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The importance of properly and timely recording a patent transfer

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The importance of properly and timely recording a patent transfer

The importance of properly and timely recording a patent transfer

In two recent decisions of the Technical Boards of Appeal of the EPO, the recording of the transfer of a European patent played an important role in the admissibility of the appeal.

Indeed, these decisions show the significance of accurately recording a transfer in the European Register and elucidate the requirements for validly doing so.

T 128/10 concerns an appeal filed after a patent was revoked by the Opposition Division. While the patent proprietor was the transferee, the notice of appeal was filed on behalf of the assignee, together with documentary evidence of the transfer. Only after the term for filing the notice of appeal, the administrative fee for recording the transfer in the European Patent Register was paid.

The Board stated that a valid request for recording the transfer of a European patent consists in the filing of a request of the interested party, the production of documents providing evidence of the transfer, and the payment of an administrative fee. If these requirements are met on different dates, the transfer only has effect vis-à-vis the EPO as per the date when all these requirements have been fulfilled. Since the administrative fee had not been paid until after the term for filing the notice of appeal, the appeal was rejected as inadmissible.

In a related case, T 2232/08, the new proprietor of a European patent that was revoked by the Opposition Division lodged an appeal together with a request for recording the change of the patent proprietor into the European Patent Register. Even though the request was invalid due to insufficient documentary evidence, the EPO recorded the transfer in the European Patent Register. On the basis of this entry the Board decided that the appeal was admissible, because the new patent proprietor had legally become a party to the proceedings.