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

European Patent Office: New PPH agreements on the way

The ever expanding Patent Prosecution Highway (PPH) network keeps getting new additions, and as usual, the AWAPATENT IP Blog sums up the new expansions and arising possibilities.

The PPH is a system of bilateral agreements allowing for requesting accelerated examination at one participating office. The system is based on the search results and a set of claims accepted for grant, in an analogous application, at the other participating office.

Most recently, European patent applicants have been offered the possibility of speeding up and simplifying the examination. Namely, effective as of 1 October 2016, the EPO (European Patent Office) and the Superintendence of Industry and Commerce of Colombia have launched a new PPH agreement. The agreement applies to both national and PCT work products. The EPO’s notification of entry into force can be found here.

Furthermore, the EPO has just announced the signing of three new PPH agreements with the IP offices in Russia, Malaysia and the Philippines. These three PPH agreements will, according to the EPO, enter into force during 2017. The announcement may be found here. The AWAPATENT IP Blog will inform its readers of the actual dates of the entry into force.

Finally, it is worth mentioning that the Chilean and Moroccan IP offices also have joined the PPH network. The Chilean IP office has together with the Mexican, Colombian and Peruvian IP offices signed mutual PPH agreements. The Moroccan IP office has signed a PPH agreement with the Spanish patent office. This makes the grand total of IP offices, participating in the PPH network, 41.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

The value of design patents

It is a perfectly clear, crisp morning as I make my way from Washington DC’s Union Station, through a clean and perfectly trimmed Senate Park, to the white neoclassical palace that houses the United States Supreme Court. The wide pavement and massive stairs leading to the building’s entrance is filled with journalists, photographers and television crews gearing up alongside hundreds of gathered spectators. Inside, the Supreme Court is in session, hearing its first design patent case in 120 years.

What sparks such an unusual interest in the hearing of an IP case is the fact that this is one of the final chapters in the ultimate “super heavyweight” patent rumble, between the largest corporation in the US, Apple and the by far largest South Korean corporation, Samsung. This lengthy dispute has all the components necessary to attract the public’s eye: it concerns a category of products that basically everyone of us is using (on average 40 times per day), the design patents concerned are understandable and the patents cover the iconic design of the game changing iPhone.

The question that the Supreme Court agreed to hear is not that of infringement, which has already been settled in a final decision by the Court of Appeal for the Federal Circuit (CAFC). Instead, the court is reviewing the size of the damages, and in further detail, the relevance of a century old piece of legislation stating that the infringer in a design patent “shall be liable to the owner to the extent of his total profit”. This in practice means all profit generated by the infringing Samsung Smartphones (article of manufacture), and it is this wording that made the CAFC affirm the $400 million in damages awarded to Apple.

Samsung, as well as several academics, argue that a statement made by the US congress in 1887 that “it is the design that sells the article” (forming the basis for the above wording in the legislation), does not apply to complex products such as the iPhone. On the other side, Apple’s Chief Litigation Officer Noreen Krall, who by the way hired me to my first job in the IP industry, argues the opposite and stated that Apple’s “designers and engineers are distinguished by their originality” and that Apple “firmly believe that strong design patent protection spurs creativity and innovation”.

Knowing how dedicated Apple fans can be, and how much value the Apple customer places in the look and feel of the products, I am inclined to agree with Noreen and Apple. In many instances, I believe that originality and design are features that actually may trump the function of Apples products.

The Supreme Court’s decision is expected in early 2017. Whatever the outcome will be, i.e. if the Supreme Court confirms the principle of the “total profit” or chooses to interpret the law as meaning “total profit” attributed to the specific parts of the “article of manufacture” covered by the patent, the ruling will have a considerable impact on how the IP world views and values design patents.

Joacim Lydén, Awapatent Partner and temporary US Correspondent

Early certainty and PCT direct – a visit by the EPO

Have you ever dreamt of having a fast grant of a European patent?

This question was in focus at a well-attended breakfast seminar held by Awapatent in cooperation with a group of Examiners from the European Patent Office (EPO).

Under the project “Early Certainty”, the EPO is currently trying to reduce their backlog when it comes to search, examination, and oppositions. The EPO has set a goal stating that searches should be performed within 6 months of filing, examination should be concluded within 12 months from the start of the examination procedure, and oppositions should be concluded within 15 months.

By recruiting new examiners and focusing on their core business, the EPO has already managed to reach the goal when it comes to searches, but for examination and oppositions the goal is still further down the road.

Another interesting project launched by the EPO is PCT direct, which is available for PCT applications claiming priority from a previous application searched by the EPO. In brief, the applicant may, when filing the PCT application, also file informal comments regarding the written opinion of the previous application. These informal comments are then taken into account by the Examiner when preparing the written opinion of the PCT application. This improves the chances of having a positive first written opinion issued for the PCT application which, together with PPH requests, may lead to faster grants outside Europe.

I welcome the EPO’s attempts to speed up the procedure. However, I can also see that the ambitious goals set up for examination puts a pressure on the Examiners to quickly come to a decision, and we may expect that the average number of office actions per case will go down. I have already seen a tendency that the EPO summons to oral proceedings early in the proceedings, such as immediately after the first office action.

Sofia Åberg, European Patent Attorney and member of Awapatent’s EPC specialist team

Amended rules relating to the refund of the examination fee

Today the rules relating to fees[1] stipulates that the examination fee will be refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examination Division (ED) has assumed responsibility of the application. The examination fee can also be refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the ED has assumed responsibility, but before the substantive examination has begun. Exactly when the Examination Division assumes the responsibility really depends on when the request for examination has been filed, which is practically determined by when the Examination fee has been paid. The substantive examination begins on the date when the examiners starts identifying European prior rights not available when the search was carried out, and this date is recorded in the Register.

This rule will now change, and the examination fee will hereafter be refunded as follows:

R Fees 11 (a)  in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun; and

R Fees 11 (b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Article 94 (3) EPC issued by the Examining Division proper or, if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71(3) EPC.

A full refund will thus be obtainable if the substantive examination has not begun. For certain files and if operationally possible the EPO will inform the applicant, at least two months beforehand, of the date on which it intends to start substantive examination, and they will commit to not starting substantive examination before the date indicated.

The 50% refund will be applied after the issuance of a first office action, and an applicant will only get this refund if they actively withdraw their application. Communications addressing purely formal deficiencies in the application documents and issued by formalities officers will not be considered an Art 94(3) EPC communication issued by the “Examining Division proper”.

In the situation of a direct grant after search, the 50% refund is only possible to obtain the day before the date printed on the Rule 71(3) EPC communication, meaning that the withdrawal should be done as soon as possible after the positive search opinion has been received.

A withdrawal made conditional on the 50% refund will generally be possible.

RFees 11 (a) a as amended applies to all European patent applications which are withdrawn, refused or deemed to be withdrawn on or after 1 July 2016. Article 11(b) RFees as amended applies to all European patent applications for which substantive examination starts on or after 1 November 2016.

Sofia Willquist, European Patent Attorney

[1] RFees 11 Refund of examination fee