Meeting the diverse formal requirements of different patent offices for registering an assignment of IP rights can be a laborious task. Having been relatively relaxed about registering assignments, the EPO changed its practice on 1 November 2016, requiring assignments that are to be recorded by the EPO to have been signed by or on behalf of all parties.
This requirement affects only those assignments resulting in a change in ownership that is to be registered whilst a patent or patent application is the responsibility of the EPO. Thus, this requirement does not apply, for example, to the assignment of the rights from an inventor to the applicant before filing, or to an assignment of an earlier application or an assignment registered during the International phase of a European ex-PCT application.
Since the announced change in EPO practice, we have also seen an increase in requests from the EPO for evidence that individuals who have signed assignments were actually authorised to do so. This generally involves providing the formal position held by the individual within the company, and sometimes even involves filing copies of company articles which confirm the individual’s authority.
Providing this additional information or evidence can be onerous and time-consuming, and so we strongly recommend including in the assignment document itself as much information as possible about those signing. This will reduce the likelihood of being asked to provide additional information when seeking to register the assignment at the EPO.
Finally, it is important to remember that there is a clear distinction to be made between a legally valid assignment and an assignment that the EPO (or any other patent office) will register. In addition to being signed by or on behalf of all parties if the assignment is to be registered at the EPO, the assignment should meet the relevant legal requirements to legally effect the transfer of rights. Where the assignment document itself does not meet the EPO’s requirements for registration, it is possible to file a declaration signed by or on behalf of all parties in order to have the assignment registered.