Business partners company A and B have recently signed an agreement wherein the following was agreed:
a) EP patent EP1, against which no opposition was filed within the applicable time limit, is transferred from A to B;
b) EP patent application EP2, filed by A this year without priority, is also transferred to B;
c) EP application EP3 filed by A is transferred to B as well, however, only in respect of one of the designated contracting states;
d) B acquires a license in respect of EP patent EP4 from A;
e) B also acquire a license in respect of EP patent application EP5 filed by A, however for Scotland only;
f) EP patent application EP6 constitutes a security right for personal loan by B to A.
As representative of B you want to have these transfers, licenses and other rights recorded in the Register of European Patents as soon as possible. Can this be done in respect of all the above?
Proposed reply
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a) The record of the transfer, according to Rule 85 EPC is not possible since this rule only applies to patents against which opposition was filed, or where the time limit for filing an opposition is still running.
b) Yes such transfer can be recorded in the Register of European Patents but only after EP2 is published (Art 127 EPC).
c) Yes such transfer can be recorded in the Register of European Patents, indeed it is possible to transfer EP3 in respect of only one of the designated contracting states (Art 71 EPC).
e) Yes based on Rules 22 and 23 EPC and Art 71 EPC.
f) Yes, since the security right is a legal mean of execution affecting the EP application EP6 (Rule 23(1) EPC).
This proposed reply is not a legal opinion and does not engage the responsibility of Cabinet Novitech and should not replace the consultation of a Patent Attorney.
For any questions concerning the EP or FR patent law you can contact the Cabinet Novitech:
or call us at : 00 33 1 48 710 007