Posts by: Helle Friis Svenstrup | (3) posts

EPO gets Stricter on Requirements for Recording Assignments

The EPO is going to take a stricter approach for recording an assignment of EP applications. Up until now the EPO has accepted assignment documents evidencing a transfer that had only been signed by the Assignor.

Recordal of assignment is governed by Article 72 EPC which states that “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”

The November 15 edition of the “Guidelines for Examination” (at E-XII-3) states that “a declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee”.

The above-mentioned section of the EPO Guidelines for Examination has been revised, and the above wording deleted, to be replaced with “Article 72 requires that the signatures of the parties appear on the documents submitted as evidence of the transfer” at new section E-XIII-3.

The new Guidelines for Examination will enter into force on 1st November 2016. Registration of transfers already recorded will not be affected by this change.

Thus, the EPO are getting stricter in following the requirements of Article 72 EPC, and now require that the signatures of both the Assignee(s) as well as the Assignor(s) must appear on the assignment document when recording a transfer.

According to the new guidelines it is however still possible to provide the following other evidences of the transfer: “Any kind of written evidence suitable for proving the transfer is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer”.

In view of the above change, we should advise all our clients to ensure any assignment documents prepared for the transfer of EP patent applications include the signature(s) of the Assignors(s) as well as the signature(s) of the Assignees(s). Also, to avoid problems with the recordal of assignment at the EPO it is important to ensure printed names and capacity as signatory for both parties in the transfer document.

Although it may seem that the EPO is going belt and braces with this stricter approach it is important to remember the that once a transfer has been duly entered in the European Patent Register, the registration cannot be undone. In case of any doubt, proceedings may have to be stayed until the identity of the legitimate applicant/proprietor has been established.

 

Helle Friis Svenstrup, member of Awapatent’s EPC specialist team

Third strike hits the European Patent Office

Last month, 91% (3,701) of 4062 of European Patent Office (EPO) employees voted for a one day strike to be held on April 7 at the EPO’s offices in Munich, The Hague, Berlin and Vienna. It thus adds to a number of strikes that has hit EPO since former Chairman of the Administrative Council of the EPO, Benoît Battistelli, acceded as President of the EPO in 2010.

During the recent years, tension and discontent has build up internally at the EPO due to Battistelli’s attempt to reform working practices at the EPO. Even worse, mistrust seems to thrive at the EPO and the latest restrictions of the strike regulation is not helping. Furthermore, Battistelli’s management methods have been strongly criticized and culminated in 2014 with the highly controversial suspension of a member of the office’s boards of appeal.

Last month’s thousands of votes in favour of a strike, however, may be a direct result of the disciplinary hearing decided by Battistelli against three representatives of the “Staff Union of the European Patent Office” (SUEPO). The recent decision to let off two and degrade one member of the trade union is based on supposition of leakage of confidential information. The leak was confirmed by an “investigative unit” set up by Battistelli, which included hidden cameras and key-logging software.

Certainly, the strike will cause disruption and delays in various services of the EPO including prosecution of patent applications but it is unlikely that Examiners will disrupt public functions such as Oral Proceedings during the strike. It has been debated whether the internal dispute has a negative effect on the quality of the work as a result of demotivated employees. External user survey and the extended ISO 9001 certification, however, indicate that the quality of services provided by EPO continues to be high.

Helle Friis Svenstrup, Patent Attorney

From theory to practice – a trainee’s perspective

Although we have only scratched the surface of the complex patent world comprising “Patent Law Theory”, “Patent Application Procedure and Examination”, “Technology Licensing”,  “Litigation Practice” etc. it was boosting to come home and apply at least some of the knowledge we have gained during the trainee courses. The shifts between intensive trainee courses and home office practice seem to form an ideal bridge to quickly learn to do client work.

Since September 2012 the learning curve on intellectual property law has been steep but we have also been taught a great deal about ourselves: who we are, or rather who we are becoming. Personally, I have a longer background in research before starting as a trainee at Awapatent and I must say I am surprised to realize how sudden I have adapted to the IP culture. Hence, the conversion from one way of working to another has been surprisingly straightforward. Also, the IP theory may be difficult to comprehend and apply but now the light at the end of the tunnel is appearing. This, I ascribe the bridging between theory and practice.

Although we are all eager to become great patent attorneys I believe it is important to remember “He who would learn to fly one day must first learn to stand and walk and run and climb and dance; one cannot fly into flying” (Friedrich Nietzsche).

In other words, the process of converting theory in to practice I believe is key to become a successful qualified patent attorney.

Helle Friis Svenstrup, Awapatent Trainee