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Case Law of the Boards of Appeal

 
 
2.3. Transfer

Art. 72 EPC provides that an assignment of a European patent application must be made in writing and requires the signatures of the parties to the contract. Under R. 22 EPC (R. 20(1) EPC 1973), a transfer of a European patent application is recorded in the Register of European Patents at the request of an interested party and on production of documents satisfying the EPO that the transfer has taken place. This is in line with the PCT system (R. 92bis.1 PCT).

In T 128/10 the board held that according to R. 22 EPC in conjunction with R. 85 EPC, the procedural requirements to be fulfilled for recording the transfer of a European patent in the European Patent Register consist 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. These requirements do not need to be fulfilled at the same time. If they are met on different dates, the transfer shall only have effect vis-à-vis the EPO at the date on which all the requirements mentioned above are fulfilled.

In J 38/92 and J 39/92 the Legal Board of Appeal ruled that a transfer could only be recorded in the Register of European Patents on the basis of an official document in accordance with R. 20(1) EPC 1973 if that document directly verified the transfer (similarly J 4/10). It did not suffice if a judgment was submitted which mentioned another document from which it was possible to verify the transfer.

Assessing whether there were documents satisfying the EPO that a transfer had taken place in accordance with R. 20(1) and (3) EPC 1973 and making the entry in the register was the responsibility of the relevant department of first instance. Accordingly, in appeal proceedings, substitution of another party for the original applicant was possible only once the relevant department of first instance had made the entry or where there was clear-cut evidence of a transfer (J 26/95, OJ 1999, 668; see also T 976/97, T 1751/07).

In J 12/00 the board summarised the preconditions for registering a transfer of a European patent application as follows: (i) a request of an interested party (R. 20(1) EPC 1973); (ii) the production of documents satisfying the EPO that the transfer has taken place (R. 20(1) EPC 1973); and (iii) the payment of an administrative fee (R. 20(2) EPC 1973). Documents relating merely to the obligation to transfer the right, but not to the transfer itself, were not sufficient to satisfy the EPO. Nor, according to the board, was it enough to cite registrations in different countries on the basis of documents other than assignment documents; the relevant standard was set by specific requirements for the registration of a transfer of rights laid down in the EPC 1973 (similarly J 4/10).

Under Art. 20 EPC the Legal Division is responsible for decisions in respect of entries in the Register of European Patents and their deletion. An appeal lies to the Legal Board of Appeal, not to a technical board (Art. 106(1) and Art. 21(2) EPC). The entitlement of the patent proprietor entered in the Register of Patents may not therefore be questioned in opposition and subsequent appeal proceedings (see T 553/90, OJ 1993, 666).

A transfer can be recorded in the Register of European Patents even after deemed withdrawal of a patent application, if it is still possible that restitutio is available and the successor in title has taken, together with his request for registering the transfer, procedural steps suitable for restoring the application (J 10/93, OJ 1997, 91).