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Assignments and Name and Address Changes before the European Patent Office (EPO)

Costs

• Usually we charge on a per-file basis.
  • Usually we do not charge for name and / or address changes in a file, if we can charge for an assignment in the file at the same time.
  • Usually we do not charge for address changes in a file, if we can charge for a name change in the file at the same time.
• Usually we do not charge an additional fee for taking over representation of a file, if we can charge for an assignment, or a name or address change at the same time.

A European patent application may be transferred for one or more of the designated contracting states. In case the transfer does not apply for all designated states kindly advise of the applied states (EPC Art. 71).

Documents

For registering a transfer the EPO requires production of documents providing evidence of such transfer, e.g. a PDF copy of the original executed assignment (EPC, Rule 22).

If you have / your client has already executed an assignment contract and the contract is not in the English, German or French language, we suggest to wait for an invitation of the EPO to file an English or German language translation of the original assignment.

Kindly keep the original executed assignment in the important documents (of the client) so that we can submit it to the EPO in case the EPO invites us to file the original. Up to now, we never received such an invitation in another case.

For registering a name and / or address change the European Patent Office (EPO) requests a production of relevant documentary evidence like a commercial register print out. We may receive an office action inviting us to submit an English language translation of the relevant documentary evidence. (cf. Guidelines for Examination, Part E, Chapter XII, 5.)

Assignment contract samples are available on our homepage.

Representation

In case we do not yet represent the European patent application we need to take over representation when requesting the transfer or name and / or address change. There are two ways of taking over representation:

• The preferred way is that you execute our Power of Attorney (PoA) or have our PoA executed by your client. In case of a transfer kindly have the PoA executed by the former owner. When taking over representation we forward the executed PoA to the EPO. The EPO accepts a PDF copy of the PoA, but not a facsimile copy. The advantage of this method is that the present representative does not need to cooperate.
• Alternatively you may instruct your present European Patent Attorney to terminate his representation. Then we may take over without presenting a PoA.

Time required

In a typical case it takes about 2 to 4 weeks of requesting the registration of a transfer or name and / or address change until we receive the confirmation of registration or an office action. The time limit set in an office action is usually 2 months and may be extended upon request.

(No) requirement to Update the Register

We are not aware of any requirement to update the European patent register within a given deadline. We feel that it is best practice to update the register when receiving or responding to the communication pursuant to rule 71(3) EPC, which terminates the substantive examination.

After grant of a European patent, most member states of the European Patent Convention (EPC) require that an assignment is requested before the national patent office. In addition, the EPO registers transfers and name and address changes of European patents during the opposition period or an opposition proceeding only (Rule 85, EPC). So, even if the EPO registers transfers and name and address changes of a European patent, it has to be requested before most of the national patent offices anyway. Due to the number of requests it is significantly more expensive to register transfers and name and address changes of a European patent compared to a European patent application. Also the costs for local attorneys and mandatory translations of assignment contracts or commercial register printouts into local languages drive costs. Therefore, if one has a choice, we recommend to register transfers and name and address changes before the grant of a European patent application.

In many states including Germany the only legal incentive to update the register is that only a registered owner or applicant or a future owner or applicant mentioned in a pending request for registering a transfer and / or name and/or address changes may enforce a patent. This is not a serious bar, since the request may be filed shortly before the action.

As far as we know, there is a time limit of 6 months to register a transfer in the United Kingdom (Great Britain). The consequence of non-observance of this 6-months time limit may be that the patent owner is not compensated for court and attorney's fees by the sued infringer. If important, please verify this point with your UK attorney.

Since European patent applications are not yet granted, it does not really work out to sue an alleged infringer based on a European patent application, at least not in Germany, since the board is likely to stall the infringement law suit until the European patent will be granted. Therefore imminent infringement is not a strong argument for updating the European patent register. In case of infringement it is advisable to file a PACE request in order to speed up the European examination and/or file a utility model in Germany in order to obtain a full IPR quickly.

This page should not be construed as legal advice.
No responsibility is accepted for the correctness of the official fees. The attorney's fees indicated on this page are minimum charges of the law firm Dr.-Ing. Hellmich which may be raised in urgent cases.
This page does not constitute an offer but rather "invitatio ad offerendum" (invitation to make an offer).