https://www.epo.org/en/node/i-would-register-licence-european-patent

I would like to register a licence for a European patent application. What do I have to do?

Licences in respect of European patent applications are recorded in the European Patent Register at the request of an interested party (licensee or licensor) and on production of supporting evidence. An administrative fee is due in some cases.

Request

There is no prescribed form for such requests. Requests must, however, be filed in writing with the EPO and quote the application number(s) concerned. We recommend filing them via MyEPO Portfolio. Where the request is filed via other means, we recommend using EPO Form 5070.

The request must be filed by an entitled person or their representative.

Evidence

Any kind of suitable written evidence is admissible, for example a copy of the contractual agreement signed by both parties, an extract thereof or some other official document. A declaration signed by both parties is also sufficient. Documentary evidence may be filed in any language. The EPO may however require a translation into one of its official languages (Rule 3(3) EPC).

The document filed in support of the request must contain the following information:

  • The name and address of the parties (licensor and licensee).
  • The application number(s) of the application(s) concerned. Where the application to which the licence applies is a divisional application, the request must include the application number of the divisional application.
  • A list of the designated states to which the licence applies (or an indication that the request relates to all the designated states).
  • If a contractual agreement is involved, it must be signed by both parties. Where a party is a legal person, the signature of a natural person entitled to represent the legal entity is required, together with their name and position within the legal entity.

Contracts and declarations submitted as evidence to support such requests may be authenticated by a handwritten, facsimile, text string or digital signature (see the decision of the President of the EPO dated 9 February 2024 concerning signatures on contracts and declarations under Rules 22 and 85 and Rule 23 EPC, OJ EPO 2024, A17, and the notice from the EPO dated 9 February 2024 concerning revised Rule 22 EPC, OJ EPO 2024, A22).

Exclusive licences may also be recorded pursuant to Rule 24(a) EPC. In such cases, the registration must be requested by both parties.

Sub-licences may also be recorded, provided that the main licence has been registered (Rule 24(b) EPC).

Fee

A request for registration may be subject to the payment of an administrative fee under the conditions laid down by the President of the EPO (see Rule 22(2) EPC). No fee is due when the request is filed via MyEPO Portfolio (see the decision of the President of the EPO dated 25 January 2024 revising the Office's fees and expenses, OJ EPO 2024, A5). Where the request is filed via other means, the administrative fee remains due. In the latter case, the request for registration is not deemed to have been filed until the administrative fee has been paid (Rule 23(1) in conjunction with Rule 22(2) EPC).

Please check the amount due on the date of payment using the latest version of the schedule of fees and expenses, which is published as a supplementary publication to the EPO's Official Journal and available on the EPO website.

Registration date

The licence is recorded in the European Patent Register and becomes effective before the EPO on the date on which the above-mentioned requirements are met, irrespective of the date on which it became effective between the parties.

Note

  • Registration of a licence cannot be requested before the publication of the European patent application.
  • The last day on which a licence can be recorded with the EPO is the day before the date on which the grant of the European patent is mentioned in the European Patent Bulletin. Where the patent has been granted but no request has been filed in due time, licences must be recorded with the competent national office(s), in accordance with the relevant national provisions.

The same applies to the registration of other rights, such as security rights.

For the provisions governing the cancellation of registered licences and other rights, see Rule 23(2) EPC and EPO Form 5071.

    Further information:

    Guidelines for Examination in the EPO, E XIV, 6

    National law relating to the EPC

    MyEPO Portfolio feature guide for submitting requests about applications

    Category