March 15, 2021

Welcome changes to the EPC regarding inventor details

HMC-IP attorney Catherine Hanratty reports on welcome changes in EPO procedures for notifications to inventors and requirements for inventor address.

From April 1, 2021 it will no longer be necessary to provide the full address of the inventors named in the ‘designation of the inventor’.

The European Patent Office, EPO, Official Journal of January 2021 provides an update on the on changes to Rules 19 and 43 EPC relating to designation of the inventor and publication of inventor details by the EPO. 

DESIGNATION OF INVENTOR AND NOTIFICATIONS TO INVENTORS

Current procedure:

When filing a European Patent Application, if the applicant is not the inventor or the sole inventor, the application contains a designation of the inventor to identify each inventor including their name and address details.  Under current procedures, pursuant to Rule 19(3), the EPO sends a letter by registered post to each named inventor, to communicate to the designated inventor the information contained in the inventor designation together with some additional information such as the applicant's name and the designated contracting states. In order to satisfy this requirement, the EPO must be provided with all the relevant data to allow successful notification, including the inventor's full address.

Such formal notification by the EPO to the inventor informing them that they have been designated in a patent application is an exception in the patent grant procedures of the EPC members states. In most countries, the obligation to inform the inventor about their designation is with the applicant.

In practice, a proportion these letters are not delivered and are returned to the EPO.  The reasons for non-delivery may include that inventor has changed address.  When the notification to the inventor fails, the EPO under current practise issues a communication to the applicant, asking for the inventor’s new address, and a new notification is issued to the inventor when the applicant submits updated address details. Otherwise, no further attempt at notification is made to contact the inventor. 

In 2019, it is reported by the EPO that 181,00 patent applications were filed, overall 530,194 letters were manually sent, around the world by registered post, to inform inventors of their designation, and around 7%  (36,442) were returned as undeliverable due to incorrect address data.

New procedure: 

  • From April 1, 2021 it will not be necessary to provide the full address of the inventors named in the ‘designation of the inventor’.

Amended Rule 19(1) sets out that the requirement that the ‘designation of the inventor’ to identify each inventor by stating their family name, given names, and country and place of residence

  • The EPO has decided to stop this practice of notifying any non-applicant inventors. 

Further, Rule 19 paragraphs (3) and (4) will be deleted with the effect that the EPO will no longer be required to send information about each European Patent Application to the inventors.

  • The amendments of Rule 19 EPC should enter into force on 1 April 2021 and apply to any inventor designation filed on or after that date. Rule 19(1) EPC as amended shall also apply to any international application entering the European phase on or after that date.

PUBLICATION OF INVENTOR DETAILS

Current procedure

At present, European Patent Register provides full address information for all inventors (unless an inventor has waived their right to be mentioned)

Rule 143 (1)(g) which relates to the content of the European patent register will also be changed to take account of the changes to the designation of inventor.

New procedure:

The provisions of amended Rule 143 which will enter into force on 1 November 2021,

  • From November 1, 2021, the European Patent Register will no longer include the full address of the inventors. The Register will state each the family name, given names, and country and place of residence of each inventor.

Overall, the changes are welcome in providing for a simplification of procedures, and related costs and in meeting the wish from users for a better alignment with data protection requirements

The designation of the inventor will require less information and there will be a reduction in administration for tracking changes and follow-up for inventor address details.  The changes also provide improved data protection for inventors and applicants. 

Please contact one of our HMC-IP attorney team for further advice.

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