In this second article in our series of IP transactions themed articles around the new Unitary Patent (UP), we consider the additional legal issues that apply when assigning a UP and, from a practical perspective, how to record the assignment of a UP on the relevant patent register.
Like other types of patent, UPs are objects of property capable of being assigned, licensed, mortgaged etc. Unlike other country-specific patents, however, where the law governing the patent will be the law of the relevant country, UPs cover multiple jurisdictions and will be governed by the law of one of those jurisdictions. From an assignment perspective, it is important to know which national law governs a UP as the assignment formalities required by that law must be complied with in order for the assignment to be valid.
As discussed in the first article in our series, the law which governs a UP as an object of property – and therefore governs its assignment – will usually be determined, in the case of a corporate entity, by the applicant’s principal place of business on the date when the European patent application was filed. Where the applicant’s principal place of business is in a country where the UP has effect (referred to as a “participating Member State”), the UP will be automatically governed by the law of that country, and this cannot be changed. Where the applicant’s address is not in a “participating Member State”, the default position will usually be that German law will apply to that UP.
Another point to note when assigning a UP is it must be assigned in its entirety covering all countries in which it has effect. In other words, UPs are not divisible and rights cannot be assigned in respect of certain participating Member States but not others.
Consequently, care will need to be taken when drafting assignments of UPs to ensure that:
- it is understood which law applies to the relevant UPs. This will involve careful checks of the patent register to check the relevant applicant’s specified place of business on the date when the European patent application was filed.
- once the governing law is clear, clarify the assignment formalities under that law and ensure they are complied with in the assignment document; and
- ensure that the UP is being assigned in its entirety.
Recording the assignment of UPs
UPs have their own patent register (in fact this is its own “special” part within the existing European Patent Register) which can be updated post-assignment in much the same way as other IP registers. The UP register (formally known as the Register for Unitary Patent Protection) is integrated within the European Patent Register, which is available online here: https://register.epo.org/regviewer
If a UP is assigned to a new owner we recommend (as we do in all other jurisdictions) that the Register for Unitary Patent Protection is updated as promptly as possible. The benefits of recordal will depend on the governing law of the relevant UP, but will generally include ensuring that third parties are put on notice of the new owner’s rights in the UP. In most countries, this will protect the new owner against the possible loss of rights if a third party acquires a conflicting interest in the UP.
The recordal of UP assignments (and any other type of change to the owner details) is administered by the EPO. The Unitary Patent Rules provide that the Register for Unitary Protection will be updated to record the transfer of such rights relating to the European patent with unitary effect at the request of an “interested party”, which in the case of an assignment can be the assignor or (more usually) the assignee. Furthermore, the UP Rules provide that EPC Rule 22 will apply “mutatis mutandis” to the assignment of a UP:
(1) The transfer of a European patent application shall be recorded in the European Patent Register at the request of an interested party, upon production of documents providing evidence of such transfer.
(2) The request shall not be deemed to have been filed until an administrative fee has been paid.
(3) A transfer shall have effect vis-à-vis the European Patent Office only at the date when and to the extent that the documents referred to in paragraph 1 have been produced.
Accordingly, in order to successfully record an assignment of a UP on the Register for Unitary Patent Protection, evidence in support must be filed (usually the assignment document or a confirmatory assignment), and the relevant official fee must be paid.
Interestingly, there is no provision for EPC Article 72, which provides that the assignment of a European patent application needs to be in writing and signed by both parties, to apply “mutatis mutandis” to a UP. On the basis of this, it is possible that an assignment of a UP which has only been signed by the assignor may be acceptable to the EPO for recordal purposes. However, care must still be taken to ensure that any such assignment also complies with the requirements of the relevant national law applicable to the UP (which may require signature by both parties).
As the EPO will be administering the recordal of UP assignments we would expect the same practice requirements to apply as currently apply to the recordal of European patent applications, such as:
- The need to specifically refer to the UP (or the PCT application from which it is derived) in the assignment document;
- That any electronic signatures used are “qualified electronic signatures”; and
- The strict requirement that the signatories to the assignment have clear authority to sign on behalf of each party to the assignment.
Please let our Transactions Team know if you need any assistance either assigning UPs or recording any such assignments at the EPO.