest changes of only about 4%. Most notably the renewal fees for the 3 rd to 5 th year have jumped significantly, ranging from 8 to 30% increases. Interestingly, the 6 th year renewal has actually been reduced (2%).

For more information about the fee increases and how they may affect you, as well as to discuss any potential cost savings, please get in touch with your usual Mathys & Squire attorney , or send us an enquiry .

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EPO fee increases from 1 April 2022: What you need to know

The European Patent Office (EPO) has announced it will be increasing official fees by approximately 2.5% from 1 April 2022 – two years since its last fee increase in April 2020. Full details of the increases are available via the EPO website .

Those with the largest increase (~3%) include application filing fees and renewal fees, while additional page fees, international search fees and further processing of delayed payments will remain at their current cost. The majority of official fees paid on or after 1 April 2022 will be charged at the new rate (although a six month grace period until 1 October 2022 has been confirmed if an official fee is paid at the pre-April 2022 rate). As stated by the EPO, it will be “deemed to have been validly paid if the deficit is made good within two months of an invitation to that effect from the [EPO]”.

Applicants can save money by paying fees early, ahead of the 1 April 2022 fee increase date, even if the official deadline for paying the fee is not until later in the year. Some fee payments, such as requesting examination and paying renewal fees, can be performed several months ahead of the official deadline so applicants may find it worthwhile to review their patent portfolios to check what fee payments are due over the next few months. A key example that could result in significant savings is entering the European regional phase early (i.e. before 1 April 2022). By doing this, applicants can save up to €115 per application (around 3% of the official fees). Although this would involve attending to the formalities to enter the European regional phase early, it would not bring forward other costs associated with the application as there is no need to request early processing of the application should an applicant choose this option.

We recommend applicants check their pending PCT applications now to decide whether to enter the European regional phase early to take advantage of the cost savings.

Mathys & Squire is a full-service intellectual property powerhouse dedicated to protecting your future. Founded in 1910, we have over 110 years of experience in the protection and commercialisation of IP rights.Visit our website  www.mathys-squire.com  or contact us at  [email protected]  to find out more about our services and how we can assist you.

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US Inventor Declarations and Assignments

After a patent application has been filed, the inventor may be required to sign and submit various forms.  What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms?  And what can you do now to prevent any complications from arising?  

One country which requires the inventor to submit signed forms is the USA.  Each inventor named on the application must submit a signed declaration and assignment with the US Patent and Trademark Office before payment of the Issue Fee.

What are US Declarations and Assignments?

An inventor declaration confirms the inventor’s belief that they are the original (or joint original) inventor of the claimed invention.  If an inventor declaration is not submitted by each inventor before payment of the Issue Fee, the application will be abandoned.

An assignment provides documentary evidence that the rights in the invention have been transferred from the inventor to the applicant, and that the applicant is the rightful owner of any patent granted for the claimed invention.  If a signed assignment is not submitted by each inventor before payment of the Issue Fee, the application could grant in the name of the inventor(s) instead of the applicant, although this can usually be rectified post-grant.

What if the inventor cannot or will not sign these forms?

In cases where the US application is filed later in the patent process, such as at the 12 month convention deadline, or even the 30 month national phase deadline, it is possible that the inventor(s) may no longer be available to sign the required forms (for example, they have left the company).  What happens then?

A substitute statement can be submitted in lieu of a declaration if an inventor is deceased, is under legal incapacity, has refused to sign the declaration, or cannot be found or reached after a diligent effort.  To demonstrate a “ diligent effort ”, it is usually sufficient to send a copy of the forms to the inventor’s last known address, along with an explanation of what is required and specifying a reasonable time-period for returning the signed forms (for example, 28 days).  If the forms are not returned by the end of this period, then it can be assumed that the inventor is no longer reachable.

If an inventor cannot or will not sign the required assignment to transfer their rights in the invention to the applicant, then one possible option where the inventor is an employee of the applicant is to submit their employment agreement in lieu of the assignment.  However, for the purposes of the USA, the employment agreement must address the employee’s obligation to assign any Intellectual Property (IP) rights created during their employment to their employer.  Ideally the document should contain language which indicates a present and active intent to assign any IP rights (for example, “ I hereby assign… ”), rather than language which merely indicates an intent to assign any IP rights in the future (for example, “ I agree to assign… ”).

If the employment agreement does not contain suitable language, one option is to rely on any local IP laws which legally require the employee to assign any IP rights to their employer.  For example, in the UK, section 39 of the Patents Act 1977 states that an invention made by an employee will automatically belong to the employer if:

“ (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking. ”

Therefore, if the employee and the employer are based in the UK and the invention falls into category (a) or (b) above, then the invention will automatically belong to the employer under UK law.

As such, in addition to filing a copy of the employment contract, a copy of the relevant local laws and a memorandum explaining why, under local law, the invention belongs to the employer can also be filed to prove full ownership of the application by the applicant.

What can the applicant do to avoid the above complications?

1/ Make use of PCT declarations if filing an International application, particularly:

• (i) the declaration as to the identity of the inventor;
• (ii) the declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent; and,
• (iv) the declaration of inventorship (for the purposes of the designation of the USA).

For example, declaration (ii) satisfies the proof of right requirements in the Indian national phase, and (iv) satisfies the declaration requirements in the US national phase.  Declarations (i) and (ii) can be signed off by the acting attorney; declaration (iv) however must be signed by each inventor.

2/ Make sure any employment agreements, particularly for research & development staff, clearly address the employee’s obligation to assign any IP rights created, and include language which actively and presently assigns those rights to the employer.

If existing employment agreements do not contain such clauses, a separate agreement can be drawn up for the employee to sign and then appended to their contract. 

3/ Include a clause in the employment agreement requiring the employee to sign any necessary forms both during and after their employment.  This contractual agreement can be referred to should the employee actively refuse to sign any required forms later in the patent process.

Taking the above actions now can help to avoid any problems later in the patenting process which will likely incur unnecessary costs to rectify.  Should you require any assistance or advice, please contact me at christina .schiavone@ wynne-jones .com .

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How to gain more time and delay the prosecution of a European patent application

How long will it take for my European patent application to be granted? This is a common question from applicants and one which is difficult to predict, but there are things that can be done to influence the speed of prosecution.

The time taken for a European patent application to be processed is largely dependent on how quickly the European Patent Office (EPO) generate their reports when they search and examine the patent application. The timeliness of the replies from the applicant and whether the applicant wishes to accept narrower protection or argue for broader protection over multiple exchanges with the EPO also plays a significant part. On average it takes about 3 to 5 years for a European patent application to reach the grant stage.

An applicant may want to achieve the grant of their patent application as quickly as possible to be able to enforce their patent against potentially infringing parties. Whilst a pending patent application may serve to deter would-be infringers, legal action cannot be taken until the patent has been granted. There are various way of accelerating prosecution including requesting acceleration under the PACE programme and perhaps making of a Patent Prosecution Highway request.

However, in other cases, the applicant may wish to delay the grant of their patent application for as long as possible. The applicant may require more time for determining their patent strategy. There may be a desire to spread the cost over a greater time period, provide time to monitor the market or for product development so that the patent application documents can be modified in the best way.

Further reasons to delay the grant may be to allow for more time to negotiate with would-be partners/investors or if the patent application is to be sold. Having a pending application that can still be modified may be more appealing to a purchaser.

Finally, it may also be prudent to delay grant to ensure the necessary transactions/assignments etc. are be recorded during the European phase to avoid having to make the necessary changes at each national office after the patent has been granted.

In this article we will focus on how to obtain more time to reply to communications issued by the EPO and thereby delay prosecution.

HOW DO I DELAY REPLYING TO AN EXAMINATION REPORT FROM THE EPO?

In general, for an examination report, which is labelled “Communication pursuant to Article 94(3) EPC”, the EPO will set a four-month deadline to respond.

To gain more time or delay prosecution we can request an extension of time; or we can delay prosecution by using further processing, which will be explained below.

EPC Rule 126 “Notification by postal services” has been amended such that documents will now be deemed to have been delivered to the addressee on the date of the document itself. Previously, the document was deemed to be delivered to the addressee on the tenth day following its handover to the postal services or ten days after the date of the document itself.

Deadlines to communications received from the European Patent Office dated on or after 1 November 2023 will now be calculated based on the on the date of the communication itself, without first adding the ten days.

EPC Rule 126 does have a provision for documents that are delivered “exceptionally late”. If a document is received more than seven days after the date of the communication itself; any deadlines calculated will be extended by the number of days delayed which are in excess of seven days after the date of the communication.

WHAT HAPPENS IF THE EPO DEADLINE FALLS ON A WEEKEND OR WHEN THE EPO IS CLOSED?

If a prescribed deadline falls on a day on which at least one of the EPO filing offices is not open, the deadline automatically rolls over to the next day when all the EPO filing offices are open. These dates can be found on the EPO website and the procedure is described in Rule 134(1) EPC .

Below are several mechanisms to gain more time and thereby delay the prosecution of a European patent application.

HOW CAN I REQUEST AN EXTENSION OF TIME FOR REPLYING TO AN EPO EXAMINATION REPORT?

For an examination report, i.e., “Communication pursuant to Article 94(3) EPC”, it is possible to request more time up to a maximum of six-months. The request must be filed before the expiry of the original time limit set by the EPO. No reasons are required for the extension of time. The extension of time also has no impact on the term of the patent.

A request for a longer extension (or an extension which would extend the period to respond beyond six-months) will only be accepted when reasons are given which are sufficient to show convincingly, that a reply in the period previously set will not be possible.

According to the EPO Guidelines, such exceptional circumstances might be, for example, the fact that representatives or clients are so seriously ill that they cannot deal with the case in time; or the need to perform extensive biological experiments or tests. On the other hand, foreseeable or avoidable circumstances (e.g. leave, pressure of other work) are not accepted as a sufficiently exceptional circumstance.

HOW CAN I USE FURTHER PROCESSING TO GAIN MORE TIME FOR REPLYING TO AN EPO EXAMINATION REPORT?

Further processing is a procedure intended to be used when a deadline is inadvertently missed. It enables the applicant to pay a fee and continue prosecution of the application. Thus, if the original deadline cannot be met, further processing can be used to gain more time to reply.

Failing to respond to an examination report will cause the application to be deemed withdrawn and the EPO will inform the applicant of this via a loss of rights communication (under Rule 112 EPC ). 

The loss of rights communication sets a further two-month period in which the applicant can complete the omitted act (i.e., respond to the requirements set out in the original examination report) to avoid the application being deemed to have been irrevocably abandoned. There is also the need to pay a further processing fee, which may be a fixed fee and/or based on any other EPO fees that were due at the same time as the response.

However, if the missed response is submitted and the fees paid, prosecution of the application will continue.

HOW DO I OBTAIN MORE TIME FOR A RESPONSE TO OTHER EPO COMMUNICATIONS SUCH AS ONES "PURSUANT TO RULES 161(1) AND 162 EPC" OR "PURSUANT TO RULES 70(2) AND 70a(2) EPC?

The communication pursuant to Rules 161(1) and 162 EPC (for making amendment on European national phase entry) is typically issued with a six-month time limit. This time limit is not extendable. At the end of the six-month time limit, the claims on file will be those that are searched and will form the basis of any excess claims fees that are due. Thus, there is no mechanism to obtain more time in respect of the communication pursuant to Rules 161(1) and 162 EPC.

The communication pursuant to rules 70(2) and 70a(2) EPC (extended European search report) is also typically issued with a six-month time limit. More time can be obtained by not responding to the extended European search report within the set time limit. The application shall then be deemed to be withdrawn and a loss of rights communication will be sent to the applicant. Further processing can be requested once a loss of rights communication is received as outlined above.

HOW DO I OBTAIN MORE TIME FOR REPLYING TO AN EPO INTENTION TO GRANT?

Once the patent has been successfully prosecuted, an intention to grant will be received from the EPO labelled “Communication under Rule 71(3) EPC”. 

This deadline is not extendible by simply requesting an extension of time. However, the deadline can be reset by requesting amendments. It is possible to request amendments to the text for grant. If amendments to the text are requested which are not acceptable to the examiner, then the examiner will issue an examination report. If the amendments are acceptable, on the other hand, then the intention to grant communication will be replaced with a new one, accompanied by the amended text and with a new four-month deadline.

CAN I USE FURTHER PROCESSING FOR OBTAINING MORE TIME TO REPLY TO THE INTENTION TO GRANT?

Not responding to the rule 71(3) EPC communication will result in the issue of a loss of rights communication. Further processing can then be used as described above to continue prosecution of the application. There is a further processing fee that is specific to the notice of allowance and therefore it is important to pay the correct further processing fee.

CAN NOT PAYING RENEWAL FEES AT THE EPO BE USED TO SLOW DOWN PROSECUTION?

The EPO does not progress applications where the renewal fee has not been paid on time. Thus, by not paying the renewal fee a communication may be sent by the EPO (although it is not obliged to do so), informing the applicant of the missed payment and the opportunity to validly pay the renewal fees within six-months after the due date (including a 50% surcharge). Late payment of the renewal fees should be used with caution because if there is problem making the payment at the last minute, it may be difficult to recover the application.

Thus, it is possible to obtain additional time for taking actions before the EPO and this can slow down prosecution. However, the techniques described should be used with caution and with advice from your patent attorney to ensure that rights are not lost.

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Increase to EPO Fees from 1 April 2024

The EPO is to increase official filing fees for new applications with effect from 1 April 2024. This will apply to ex-PCT applications as well as first and convention filings.

A decision of the EPO Administrative council, yet to be published in the official journal (EPOJ), indicates that a number of the official filing fees for new applications are to increase by about 4%.

Not all fees are to increase but the search, exam and designation are all scheduled to increase. The search fee is to increase from €1460 to €1520. The examination fee is to increase from €1850 to €1915 and the designation fee is to increase from €660 to €690.

The fee for grant and printing, payable in response to a notice of allowance (communication pursuant to Reule 71(3) EPC), is to increase from €1040 to €1080.

Publication of the decision is expected in the upcoming EPOJ of January 2024. Further details will follow on our website once this has been published.

Applicants with applications having filing due dates on or shortly after 1 April 2024 might consider getting the applications filed before this date to benefit from the current, lower, official fee rates.

For more information contact Avi Freeman or Matthew Ng.

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European (EPC) forms

Most frequently used forms:

1001: Request for grant of a European patent 1200: Entry into the European phase 2300: Notice of opposition to a European patent 1018: Withdrawal of one or more European patent applications

Users are encouraged to submit forms 7000 or 7038 through the dedicated functionality in Online Filing (eOLF) and Online Filing 2.0 .

International (PCT) forms

You can download forms for applications under the Patent Cooperation Treaty (PCT) from the website of the World Intellectual Property Organization (WIPO).

WIPO website

Third party observations

You can use our online form to submit your third-party observations. It has been designed to help you formulate them in a structured and concise way.

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Printable notes

Request for examination in an admissible non-EPO language

You may be able to file your request for examination in an admissible non-EPO language. You may also be entitled to pay a reduced examination fee.

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Request for (certified) copies of documents on file or for information from the files

Use our web form to file a request for (certified) copies of documents on file, or for information from the files related to a European patent application ( Rule 145(2) EPC  or Rule 146 EPC ) or a European patent with unitary effect ( Rule 20(2)(a) UPR ) in conjunction with Rule 145(2) EPC  or Rule 146 EPC .

You cannot use this form to request certified copies of a European patent application, of a priority document ( Rule 54 EPC ), of a European patent certificate ( Rule 74 EPC ) or of a certificate for a European patent with unitary effect. In these cases, you will need to file a request using one of the accepted means of filing ( Rule 2(1) EPC ,  Rule 20(2)(a) UPR ).

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