Procedures on Transfer of Rights Conferred by a Eurasian Application or a Eurasian Patent and change of the name or title of applicant or patent owner

Approved by
Decree of the Eurasian Patent Office
of December 27, 2013, No 59

1. General

(1) The present Procedures on Transfer of Rights conferred by a Eurasian Application or a Eurasian Patent, change of the name or title of the applicant or patent owner (hereinafter – Procedures) regulate legal relations under Articles 9 and 14 of the Eurasian Patent Convention, as well as under Rules 13, 49(2), 58(1) and 62¹ of the Patent Regulations under the Eurasian Patent Convention.

(2) For purposes of the present Procedures the following terms shall mean:

Convention – Eurasian Patent Convention signed in Moscow on September 9, 1994;

Patent Regulations – Patent Regulations to the Eurasian Patent Convention as per Article 14 of the Convention;

Applicant – person, filing a Eurasian application and eligible for patent grant under Article 7(2) of the Convention;

Eurasian Patent Attorney – person having the right to represent before the Eurasian Patent Office as per Article 15(12) of the Convention;

Patent Holder – person holding exclusive rights to the patented invention under Article 9 of the Convention;

Eurasian Office – Eurasian Patent Office as per Article 2(3) of the Convention;

Contracting State – country-party to the Convention;

National Office – national patent office of a Contracting State under Article 15(1)(ii) of the Convention;

Eurasian Application – application for grant of a Eurasian patent, filed in accordance with Article 15(1) of the Convention, or an international application, filed under the PCT, designating the Contracting States for grant of a Eurasian patent;

Eurasian Patent – patent granted by the Eurasian Patent Office in accordance with Article 15 of the Convention;

Transfer of Rights conferred by a Eurasian Application or a Eurasian Patent – alienation or transfer of rights conferred by a Eurasian application or a Eurasian patent from one person to another under universal succession in title (inheritance, reorganization of a legal entity or equivalent organization, including merging, acquisition, break-up, separation, transformation);

Assignment of Rights conferred by a Eurasian application – transfer by the applicant (assignor) of rights conferred by a Eurasian application to another person (assignee) prior to the date of completion of technical preparations for the publication of a Eurasian patent;

Assignment of Rights conferred by a Eurasian Patent – transfer by the patent holder (assignor) of rights conferred by a Eurasian Patent to another person (assignee), in respect of all Contracting States, where the patent is valid;

Pledge of Rights conferred by a Eurasian Application or a Eurasian Patent – a method of securing the fulfillment of obligations, under which the pledge holder acquires the right to get satisfaction through the use of the pledged subject in the event of the pledger’s failure to fulfill his obligations, secured by the pledge.

Change of the name or title of the applicant or patent owner – change of the name or title of the applicant or patent owner, not relating to change of legal status, transfer of rights through cession of rights, and also to transfer of rights on pledge agreement.

(3) Persons without permanent residence or permanent seats in any of the Contracting States, or their patent attorneys shall act before the Eurasian Patent Office through Eurasian Patent Attorneys, having the right to represent before the Eurasian Office. Copies of Powers of Attorney shall be certified by a Contracting State, according to the established procedures, and in accordance with Rule 30(3) of the Patent Regulations.

(4) Documents, relating to the transfer of rights conferred by a Eurasian application, Eurasian patent, or to the change of the name or title of the applicant or patent owner, shall be in Russian. If such documents are executed in another language, a translation into Russian shall be required.

(5) Requests and documents, relating to the transfer of rights to a Eurasian application or a Eurasian patent, or change of the name or title of the applicant or patent owner, may be submitted in writing on paper, and also electronically on conditions and following procedures provided for by the Eurasian Patent Office. Above stated requests and documents submitted only electronically, have the same legal status as if they were submitted on paper.

(6) A request, relating to the transfer of rights to a Eurasian application, Eurasian patent or to change of the name or title of the applicant or patent owner shall provide evidence of the accuracy and validity of all information presented in the request and its annexes.

(7) Copies of agreements on transfer of rights conferred by a Eurasian application or a Eurasian patent, or change of the name or title of the applicant or patent owner, shall be certified in accordance with the laws of the country, in which these agreements are concluded and documents executed, unless provided otherwise under the laws of such country.

In such cases, the Eurasian Office shall not verify the validity and accuracy of the certified copies.

(8) Requests and documents, relating to transfer of rights to a Eurasian Application or to change of the name or title of an applicant, are kept in the application file, but requests and documents, relating to transfer of rights to a Eurasian Patent or to change of the name or title of a patent owner, are kept in the patent file.

2. Transfer of Rights to a Eurasian Application

(1) Under Rule 13(1) and (2) of the Patent Regulations, a Eurasian application may be the subject matter of rights’ transfer through assignment of rights, inheritance or in any other manner only in respect to all the Contracting States. An agreement on the assignment of rights to a Eurasian application shall state the parties to the agreement and the subject matter.

(2) The Eurasian Office shall make the necessary changes in the surname, name, and patronymic (if used) and/or in the title of the applicant in the Eurasian application after receipt of request to register the transfer of rights to a Eurasian application (see Annex 1) and after the payment of appropriate fees.

If the requesting person is a legal entity or an equivalent organization, the request shall be signed by the head of this entity, indicating the name and initials, or by other authorized persons. The signature shall be certified with a seal, if so provided for under the legislation of the country, where the agreement on the transfer of rights to the Eurasian application is concluded.

(3) The Eurasian Office shall, without delay, consider the request and other submitted documents, checking the following:

à) completeness of the necessary documents and their compliance with Rule 62¹ of the Patent Regulations as to their presentation;

b) compliance with the Eurasian Patent Organization’s laws and regulations;

c) absence of any mutually exclusive conditions in the registered transfer of rights to the Eurasian application through assignment of rights;

(4) In the event of non-compliance with some of the above requirements, the Eurasian Office shall invite the requesting person to correct the identified deficiencies within four months from the date when a relevant notice is sent to him (Annex 2).

In the event of failure to correct the identified deficiencies within the abovementioned time period, the Eurasian Office shall issue a decision to refuse to satisfy the request (Annex 3) and shall send this decision to the address for correspondence; it shall also transfer back to this address the paid fee for lodging the request minus 50 percent of the amount of this fee to compensate for performed actions.

(5) If the lodged documents meet the requirements of Par. (3) hereunder, the Eurasian Office shall take the decision to satisfy the request (Annex 4), shall introduce the necessary changes into the application documents and shall send out to each party’s address for correspondence the respective decision.

(6) In case of overall succession in title in respect of a Eurasian application (inheritance, reorganization of a legal entity or of an equivalent organization), the authorized persons shall lodge a request with the Eurasian Office to register the transfer of rights to a Eurasian application under succession in title (Annex 5), a copy of the document providing evidence of the right to succession in title, a document, confirming the payment of the appropriate fee, and a power of attorney, if the request is lodged through a representative.

(7) If the successor in title is a legal entity or an equivalent organization, the said request shall be signed by, and state the surname and initials of, the CEO or other authorized persons. The signature shall be certified by a seal, if so required under the laws of the state, where the succession in title in respect of the rights to the Eurasian application took place.

(8) In the event of non-compliance with the requirements, stated in Par.(6), the Eurasian Office shall invite the requesting party to correct the deficiencies identified in the documents within four months from the date of the respective notice (Annex 6).

In the event of failure to correct the identified deficiencies within the specified time period, the Eurasian office shall take the decision to refuse to satisfy the above request (Annex 7), shall send this decision to the address for correspondence and shall send back to this address the fee for filing the request, retaining 50% of its amount for performed actions.

(9) If the lodged documents meet the requirements of Par. (6), the Eurasian Office shall take the decision to register the transfer of rights to the Eurasian application resulting from succession in title (Annex 8), shall send this decision to the new owner of the Eurasian application and shall make the appropriate changes in the application dossier.

3. Transfer of Rights to a Eurasian Patent

(1) In accordance with Rules 13(1) and (3) of the Patent Regulations, a Eurasian patent may be the object of rights’ transfer through assignment of rights, through succession in title or in any other manner in respect of all Contracting States, where it is maintained.

(2) A contract on the assignment of rights to a Eurasian patent shall state the parties thereto and the subject of the contract.

The assignor shall transfer to the assignee the Eurasian patent free of any rights of third parties except for cases, when the assignee agrees to become the owner of a Eurasian patent, encumbered with third party’s rights, including the granted licenses.

(3) For the registration of the transfer of rights to a Eurasian patent through assignment of rights, an appropriate request (Annex 9), relating to one patent, shall be filed with the Eurasian Office.

If the requesting party is a legal entity or an equivalent organization, the said request shall be signed by, and state the surname and initials of, the CEO or other authorized persons. The signature shall be certified by a seal, if so required under the laws of the state, where the contract on the assignment of rights to the Eurasian patent took place.

(4) The Eurasian Office shall, within one month from receipt of the above request, review the received documents, checking the following:

à) completeness of the required documents and their compliance with presentation requirements set forth in Rule 62¹ of the Patent Regulations;

b) compliance with Normative Legal Acts of the Eurasian Patent Organization;

c) absence of any mutually exclusive conditions in the registered transfer of rights to the Eurasian patent through assignment of rights;

(5) In the event of non-compliance with the above requirements, the Eurasian Office shall invite the requesting person to correct the identified deficiencies within four months from the date of the relevant notice (Annex 10).

In the event of failure to correct the identified deficiencies within the abovementioned time period, the Eurasian Office shall take the decision to refuse to satisfy the request for registering the transfer of rights to the Eurasian patent resulting from assignment of rights (Annex 11), and shall send this decision to the address for correspondence; it shall also transfer back to this address the paid fee for lodging the request minus 20 percent of the amount of this fee to compensate for performed actions.

(6) If the lodged documents meet the requirements of Par. (4) hereunder, the Eurasian Office shall take the decision to register the transfer of rights to the Eurasian patent resulting from assignment of rights (Annex 12), shall register the transfer of rights and shall send out to each party’s address for correspondence the decision on the registration of the rights’ transfer and a certificate on the transfer of rights to the Eurasian patent resulting from assignment of rights (Annex 13).

Documents, relating to the transfer of rights to a Eurasian patent, received by the Eurasian Office, shall be kept in the dossier on the transfer of rights to the Eurasian patent.

(7) In case of overall legal succession in respect of a Eurasian patent (inheritance, reorganization of a legal entity or of an equivalent organization), the authorized persons shall lodge a request with the Eurasian Office to register the transfer of rights to a Eurasian patent resulting from succession in title (Annex 14), as well as a copy of the document providing evidence of the right to succession in title, a document, confirming the payment of the appropriate fee, and a power of attorney, if the request is lodged through a representative.

(8) If the legal successor is a legal entity or an equivalent organization, the said request shall be signed by, and state the surname and initials of, the CEO or other authorized persons. The signature of the CEO shall be certified by a seal, if so required under the laws of the state, where the succession of rights in respect to the Eurasian patent took place.

(9) In the event of non-compliance with the requirements, stated in Par. (7), the Eurasian Office shall invite the requesting party to correct the deficiencies, identified in the documents, within four months from the date of the respective notice (Annex 15).

In the event of failure to correct the identified deficiencies within the specified time period, the Eurasian Office shall take the decision to refuse to satisfy the above request (Annex 16), shall send this decision to the address for correspondence and shall send back to this address the fee for filing the request, retaining 40% of its amount for performed actions.

(10) Where the lodged documents meet the requirements of Par. (7), the Eurasian Office shall take the decision to register the transfer of rights to the Eurasian patent, resulting from succession in title (Annex 17), and shall send this decision to the address for correspondence together with a certificate on the transfer of rights to the Eurasian patent, resulting from succession in title (Annex 18).

4. Pledge of Rights Conferred by a Eurasian Application or a Eurasian Patent

(1) The Eurasian Office may, under Rule 13(9) of the Patent Regulations, register the pledge of rights conferred by a Eurasian application or a Eurasian patent.

The pledge of rights conferred by a Eurasian application shall arise from the date of the pledge agreement. The pledge of rights conferred by a Eurasian patent shall arise either from the date of the pledge agreement, or from the date stipulated in the pledge agreement, including the date of transfer of the Eurasian patent to the pledgee or to the Eurasian Office.

(2) A request to register the pledge of rights conferred by a Eurasian application or a Eurasian patent (Annex 19) may be filed by any entitled person: pledger (applicant or patent holder) or pledgee. The pledge agreement, a copy of the pledge agreement or an excerpt from the pledge agreement, as well as a document certifying the payment of the prescribed fee, shall be attached to the abovementioned request.

(3) A pledge agreement in respect of a Eurasian application or a Eurasian patent, concluded in writing and signed by the parties, shall state the subject of the agreement and its valuation, its essence, the amount of and the time limit for fulfilling the obligation secured by the pledge, as well as the location of the Eurasian patent.

The pledger (applicant or patent owner) shall have the right, unless otherwise provided for in the agreement, to use the Eurasian application or the Eurasian patent to meet his pledge obligations.

(4) In the event of non-compliance with the requirements set forth in Par. (2) and (3), the Eurasian Office shall invite the person, who requested to register the pledge of rights conferred by a Eurasian application or a Eurasian patent, to rectify the identified deficiencies in the documents within four months from the date, on which the respective notice is sent to him (Annex 20).

In the event of failure to rectify the identified deficiencies within the prescribed time period, the Eurasian Office shall take the decision to refuse to satisfy the request for registering the pledge of rights conferred by a Eurasian application or a Eurasian patent (Annex 21), shall send this decision to the address for correspondence and shall send back to the same address the fee for filing the relevant request minus 50 percent of its amount for performed actions.

(5) In cases when the filed documents meet the requirements of Par. (2) and (3), the Eurasian Office shall take the decision on the respective request to register the pledge of rights conferred by a Eurasian application or a Eurasian patent (Annex 22), shall register the pledge of rights and shall send to each pledge agreement party’s address for correspondence the decision on registering the pledge of rights.

The copy of the Agreement on the pledge of rights conferred by a Eurasian application or a Eurasian patent, received by the Eurasian Office, shall be kept in the Office.

5. Change of the name or title of applicant or patent owner

(1) In accordance with Rule 49(2) of the Patent Regulations before the completion of the technical preparations for the publication of the Eurasian patent, the applicant shall have the right to add to, specify or correct elements of the Eurasian application.

(2) In accordance with Rule 58(1) of the Patent Regulations information on changes in the name or title of the patent owner and his place of residence or business shall be entered in the Register of Eurasian Patents on request from the patent owner.

(3) The Eurasian Office amends surname, name and patronymic (where it is being used) and /or title of the applicant in Eurasian application or patent owner in Eurasian patent, after filing with Eurasian Office of corresponding request to register the change of the name or title of the applicant (Annex23) or to register the change of the name or title of the patent owner (Annex 24) and payment of the prescribed fees.

If the applicant is a legal person or an equated organization, then the application shall be signed by the head of the organization with indication of his surname and initials or by authorized persons. With that the signature must be attested with a stamp, where it is provided for by the law of the country, in which the legal person or the equated organization is situated.

(4) The Eurasian Office begins consideration of the corresponding request and other received documents, immediately for Eurasian application and within a month time for Eurasian patent, checking the following:

a) completeness of the required documents and their compliance with requirements for their drafting and presentation of the following information:

indication of registration of the requested change of the name or the title of the applicant or patent owner;

the number of the Eurasian application, in relation to which the change of the name or title of the applicant is being requested, or number of Eurasian patent, in relation to which the change of the name or the title of the patent owner is being requested;

information about the applicant or patent owner;

information about the new name or title of the applicant or patent owner;

name of the country where the applicant or the patent owner has permanent residence or principal place of location;

grounds for requested registration of the changes of the name or the title of applicant or patent owner;

a declaration, that the information provided in the request is true and accurate;

b) compliance with Normative Legal Acts of the Eurasian Patent Organization;

c) absence of any mutually exclusive conditions for the change of the name or title of applicant or patent owner.

(5) In the event of non-compliance with the above requirements, the Eurasian Office shall invite the requesting person to correct the identified deficiencies in the documents within four month from the date of sending him the relevant notice (Annex 25 or Annex 26).

In the event of failure to correct the identified deficiencies within abovementioned time period, the Eurasian Office shall take the decision to refuse to satisfy the corresponding request (Annex 27 or Annex 28) and shall send this decision to address for correspondence; and shall also transfer back to this address the fee paid for lodging the request minus the 50 percent of the amount of this fee to compensate for performed actions.

(6) If the lodged documents meet the requirements of Par. (3), the Eurasian Office shall take the decision to satisfy the corresponding request (Annex 29 or Annex 30), and shall make the appropriate amendments in the materials of the application or the patent; and shall send the corresponding decision to the address for correspondence.

6. Final Provisions

(1) Decisions to refuse to satisfy the requests, mentioned in the present Procedures, may be impugned by the interested parties by lodging appeals with the President of the Eurasian Office within four months from the date, when the respective decision is sent to the interested party.

(2) The President of the Office shall consider the abovementioned appeals and shall either appoint a re-examination of the respective request, or take a final decision on the appeal.