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 while the application is pending or within the nine-month opposition window is effective across EPC member states. This is therefore a highly cost-effective way of recording the transaction without needing to make separate national recordals in each jurisdiction where additional formalities requirements may be required. Moreover, some national patent offices in Europe have additional local recordal requirements which can be met via central recordal of the change of ownership from Party A to Party B at the EPO.
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 or within its nine-month opposition period. The EPO official fee is currently Euro 115. 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 official fees. The cost of recording even a simple transfer from A to B, post-grant, are much higher and the level of documentary evidence can be much more complex.
The request for the change in ownership at the EPO will need to be filed alongside evidence that the transfer of rights from 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, the copy of the document should show that it was wet-signed on behalf of both parties and the EP right should ideally be listed in the Schedule in its own right. 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.