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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