“New EPO Requirements Regarding Patent Assignments”

December 2, 2016
Marshall Gerstein Alert

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:

  1. Signature of the assignor(s) (e.g., the inventor(s)) effecting transfer of rights;
  2. Signature of the assignee(s), acknowledging acceptance of the transfer; and
  3. 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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