Why Record Changes of Ownership at the EPO?

Recording a change of ownership on the EP register is not mandatory.  However, we do highly recommend recording such changes for the reasons outlined below.

Central recordal at the EPO

Central recordal of a change of ownership at the EPO whilst a European patent (‘EP’) application is pending will be effective across all European Patent Convention (‘EPC’) member states. This is therefore a highly cost-effective way of recording the transaction without needing to file separate national recordals in each jurisdiction where additional formalities will be required.

Recordals to change the ownership of a European patent application can also be filed after grant, within the nine-month opposition period which immediately follows the grant date, or within opposition proceedings (‘post-grant’ recordals). Outside of the nine-month opposition period or any opposition proceedings, changes of ownership cannot be recorded against granted European patents at the EPO. As above, recordals against pending cases take advantage of the central recordal i.e. one recordal at the EPO automatically affects recordal in all EPC member states.

Change in ownership recordals filed at the EPO whilst a granted EP is within its nine-month opposition period (or during any opposition proceedings) are not automatically effective in all EPC member states in accordance with Rule 85 in conjunction with Rule 22 EPC. This means that national recordal applications in each country would need to be submitted to update the ownership within the select national validations of the granted EP right. Some countries, such as Spain and France, update ownership at their local Patent Offices automatically, even if the European patent application is granted (provided the recordal was filed and actioned by the EPO within nine-months from the grant date or within opposition proceedings). There is a useful guide explaining the national change of ownership recordal filing procedure available here. Simply select a jurisdiction from the dropdown list titled “select …” and scroll to section “6” which indicates if a country updates its local patent register automatically following issuance of the 2544 (see below) or by other means, such as a separate local recordal application or by providing a copy of the 2544 and paying a fee.

The EPO issues a 2544 notice of recordal which confirms that the ownership has been updated on the European Patent Register. Post-grant the 2544 communication can be used in lieu of formality documents to update the local patent registers where the granted EP has been validated. For example, Greece needs an original of a legalised Assignment document in order to record a change of ownership, but if the recordal of the transfer was already recorded at the EPO post-grant, you can supply the 2544 notice of recordal issued on the granted EP from which the local Greek patent derives, and the requirement to provide a legalised Assignment document is waived. This would save on the costs of the recordal in the national validations and avoid the administrative burden of obtaining an additional document.

Recordals can be made effective against any unitary patent (‘UP’) applications by simply including wording in the recordal letter submission to extend to the UP application derived from the EP which you are filing the recordal against.

Cost recovery during infringement proceedings

During post-grant infringement proceedings, the losing party is sometimes ordered to pay some or all the legal costs of the successful claimant.  However, such costs are only recoverable from the date of registration of the change in ownership.

Should party B wish to bring infringement proceedings after grant, the change in ownership should be recorded at least before infringement proceedings commence, and ideally as soon as possible to ensure maximum recovery of costs.  We note that in some jurisdictions the Assignment must be recorded within a certain timeframe to benefit from remedies.  For example, in the UK an Assignment must be recorded within 6 months of the Assignment to maximise costs awarded during infringement proceedings.

Putting third parties on notice

Recording a change of ownership is deemed to put third parties on notice of the rights in an application or granted patent. Therefore, if the change in ownership from Party A to Party B is not recorded, if another party (Party C) acquired rights in the same application or granted patent from party A, party C would retain the rights in the application or granted patent since they were not notified of party B’s rights.  Consequently, party B would not have rights in the application or granted patent.

If, however, the change in ownership from party A to party B was recorded before party C acquired rights in the application or granted patent, party C would be bound by party B’s earlier rights.

Potential time and cost savings

Whilst recording a change of ownership may seem like an administrative burden, keeping the register up to date can save time and money in the long run. For example, future Assignments or licences cannot be recorded at the EPO until the preceding chain of title is perfected.  For example, an Assignment from party C to party D cannot be recorded until Assignments from party A to party B and party B to party C are recorded. Retroactively recording previous transactions can be cumbersome, particularly if parties higher up the chain of title have dissolved or merged.

Fees and documents

There are costs associated with the recordal of a change in ownership at the EPO but in general it is more cost effective to record a change of ownership at the EPO if the case is pending. The EPO official fee is currently Euro 120 per European patent application. If the EP right is the subject of a multi-chain transfer e.g., from A to B to C, then the recordal application can be filed in one go, avoiding the need for two separate recordal applications and duplicate official fees. However, as of 01 April 2024, the EPO waived the official fee on recordal applications filed via its ‘MyEPO’ system[1]. Since this date, our firm has handled change of ownership recordals using the MyEPO platform.

It is worth noting that the costs to record even a simple transfer from A to B, post-grant, are much higher and the level of documentary evidence can be much more complex. This is because change of ownership recordals filed at the EPO against a granted European patent within its nine-month opposition period, or indeed in any opposition proceedings, although effective on the European Patent Register, does not automatically update ownership in its national validations. Therefore, individual recordal filings are often required to reflect the new owner in the national validations, which involves meeting various local Patent Office formalities (dependent upon where the EP right was validated).

The request for a change in ownership at the EPO will need to be filed alongside a scanned copy of evidence which shows that a transfer of rights has occurred. The evidence for the EPO is less onerous than that for many national offices. Said evidence can be a copy of a merger certificate or an extract from the commercial register for changes of ownership by merger or de-merger, or a copy of an Assignment or Court Order.  When the evidence is an Assignment, we often ask that the copy of the document be wet-signed on behalf of both parties. However, a digital signature from the parties, such as DocuSign or similar, is acceptable for recordal purposes at the EPO. The European patent application number itself should ideally be listed in the Schedule to the Assignment document. We are always happy to review Assignments for recordability at the EPO.   

This information is simplified and must not be taken as a definitive statement of the law or practice.

[1] OJ EPO 2024, A5, ‘Decision of the President of the European Patent Office dated 25 January 2024 revising the Office's fees and expenses’, epo.org, Munich, António Campinos (President), published 2024, pages 1-3, https://www.epo.org/en/legal/official-journal/2024/01/a5.html (accessed 22 July 2024).