Tag: transfer

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EPO administrative fee changes from 01 April 2024

Various changes to the EPO’s fee structure will enter into effect on 01 April 2024. See the EPO’s News Website. Both the reduced fees for SMUs and the increase of some renewal fees have been widely discussed; the visitors of my website will have read about this on, e.g., Juve Patents, the Kluwer patent blog and various LinkedIn posts from valued colleagues working in the patent profession.

One issue that appears to have received less attention is that the EPO’s recent decisions also affect the administrative fees (which tend to receive less attention as compared to the fees associated with filing, search, examination, and renewals). Importantly, the fee for registering a transfer will be reduced to nil provided that the request is filed via MyEPO. See EPO OJ 2024, A5 – fee code 022, item 1.1.

While one might think that the present fee of 120 EUR is not a big deal, the EPO applies this fee per application or per patent, even if the same evidence for the transfer is used in all of the applications/patents. In the case of a merger or demerger of companies, registering the transfer of applications and patents (for the latter the patents during the opposition period or in oppositions) can often result in total administrative fees of several hundred thousand Euros in the currently active administrative fee regime.

It is rare for me to applaud the EPO’s fee structure and the continually increasing fee amounts, which occasionally make me wonder whether the EPO is about to price itself out of the market (in particular when compared to, e.g., the GPTO’s fees). The reduction in the administrative fee for registering a transfer, while triggered by the desire to incentivize the use of MyEPO, is in my view a great step, when considering how much work can be involved in checking the entitlement of the signatories of a transfer declaration (e.g., when a chain of authorisations needs to be verified to affirm the signatory authority of the signatories). The reduction in the administrative fee for registering a transfer, when filed via MyEPO, will make it much easier to convince applicants/patentees that it is generally a good idea to maintain the EPO register data aligned with material ownership when a transfer has taken place.

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Enlarged Board of Appeal on transfer of priority right

The recent decisionby the Enlarged Board of Appeal G1/22 and G2/22 has made it easier to demonstrate a valid transfer of priority right. This is good news for patent applicants and patentees who may have struggled with the previous requirements for demonstrating a valid transfer. According to the EPO’s summary of the key considerations, “entitlement to priority is presumed to exist if the formal requirements for claiming priority are fulfilled. This presumption is justified because (i) all parties involved normally have an interest that an application may benefit from a priority right, (ii) there are no formal requirements for the transfer of priority rights, and (iii) the applicant of the priority application has to provide support to the applicant claiming priority (e.g. by providing unpublished documents).”

However, it is important to note that the time of transfer must still pre-date the subsequent filing. This means that while the process of demonstrating a valid transfer may be easier, the timing of the transfer is still crucial. More details can be found in the many comments that were already published on these decisions. See, e.g., the DeltaPatents Blog on decisions G1/22 and G2/22.

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EPO T 1946/21 – transfer of priority right

In the recent Board of Appeal decision T 1946/21, Board of Appeal 3.2.03 held that it is sufficient for a transfer of the priority right to be effected on the filing date of the subsequent application, provided that applicant/patentee can demonstrate that the transfer had been effected at the time at which the subsequent application was filed. The Board did not follow appellant’s argument that the transfer had to be effected at the latest on the day preceding the day on which the subsequent application was filed.

Beware that (i) the EPO Guidelines (section A.III.6 in GL version 2023) include language (“the transfer of the application including the priority right (or of the priority right as such) must have taken place before the filing date”) that suggests that stricter criteria may apply, and (ii) national case law of EPC member states (such as BPatG 11 W (pat) 14/09, point II.B.2 a cited in T 1946/21) may require the transfer to have taken place at the latest on the day preceding the filing date.

Thus, if time allows, it is prudent to mitigate potential issues relating to the validity of the priority claim in Europe by (a) effecting a transfer of the priority right to the applicant of the subsequent application at least on the day before the filing date, or (b) filing the subsequent application with the applicant of the priority application being named at least as a co-applicant in the subsequent application.

T 1946/21 also includes interesting passages relating to partial priority issues in light of G 1/15.