J12 / 16: request transferred successively to two different persons
Approximately 3 months after the sending of the notification under Rule 71 (3) EPC, the EPO received successively two applications for the transfer of the application:
– 1.6.2015: transfer from P to A , based on a contract of 5.6.2014 ,
– 10.6.2015: transfer from P to G , based on a contract of 9.6.2015 .
(Note that the inventor is both P and G leader)
Since the first request for registration was defective (failure to pay the prescribed fee), and corrected only on 22.6.2015, the second transfer was entered in the register (confirmed by the decision of the Legal Division of 15.3.2016 ) and the patent was issued in the name of G (decision of the Examining Division of 17.3.2016, with publication of the mention of grant dated 13.4.2016).
A brought the present action against the decision of the Legal Division.
The Legal Chamber decides that pursuant to Rule 22 (3) EPC the second transfer took effect with respect to the EPO on 10.6.2015, hence the entry in the Register. The legal division has therefore correctly decided.
The requirements of Rule 22 EPC are of a purely formal nature. The question of who really owns the patent between A and G does not fall within the competence of the EPO, but of the national courts as part of an action in claim.
The Legal Chamber notes in any event that the question of the recording of the transfer is no longer a matter for the EPO under Rule 85 EPC because the opposition period has expired and no opposition has been filed. was formed. The appeal has therefore become devoid of purpose.
The Chamber is of the opinion that, in order to avoid this situation, the Examining Division should have waited, before issuing the patent, for the 2-month period for appealing the decision of the Legal Division to have expired.
It proposes the following summary (personal translation): during the period within which to lodge an appeal against a decision simultaneously rejecting a request for registration and a stay of proceedings, and taking into account the suspensive effect of the appeal, no measure likely to hinder the course of a subsequent appeal should not be taken at the register level.