Correcting Applicant Designations at the EPO
In European patent prosecution, minor clerical errors may lead to significant issues down the line. One of the most common errors is the incorrect designation of an applicant on the request for grant (Form 1001). Such errors can rise from a typo in a company name, accidental naming of a subsidiary instead of the parent company, or errors made by the EPO itself at any stage of the patent prosecution. The European Patent Convention (EPC) provides mechanisms for correction—but the requirements are strict.
Requests for change in the applicant name can be filed in scenarios where there is an error in the applicant name, or when there is a change in ownership (rights assigned to a party that was not originally named as the applicant).
Before filing a request, you must determine whether the change in applicant relates to an ‘error’ or relates to a change in ownership. The following EPC rules may be applicable accordingly:
- Rule 139 EPC (Correction of Errors): Used when the document filed does not reflect the true intention of the person filing it. For example, the attorney intended to file for “Company A” but accidentally typed “Company B.”
- Rule 22 EPC (Registration of Transfers): Used when the applicant named was correct at the time of filing, but the rights have since been assigned to someone else and there is a change in ownership.
It should be noted that Rule 139 is retroactive (the “correct” applicant is deemed to have been there from the start), whereas Rule 22 is effective only from the date the transfer is registered.
The Legal Standard for Rule 139
Linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request under Rule 139 EPC. This includes errors in applicant name. The burden of proof may be high for successfully correcting an applicant’s name under Rule 139. Evidence must be provided that there was indeed an error (e.g. the person filing the application intended to name a different party), and the evidence may include documentary evidence (e.g. predating the filing) showing the intention to file in the name of the correct party. The request must also be made without undue delay immediately after the error is discovered.
Procedural Requirements
Rule 139 (Correction of Errors)
To file a request for correction of the applicant’s designation under Rule 139 EPC, the following should be included:
- A formal request in writing identifying the error and the requested correction
- Evidence proving the original intent to file in the corrected name
- If the correction involves replacing one party with another (e.g. naming a subsidiary company instead of a parent company), consent is required from the “wrongly” named party
There is no official fee requirement for requests under Rule 139 EPC.
Rule 22 EPC (Registration of Transfers)
A request under Rule 22 EPC may be filed in writing via MyEPO or by using the EPO Form 5050. The request must be signed by an entitled person, i.e. the assignor, assignee or their representative. Appropriate evidence, such as assignment documents, must be provided to support the request.
It should also be noted that no official fee is required for an assignment if MyEPO is used.
Correction after publication
If an application has already been published, a correction under Rule 139 might be refused if it would unfairly disadvantage a third party who relied on the public Register. In this case, the EPO may publish a notice in the European Patent Bulletin to alert the public that the applicant name has been changed retroactively.
Summary
In summary, if a request to correct the applicant’s name is to be filed (under Rule 139), it is advisable to gather sufficient documentary evidence showing how and when the error occurred and the original intention with regards to applicant name. It is also important that the request is filed as soon as the error is spotted. If there is an actual change of ownership, a request under Rule 22 must be filed instead, and an assignment document must be provided as documentary evidence.
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