EPO tightens assignment rules

Up until now, the practice of the European Patent Office (EPO) has been to register an assignment of a European patent application if requested to do so by the assignee even if the evidence of the assignment has been signed only by the assignor. This is reflected in the current Guidelines for Examination of the EPO which states the following:

“A declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee”.

EPO practice is now changing in this regard; the EPO will now insist that evidence of an assignment is signed by both the assignor and the assignee. Indeed, the above sentence has been removed from the November 2016 edition of the EPO’s Guidelines for Examination, having been replaced by the following:

“Article 72 requires that the signatures of the parties appear on the documents submitted as evidence of the transfer.”

Accordingly, it should now be ensured that assignments of European patent applications are signed by both assignors and assignees. This should be borne in mind particularly for cases originating in the US where the US Patent and Trade Mark Office (US PTO) follows the existing, rather than the new, practice of the EPO.

Andrew McGettrick

This entry was posted in European Patents.

Computer software patents: what you need to know

AHA Director and Patent Attorney, Andrew McGettrick, has written a brief article on computer software patents. As well as challenging the common misconceptions that computer software cannot be patented and that it is ‘much easier’ to patent computer software in the US than in Europe, he offers practical guidance on what to address when considering filing a computer software patent.

Click here to read his article on LinkedIn or click here to download our ‘Is it possible to patent computer software?’ PDF

Andrew has acted for a wide-range of clients, from start-ups to large corporations, across a variety of technologies including computer software, electrical & electronic engineering and mechanical engineering. Click here to read more

This entry was posted in Computer Software.