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the above sentence has been removed from the November 2016 edition of the EPO’s Guidelines for Examination, having been replaced by the following: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 United States where the United States Patent and Trade Mark Office follows the existing, rather than the new, practice of the EPO.