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How to search by Assignee instead of Applicant?

Post by thomasip » Mon Feb 13, 2017 11:19 am

Re: How to search by Assignee instead of Applicant?

Post by Patrick Le Gonidec » Thu Mar 16, 2017 2:48 pm

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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 .

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Recording assignments with electronic signatures at the EPO

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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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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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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Related content, new sdaia rules and guidelines published as ksa’s personal data protection framework is now enforceable, the belgian data protection authority publishes an informative brochure on artificial intelligence systems and the gdpr, priority entitlement: the epo implements the new “rebuttable presumption” criteria of g 1/22 and g 2/22 (t 2360/19).

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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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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 .

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Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a patent application or after the patent is granted, the owner of the patent may:

• Transfer ownership to another entity or party through an "assignment;" or
• Retain ownership but change their name.

The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Assignment Center

Use Assignment Center to file a Patent Assignment Recordation Cover Sheet and attach the supporting legal documentation as a black-and-white TIFF or PDF file. You may email questions about filing patent assignments to [email protected] .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

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