european patent application assignment

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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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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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EPO patent assignment recordal: signatures & evidence

24 April 2018

The EPO’s approach to assignment recordal has changed over the last two years. At D Young & Co we have seen that the new approach has required applicants to provide more detailed documentation in support of their request which often results in the recordal taking longer than expected.

The main requirements for an assignment recordal have not changed. Article 72 EPC states: “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”.

Whilst this legal basis has not changed, the level of evidence the EPO now requires has.

Previously the EPO was happy to accept evidence that both parties agreed to the transfer, for example by having the assignor sign the assignment and the assignee request the relevant recordal at the EPO, however this is no longer the case. Assignments for recordal at the EPO are now expected to be in writing and signed by all parties to ensure that they meet the requirements of Article 72 EPC.

The Guidelines for Examination, which came into force on 01 November 2016, confirmed that the signatures of the parties (that is, the assignor and the assignee) must appear on the documents submitted as evidence of the transfer and also stated that a signatory signing on behalf of a corporate owner must give their precise job title.

The latest version of the Guidelines for Examination, which came into force on 01 November 2017, went further and states: “Where a document is signed on behalf of a legal person, only such persons as are entitled to sign by law, by the legal person’s articles of association or equivalent or by a special mandate may do so. National law applies in that respect. In all cases, an indication of the signatory’s entitlement to sign, for example 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. The EPO will in particular examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity.” (GL E XIV 3) (emphasis added).

Whilst this indicates that proof of a signatory’s authority to sign such documents might be requested in exceptional cases, at D Young & Co we have noted that this is being requested as standard, unless the relevant signatory is a director, president or CEO of the relevant company. Our discussions with the officers at the EPO have revealed that this is indeed the case, and that proof of authority for any signatory who is not a director, president or CEO of the relevant company is required.

We have also been informed that such proof of authority should state that the relevant signatory has authority to sign legally binding documents, in particular in relation to the assignment or transfer of patents and patent applications, on behalf of the company.

Whilst we have been able to obtain this guidance from the EPO, an explanation as to why this degree of evidence is now required has not been forthcoming. In any event this new approach is now the standard to which applicants must adhere when requesting recordal of an assignment or transfer at the EPO.

Recommendations

In light of the EPO’s new stricter approach, and from the experience of our various attorneys in recording assignments over the past two years, we recommend the following actions:

• Ensure any assignment that might be recorded at the EPO is signed by all parties.
• Ensure the job titles of the signatories are listed on the assignment.
• If the job title of any signatory is not director, CEO or president of the company (or company secretary for US companies), provide proof of authority for that signatory.
• The proof of authority should state that the signatory is authorised to sign legally binding documents on behalf of the company (in particular relating to the transfer or assignment of patents and patent applications).
• The proof of authority could be in the form of a specific document signed by a director, CEO or president of the company, an extract from the relevant commercial register or minutes from a board meeting.

It is hoped that by following these recommendations a request for recordal of assignment at the EPO will be swiftly approved and excessive delays avoided.

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.

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Thu 9th Nov 2023

Wet signatures required for assignment of European patent applications

Service: Patents

Patent Attorney David Roberts explains the Legal Board of Appeal of the European Patent Office’s decision requiring wet signatures on all assignments of European patent applications.

In a decision J0005/23 of the Legal Board of Appeal of the European Patent Office dated 4 September 2023, it was held that documents which assign a European patent application must be signed with handwritten signatures (“wet signatures”). This applies to all parties.

In particular, initially, an electronic copy of an assignment agreement bearing what the applicant termed "text string signatures" was not accepted by the EPO as sufficient to allow the EPO to record the assignment of the European patent application. That decision was appealed to the Legal Board of Appeal.

Based on several dictionary definitions of “signature” and history of the legislature, the Legal Board of Appeal decided that only “wet signatures” meet the requirements of the EPO that the assignment of a European patent application must be made in writing and requires "the signature of the parties to the contract".

The Legal Board of Appeal held that electronic signatures generally on assignment documents were not acceptable to the EPO. This includes simple electronic signatures (such as "text string signatures" as in this case), advanced electronic signatures which are uniquely linked to and capable of identifying the signatory, and qualified electronic signatures which are additionally based on a qualified certificate. It was held that only handwritten signatures result in “a sufficient level of authenticity of the assignment contract.”

So, whilst electronic signatures may be used in the context of filing documents in proceedings before the EPO (which practically all European patent attorneys do every day, for filing European patent applications, responses to EPO examination reports, etc.), this was held not to be sufficient for an assignment document that assigns a European patent application.

Notably, this decision only applies to assignment documents that assign a European patent application. This does not affect the signing of other assignment documents, such as assignments of earlier priority applications. If permissible according to the relevant local law, then such assignment documents can be signed electronically. Indeed, some countries do not require written assignment documents.

This latter point may be relevant given the decision of the EPO Enlarged Board of Appeal dated 10 October 2023 in the consolidated cases G0001/22 and G0002/22 concerning priority claims in European patent applications. It was held there first that the EPO is competent to assess whether a party is entitled to claim priority.

Secondly, it was held that there is rebuttable presumption of priority entitlement. It was noted that a low standard for a valid transfer of priority rights was appropriate in the EPO as national law on assignment of the priority right is not uniform (and indeed written assignment documents are not required in all countries in order to assign the priority right) and the EPO should not require further formalities. It should be borne in mind that in the EPO the right to a file a European patent application (which is subject to national property laws) is treated separately from the right to claim priority (which in the EPO is a right created under the “autonomous law” of the EPC and the Paris Convention and is to be assessed by the EPO), even though the rights typically go together.

For more information on assigning a European patent, please contact David Roberts .

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 2023.

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IP Law Bulletin

In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe,  an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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Recording assignments with the EPO – time called on using electronic signatures

Arnie francis.

Senior Associate

UPC representative

The European Patent Office's (EPO's) Legal Board of Appeal (LBoA) has drawn a line under the use of electronic signatures to record assignments. Assignments will need to bear the handwritten signatures of all parties in order to be recorded at the EPO . Here, we look at the background to this change in position on signatures and what you need to consider going forward.

Under Article 72 EPC, assignments of European patent applications require "the signature" of the parties to the contract. Historically, this meant the EPO required any assignment filed in support of a request to record a change in patent ownership to contain handwritten signatures of the parties.

Just under two years ago, the EPO issued a notice stating that it would accept 'qualified electronic signatures' in addition to handwritten signatures for the purposes of recording assignments. However, in its recent decision (J 5/23) , the LBoA confirmed that electronic signatures on copies of assignment agreements do not satisfy the requirements of a "signature" specified in Article 72 EPC, and so cannot be used to support a request to record a change in ownership at the EPO .

The immediate practical take-away is that applicants should ensure any assignments filed at the EPO to record a change in ownership contain handwritten signatures (though copies of such assignments can still be filed electronically).

A wider, perhaps more subtle take-away can be inferred from the reasoning of the LBoA . In reaching its decision, the Board concluded that a notice from the EPO is, as such, only a document providing information and is not a legal instrument that can either implement or specify any Articles of the EPC or its Implementing Regulations (rules). The Board therefore ruled that the notice could not be taken into account when interpreting Article 72 EPC.

This reasoning serves as a reminder that notices from the EPO purporting to effect changes in practice should be read and interpreted with care.

To discuss any of the points raised here, or any other issues in relation to managing and protecting your patents, please get in touch with a member of our global intellectual property practice .

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.

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Stricter Rules for Patent Assignments in Europe

September 30, 2016

Authored and Edited by Hazel Ford, Ph.D.; Stephanie M. Sanders

Many patent offices, including the USPTO, will record a transfer of rights on the basis of a document that has been signed only by the assignor. The European Patent Office (EPO) has traditionally followed the same practice, as long as the document is filed with the EPO by the assignee or the assignee’s representative.

In a change of approach, the Legal Division of the EPO has decided that this practice is inconsistent with Article 72 EPC, which states that “[a]n assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”. The EPO will therefore now require assignment documents to be signed by all parties to the agreement. An assignment document that has been signed only by the assignor will no longer be acceptable for recordal of a change of ownership at the EPO.

The EPO plans to update its Guidelines for Examination in November 2016 to reflect this new practice. However, we understand that the new approach is already being followed in at least some cases. Any future assignments that include the transfer of rights of a European patent application should therefore be signed by all parties to the agreement. The EPO has indicated that this change will have no effect on transfers that have already been recorded at the EPO.

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“New EPO Requirements Regarding Patent Assignments”

As of November 1, 2016, new European Patent Office (EPO) guidelines require that the signatures of not only the assignor(s), but also the assignee(s) appear on assignment documents.

These changes have no effect on assignments recorded at the EPO prior to November 1, 2016.  However, when recording a transfer after November 1, 2016, an assignment of a European application must include:

• Signature of the assignor(s) (e.g., the inventor(s)) effecting transfer of rights;
• Signature of the assignee(s), acknowledging acceptance of the transfer; and
• Specific job title of individual signing on behalf of the assignee (rather than “authorized representative” or a similar designation).

The EPO is expected to refuse to record assignments that do not satisfy the foregoing requirements.  

Accordingly, we believe that in the future all assignments should be signed by all parties.  Regarding the cases where an assignment has been executed but has not been recorded at the EPO, and where the assignment document was only signed by the assignor(s), you may consider obtaining a second signature from a representative of the assignee acknowledging acceptance of the rights.  As another alternative, it might be possible for both parties to sign a “confirmatory assignment” to confirm that an assignment that took place on a date prior to the effective date of these new guidelines.

If you have questions as to particular situations, please contact a Marshall Gerstein patent attorney .

The information contained in this alert is for informational purposes only and is not legal advice or a substitute for obtaining legal advice. Under applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2016 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.

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Assignments: Best Practice Tips

By Stephen P. Scuderi

The timing and sufficiency of an assignment document can become critical for protecting the rights of the assignee. These rights include the assignee’s right to sue for infringement, ownership right and right to claim priority.

Right to Sue for Infringement

In the recent case of Diamond Coating v. Hyundai, 823 F. 3d 615 (Fed. Cir. 2016), the court made it clear that anything less than a transfer of the “entire exclusive patent right” runs the risk of the assignee not obtaining “patentee status” and therefore not having standing to sue for infringement under 35 U.S. Code § 281. If less than the entire exclusive right is transferred, than the courts must analyze the agreement to determine if the assignee has obtained all “substantial” rights. If significant restrictions are placed on those rights, than the agreement will be deemed a license and the assignee will not have standing to sue for infringement.

Right of Ownership

Under U.S. law, a patent or patent application “shall be assignable in law by an instrument in writing” (35 U.S. Code § 261). In the U.S., an assignment that is signed by only the assignor is considered a valid assignment.

This is in contrast to Europe, wherein an assignment of a patent must be in writing and “shall require the signature of the parties to the contract” (Article 72 European Patent Convention (EPC)). “Parties” in this case means the assignor and the assignee. Therefore an assignment signed only by the inventor may not be considered valid in some European countries.

Fortunately, validity of an assignment is governed by the laws of the country where the assignment is executed. Therefore, if an assignment is executed and valid in the U.S., it will also be accepted by the European Patent Office. However, for companies with inventors in multiple countries, care must be taken as to the legal requirements for a valid transfer of ownership in the country where the assignment is executed.

Right to Claim Priority

The right to claim priority in a European or PCT patent application is governed by Article 87 EPC, which states that “any person — or his successor in title, shall enjoy — a right of priority during a period of twelve months from the date of filing of the first application.” Therefore, for an Applicant of a European or PCT application to claim priority to priority application, that Applicant:

• must be the identical legal person (or persons) who filed the earlier application, or
• must be a successor in title, and
• must claim the right within 12 months of the filing date of the priority application.

Recent European decisions have provided fact specific details in determining if the above conditions have been met. Firstly, in Edwards v. Cook, [2009] EWHC 104 (Pat), the English court ruled that the Applicant in this case was not a successor in title and did not have the right to claim priority at the time of filing a PCT application.

More specifically in Edwards v. Cook, a U.S. provisional patent application named three inventors (i.e., Obermiller, Osse and Thorpe) as applicants. Subsequently, a PCT application was filed claiming priority to the U.S. application, but named only Cook Biotech Inc. (Cook) as the Applicant. Obermiller was an employee of Cook and had assigned his right in the invention to Cook prior to the PCT filing date. However, Osse and Thorpe were not employees of Cook and only assigned their rights to Cook after the PCT filing date. The English court found that Cook did not have the right to claim priority because:

• at the time of asserting the priority claim, Cook alone was not the exact legal person who filled the priority application,
• nor was Cook a successor in title, and
• the subsequent assignments did not restore the priority right.

However, in KCI v Smith, [2010] EWHC 1487 (Pat), the English court ruled that the Applicant in the case was a successor in title based on the wording of an employment agreement. In that case the sole inventor of a U.S. provisional patent application was an employee of KCI. The inventor had signed a “confidentiality agreement” as a condition of employment with KCI. A PCT application was filed naming KCI as the Applicant and not the inventor. The main issue was whether or not the employment agreement was legally effective in making KCI the successor in title.

The court found that the pertinent part of the employment agreement read as follows:

• “in consideration of employment with KCI Inc. —“
• “I hereby assign and agree to assign to the Company all right, title and interest in all confidential information, inventions — ”

The court concluded that the agreement was effective to assign legal title to KCI and, therefore, KCI had the right to claim priority.

It is important to note that the court’s ruling is fact specific and the KCI case was based on an employment agreement that was an actual assignment, wherein the inventor stated: “I hereby — assign and agree to assign.” The court did not indicate how it would have ruled if the employment agreement was watered down to be closer to that of an obligation to assign. For example, if the employment agreement had merely stated that the inventor did “agree to assign,” it is not clear if the court’s ruling would have been the same.

Best Practice Tips

Based on the above, some recommended best practice tips would be:

• Assignment should be made for the “entire right, title and interest” in the invention.
• Both assignee and assignor should execute the assignment.
• If possible, ensure that employment agreements include sufficient language to be considered an assignment, e.g., “I hereby — assign and agree to assign”, similar to that of the KCI case.
• Ensure that all assignments for a priority application are executed before filing a priority claiming application (e.g., a European or PCT application).
• If there is any doubt as to the Applicant’s right to claim priority, then add the “person” who filed the original priority application as an additional Applicant to preserve the priority right. Corrections to the assignments and/or ownership rights can be made later.

APPLICATION FILING

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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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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“New EPO Requirements Regarding Patent Assignments”

As of November 1, 2016, new European Patent Office (EPO) guidelines require that the signatures of not only the assignor(s), but also the assignee(s) appear on assignment documents.

These changes have no effect on assignments recorded at the EPO prior to November 1, 2016. However, when recording a transfer after November 1, 2016, an assignment of a European application must include:

• Signature of the assignor(s) (e.g., the inventor(s)) effecting transfer of rights;
• Signature of the assignee(s), acknowledging acceptance of the transfer; and
• Specific job title of individual signing on behalf of the assignee (rather than “authorized representative” or a similar designation).

The EPO is expected to refuse to record assignments that do not satisfy the foregoing requirements.

Accordingly, we believe that in the future all assignments should be signed by all parties. Regarding the cases where an assignment has been executed but has not been recorded at the EPO, and where the assignment document was only signed by the assignor(s), you may consider obtaining a second signature from a representative of the assignee acknowledging acceptance of the rights. As another alternative, it might be possible for both parties to sign a “confirmatory assignment” to confirm that an assignment that took place on a date prior to the effective date of these new guidelines.

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Ink marks the spot: Signature standards in patent assignments

A recent decision of the EPO Boards of Appeal calls into question whether even qualified electronic signatures are suitable for use in assignment documents.

We previously reported, here , on a Notice of the European Patent Office (EPO) issued on 22 October 2021, which highlighted that the EPO would accept either wet ink signatures or qualified electronic signatures on assignment documents supporting the request for the transfer of a European patent application.

The requirements of qualified electronic signatures are stringent and most commonly available signature software programs are unable to generate them. Despite this, the willingness of the EPO to accept such electronic signatures was considered a positive step towards more digital working.

However, a recent decision of the EPO Boards of Appeal (BoA) (J 0005/23) now calls into question whether even qualified electronic signatures are suitable for use in assignment documents.

The appeal in question was filed by the applicant of a European patent application against a decision of the EPO Legal Division, which rejected the applicant’s request to record the transfer of the application to another party on the European Patent Register.

The applicant’s request was based on an electronic copy of an assignment agreement, which contained “text string signatures” for both the assignor and the assignee. A “text string signature” is defined as a “string of characters, preceded and followed by a forward slash (/), selected by the signatory to prove their identity and intent to sign” .

The Legal Division deemed these “text string signatures” non-compliant with the EPO’s October 2021 Notice, emphasising the requirement for an assignment document to be signed using wet ink or a qualified electronic signature.

In the applicant’s appeal to the BoA, it referenced a decision of the President of the EPO dated 14 May 2021 regarding electronic document filing, to argue that “text string signatures” should be allowable in assignment documents.

Board of Appeal’s Decision

In its decision, the BoA referred to Article 72 of the European Patent Convention (EPC), which reads:

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

The BoA’s decision centered on the interpretation of the term “signature” in Article 72 EPC, considering the Vienna Convention on the Law of Treaties. The Board concluded that a signature in an assignment contract must create an objectively verifiable link between the signature and the signatory. The Board stated that considering any type of text in electronic form which refers to the name of a person as a “signature” within the meaning of Article 72 EPC would be at odds with this rationale.

The BoA also stated that the decision of the President of the EPO referred to by the applicant only related to the manner in which documents may be filed in proceedings before the EPO, and not to the requirements for a valid assignment contract, meaning that the Decision was not applicable to the case at hand.

The BoA then turned its attention to the EPO’s Notice of 22 October 2021, which had deemed qualified electronic signatures acceptable in assignment documents. The Board commented that the Notice was not a legal instrument by a competent legislative body and so could not be relied on when interpreting the term “signature” in Article 72 EPC. The Board went on to state that without a different definition in the Implementing Regulations, “signature” in Article 72 EPC refers strictly to a handwritten depiction on the assignment contract. The Board thus dismissed the appeal, maintaining that, at present, electronic signatures, including qualified electronic signatures, do not comply with the formal requirements of Article 72 EPC for assignment agreements.

This case signals a departure from the EPO’s October 2021 Notice, emphasising that, at least for now, only wet ink signatures are deemed acceptable on assignment agreements for them to be recordable on the European Patent Register.

Nevertheless, the Board clarified that Article 72 EPC does not explicitly prohibit introduction of a definition for the term “signature” in the Implementing Regulations, which encompasses electronic signatures – and so, such signature forms may become allowable in future.

Until a concrete change in the law takes place, however, we strongly recommend that wet ink signatures be used on assignment documents if their recordal on the European Patent Register is intended.

If you have any questions about protecting your intellectual property get in touch  to speak to one of our attorneys.

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