1 Which supporting documents must be filed?

A form 21/77 (see column 3) signed by (or on behalf of) the granter of rights is sufficient to establish transfer on sale, granting of security and licences. In the absence of the signature of the granter (or his representative) or for any event other than those previously mentioned, the following documents should be provided.

(i) by transaction (eg sale, merger)

Sale: the assignment document, a deed of transfer or a sale and purchase agreement, signed by (or on behalf of) all parties to the transaction (Sect. 30(6) PA). For transactions done in Scotland only the signature of the granter (or his representative) is required (Sect. 31(6) PA). Where a patent is held in co-ownership, the co-owner(s) must give written consent to the disposal of the partner’s (partners’) interest in the patent.

Merger: certificate of reincorporation or certified copies of the commercial register supported (where appropriate) by minutes or agreement documents identifying the patents concerned.

(ii) by operation of law (eg succession, insolvency, compulsory execution)

Death of an owner: probate or letters of administration, supported by the will where appropriate (see also column 7)

Company in liquidation: official evidence of winding up of company. Disposition by sale, as above at (i), the documents to be signed on behalf of the company by the person appointed to deal with its affairs.

Statutory instrument: copy of relevant statutory instrument and effective date.

Sect. 32, 33 PA

Licences may be entered in the EP (UK) register of patents, and require documentation sufficient to establish:

(a) the date of the agreement (ie when it was signed by or on behalf of the licensor)

(b) the parties (including addresses)

(c) the patent concerned.

Security agreements (eg mortgages, etc.) may also be entered in the EP (UK) register of patents. The basic requirements are the same as under 1.

2 Must a national professional representative be appointed?

No, but there is a requirement for the proprietor to furnish to the comptroller an address for service in the United Kingdom if the proprietor is concerned in any proceedings under the Patents Rules 1995.

R. 30 PR

re 1(ii): Probate or letters of administration of EP (UK) patents must be made by a personal representative in the UK

3 Must a form be used?

Yes, Form 21/77, one form only irrespective of the number of patents transferred

Yes, Form 21/77

4 Special fee payable?

No

No

5 Entries and data recorded in the register

All additional rights, eg mortgages, agreements, licences, sub-licences

Registration in the register generally has merely declaratory effect. However, certain rights only accrue by virtue of registration (eg under Sect. 33 and 68 PA)

6 Is a transfer registered by the EPO under Rule 61 EPC recognised?

Yes

A copy of the EPO certificate (EPO Form 2544) may be used to support an application for registration made on UK Form 21/77.

7 Special features

All documents not in English must be accompanied by a verified English translation.

Transactions relating to EP (UK) patents are liable to the payment of stamp duty in the UK if the transaction was done before 28 March 2000. The UK Patent Office is prohibited by the Stamp Act 1892 from acting upon dutiable documents for which duty has not been assessed and paid.

re 1(ii): UK property that includes EP (UK) patents must be assessed for taxation in the UK.

For further information, contact the Assignment section, Tel. (+ 44-1633) 81 46 30.