uk patent assignment recordal

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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• Recordal of assignments UKIPO EUIPO and EPO Trade Marks

Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership 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. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

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Change or update your patent

You must tell the Intellectual Property Office ( IPO ) if details in the patents register are wrong or you need to change them.

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To change a patent after it’s granted you must prepare electronic versions of:

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Fill in a notice of rights form and send to IPO if you’re no longer the owner of a patent, for example if you’ve sold it.

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Send your change requests to:

Intellectual Property Office Concept House Cardiff Road Newport South Wales NP10 8QQ United Kingdom

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IPO will update the register if the change is straightforward and there are no objections (if relevant). They will send confirmation to:

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Recording assignments with electronic signatures at the EPO

05 May 2022

To record a transfer of ownership of a European patent (application) before the European Patent Office (EPO), evidence of the transfer must be provided in the form of a written document (such as an assignment) signed by all of the parties. Until recently, the only form of signature that the EPO would recognise was a handwritten signature. This therefore required assignment documents to be printed, signed by hand, and scanned before filing electronically with the EPO.

New signature rules

Following a Notice from the EPO published in OJ 2021, A86, the EPO now additionally accepts some very specific forms of electronic signature.

As explained in the notice, the EPO will now accept for the purposes of recording a transfer of ownership, assignment documents that have been signed using a qualified electronic signature as defined in EU Regulation No 910/2014.

Qualified electronic signatures

Not all electronic signatures are created equal and electronic signatures generally fall into one of three main categories: basic electronic signatures, advanced electronic signatures, and qualified electronic signatures.

• A basic electronic signature refers to any signature that is rendered digitally, (for example, where the signatory’s name is typed between slashes).
• An advanced electronic signature is an electronic signature that is uniquely linked to and capable of identifying the person signing; is created by means that the person signing can use with a high level of confidence and over which they have sole control; and is associated with the electronic document to be authenticated in such a way that any subsequent change in the data is detectable.
• A qualified electronic signature is an advanced electronic signature with a qualified digital certificate that has been created by a qualified signature creation device.

According to the EPO’s new practice, the EPO will only accept qualified electronic signatures that meet the definition provided in EU Regulation No 910/2014 (also known as the eIDAS regulation). Notably, this requires a very particular form of qualified digital certificate to be used that is ultimately backed by a supervisory governmental body in the EU.

Whilst major electronic signature platforms (for example, DocuSign®) are able to support qualified electronic signatures, in almost all cases, signatures from these platforms do not meet the requirements of the eIDAS regulation and hence will not recognised by the EPO for the purpose of recording the transfer of ownership. The requirement for a qualified electronic signature according to the eIDAS regulation is a high bar – so high that as of March 2022, the EPO had not accepted as single request for recording a transfer of ownership involving an electronic signature.

Whilst the acceptance of electronic signatures in principle represents a positive step by the EPO towards recognising a commonly-used method of signing documents, the requirement for an eIDAS-compliant qualified electronic signature will mean that in most cases, the easiest way to meet the EPO’s requirements for having a transfer of ownership recorded will be to have the documents executed with handwritten signatures.

It is also worth considering who signs the assignment document as the EPO will typically request documentary proof of the signatory’s authority to sign unless the relevant signatory is a director, president, or CEO of the relevant company. See our previous article on this subject: “ EPO patent assignment recordal: signatures & evidence ”.

Applicants considering filing a request for recordal of assignment should contact their usual D Young & Co patent attorney who will be happy to advise as to whether your documentation will meet the EPO’s new requirements and any further steps that should be taken.

EPO notice dated 22 October 2021

View the notice from the European Patent Office dated 22 October 2021 concerning electronic signatures on documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC and requests for registration of a licence or other rights under Rule 23 EPC.

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