I.P.F.I. I P FRAUD INVESTIGATIONS

Transcription

1 I.P.F.I. I P FRAUD INVESTIGATIONS ON PAGE 2 IS: EUROPEAN PATENT OFFICE GUIDANCE ON PAGE 4 IS: THE EPO FORM 2544 CONFIRMING THAT THE EPO HAS BEEN AMENDED TO RECORD CONVERSOR PRODUCT LTD AS PROPRIETOR OF FIVE PATENTS IN OPPOSITION PROCEEDINGS. THIS WAS A DEFECTIVE REGISTRATION, AS NO EVIDENCE OF ASSIGNMENT HAD BEEN FILED AND NO ASSIGNMENT HAD TAKEN PLACE. EVEN THE SO-CALLED "AGREEMENT" WAS NOT EXECUTED. ON PAGES 5-14 ARE: GUIDANCE NOTES ON WHAT EACH OF THE NATIONAL OFFICES CONCERNED SAY THEY WILL ACCEPT BY WAY OF "EVIDENCE" OF A TRANSFER OF OWNERSHIP. UNFORTUNATELY, SOME COUNTRIES BLINDLY ACCEPT THE FORM HAD THE OPPOSITION PROCEEDINGS CONTINUED, THE UGLY RELIATY OF THERE BEING NO ASSIGNMENT OF ANY OF THE PATENTS WOULD HAVE BEEN EXPOSED BY AUSTRIAN AND NETHERLANDS PATENT OFFICES, AND THE ISSUE OF PRIORITY WOULD HAVE BEEN RAISED BY THE FRENCH PATENT OFFICE, WHO HAD ALREADY IGNORED THE PRIORITY DATE IN THE ABSENSE OF EVIDENCE OF THE PATENT PROPROETIOR'S ACQUISITION AND OWNERSHIP OF THE RIGHTS OF PRIORITY APPLICATION GB ON PAGE 15 IS: WILSON GUNN'S BOGUS APPLICATION ON 21 JULY 2004 TO THE EUROPEAN PATENT OFFICE, PASSING OFF PARTS OF AN UNEXECUTED SALE AGREEMENT AND A FAX OF A DIFFERENT DOCUMENT AS EVIDENCE OF TRANSFER OF OWNERSHIP OF FIVE 2002-GRANTED PATENTS (IN OPPOSITION PROCEEDINGS) BY VIRTUE OF AN AGREEMENT DATED 15TH SEPTEMBER

2 IX. Registering a transfer, licences and other rights in respect of a European patent in t... Page 1 of 1 Home Law & practice Legal Texts National Law relating to EPC IX. Registering a transfer, licences and other rights in respect of a European patent in the national patent Register Print Share Please select the state 1. Up to grant of the European patent, transfers, licences and other rights in respect of European patent applications are registered centrally in the European Patent Registe accordance with Rules 22 to 24 EPC. 2. After grant of the European patent, a transfer is registered in the European Patent Register only during the opposition period or during opposition proceedings, in accordance 85 in conjunction with Rule 22 EPC. Column 6 of the following table indicates whether and under what conditions the contracting states recognise the registration of such transf European Patent Register for the purposes of the national procedure. 3. This table also sets out the national regulations and requirements concerning the registration of transfers, licences (excluding compulsory licences) and other rights after gra European patent or after the final conclusion of opposition proceedings in the individual national patent registers of the designated contracting states. All details concerning the provisions and the nature of the supporting documents to be filed are based on the information supplied to the EPO by the patent authorities of the contracting states. Last updated: 05/03/2015 2

3 I.P.F.I. I P FRAUD INVESTIGATIONS THE EPO FORM 2544 CONFIRMING THAT THE EPO HAS BEEN AMENDED TO RECORD CONVERSOR PRODUCT LTD AS PROPRIETOR OF FIVE PATENTS IN OPPOSITION PROCEEDINGS. THIS WAS A DEFECTIVE REGISTRATION, AS NO EVIDENCE OF ASSIGNMENT HAD BEEN FILED AND NO ASSIGNMENT HAD TAKEN PLACE. EVEN THE SO-CALLED "AGREEMENT" WAS NO EXECUTED. 3

4 THIS TURNS OUT TO BE THE SO-CALLED 'ASSIGNMENT DOCUMENTATION' REFERRED TO IN THE 5 OCTOBER 2006 RESISTANCE TO DISCLOSURE OF ASSIGNMENTS: 4

5 I.P.F.I. I P FRAUD INVESTIGATIONS GUIDANCE NOTES ON WHAT EACH OF THE NATIONAL OFFICES CONCERNED SAY THEY WILL ACCEPT BY WAY OF "EVIDENCE" OF A TRANSFER OF OWNERSHIP.. UNFORTUNATELY, SOME COUNTRIES BLINDLY ACCEPT THE FORM HAD THE OPPOSITION PROCEEDINGS CONTINUED, THE UGLY RELIATY OF THERE BEING NO ASSIGNMENT OF ANY OF THE PATENTS WOULD HAVE BEEN EXPOSED BY AUSTRIAN AND NETHERLANDS PATENT OFFICES, AND THE ISSUE OF PRIORITY WOULD HAVE BEEN RAISED BY THE FRENCH PATENT OFFICE, WHO HAD ALREADY IGNORED THE PRIORITY DATE IN THE ABSENSE OF EVIDENCE OF THE PATENT PROPROETIOR'S ACQUISITION AND OWNERSHIP OF THE RIGHTS OF PRIORITY APPLICATION GB

6 EPO Legal Texts - National Law, Chapter IX: Austria Page 1 of 1 Home Law & practice Legal Texts National Law relating to EPC National Law, Chapter IX: Austria Table of Contents A B I II IIIA IIIB IV V VI VII VIII IX X State Austria Previous Next IX. Registering a transfer, licences and other rights in respect of a European patent in the national patent Register Central Industrial Property Office Österreichisches Patentamt Dresdner Str. 87 Postfach WIEN Tel Fax Transfer of rights by transaction (eg sale, merger) or by operation of law (eg succession, insolvency, compulsory execution) 2. Licences and other rights 1 Which supporting documents must be filed? Written application or request by court for entry in the patent register; submission of original or duly certified copy of the instrument concerned (e.g. deed of transfer, certificate of inheritance, distraint order). If it is not a public instrument, certified signature of the proprietor of the right. 33, 43(5)-(7) PA Application and documents as under 1. 34, 35, 36, 45 PA 2 Must a national professional representative be appointed? Yes; attorney at law, patent attorney or notary authorised to represent parties on a professional basis in Austria However, if the residence or place of business is in the EEA, a person authorised to accept service who is a resident of Austria may be appointed instead. 21(4) PA 3 Must a form be used? No 4 Special fee payable? EUR 128 per application (including EUR 40 document fees) 5 Entries and data recorded in the register Liens and other rights in rem, licences, entries relating to disputes Entries in the register have legal effect. Priority is determined by the order in which applications for entry are presented at the Patent Office. 6 Is a transfer registered by the EPO under Rule 85 EPC recognised? 43(1)-(4) PA No 7 Special features - Last updated: /02/2015 6

7 EPO Legal Texts - National Law, Chapter IX: Germany Page 1 of 2 Home Law & practice Legal Texts National Law relating to EPC National Law, Chapter IX: Germany Print Share Table of Contents A B I II IIIA IIIB IV V VI VII VIII IX X State Germany Previous Next IX. Registering a transfer, licences and other rights in respect of a European patent in the national patent Register Central Industrial Property Office Deutsches Patent- und Markenamt MÜNCHEN Tel Fax Deutsches Patent- und Markenamt Dienststelle Jena JENA Tel Fax Deutsches Patent- und Markenamt Technisches Informationszentrum Berlin BERLIN Tel Fax info@dpma.de 1. Transfer of rights 2. Licences and other rights (i) by transaction (eg sale, merger) 1 Which supporting documents must be filed? - sale:evidence in the form of a request for transfer signed by the registered proprietor or his representative and by the successor in title or his representative or a request for transfer signed by the successor in title or his representative, to which is attached a declaration signed by the registered proprietor or his representative to the effect that he agrees to the registration of the successor in title (authorisation of transfer) or to which are attached other documents showing that the transaction has taken place (e.g. an agreement signed by the registered proprietor and the successor in title) 28(3), (4), (5), (6) DPMAV - consolidation(merger of companies): extract from the register for the principal place of business of the new proprietor of the right (ii) by operation of law (eg succession, insolvency, compulsory execution) - succession:duplicate of certificate of inheritance, certificate of inheritance limited where appropriate to specific items in the case of foreigners; certified copy of will with a copy of the probate proceedings - insolvency:authorisation by official receiver of transfer (proof of representation in the form of a duplicate or certified copy of the certificate of appointment) - Exclusive licence: Written request from the exclusive licensee with authorisation from the patent proprietor or writte from the patent proprietor with authorisation fro exclusive licensee 15(2) in conjunction with 30(4) PA - Licence of right: Written declaration from the patent applicant or proprietor 23(1) PA 15(1) in conjunction with 30(3) PA 2 Must a national professional representative be appointed? Yes 25 PA Yes 25 PA 3 Must a form be used? No, but DPMA forms should be used. 28(4) DPMAV No 4 Special fee payable? None EUR 25 No Fees Schedule LPF 19/02/2015 7

8 EPO Legal Texts - National Law, Chapter IX: Germany Page 2 of 2 1. Transfer of rights 2. Licences and other rights 5 Entries and data recorded in the register 6 Is a transfer registered by the EPO under Rule 85 EPC recognised? Entry in the register has declaratory effect. The registered proprietor is deemed to be the patent holder before the DPMA and the Federal Patents Court. 30(3) PA Yes A copy of the EPO certificate (EPO Form 2544) is required. Note concerning grant of licence 30(4) PA 7 Special features Further details are contained in the Richtlinien für die Umschreibung von Schutzrechten und Schutzrechtsanmeldungen in der Patentrolle... (Guidelines for the transfer of different kinds of protection of property rights and applications for property rights in the register of patents...) of 15 November 1996, amended as of 1 January 2002 (Bl.f.PMZ 2002, 11). In the case of foreign-language documents drawn up in English, French, Italian or Spanish, the DPMA can require a translation of either the whole document or extracts from it. The translation be certified by a lawyer or patent attorney or prepared by an officially appointed translator. Where documents are drawn up in another language, a translation of the whole document or extracts from it is always required, either certified by a lawyer or patent attorney or prepared by an officially appointed translator. The note in the register is deleted at request of proprietor or licensee. A request from the forme include evidence of consent of the latter (or his successor in title). 30(4) PA Fee for deletion of the note: EUR 25 No Fees Schedule LPF 14(3), (4), (5) PO Last updated: /02/2015 8

9 EPO Legal Texts - National Law, Chapter IX: Denmark Page 1 of 1 Home Law & practice Legal Texts National Law relating to EPC National Law, Chapter IX: Denmark Print Share Table of Contents A B I II IIIA IIIB IV V VI VII VIII IX X State Denmark Previous Next IX. Registering a transfer, licences and other rights in respect of a European patent in the national patent Register Central Industrial Property Office Patent- og Varemærkestyrelsen Helgeshøj Allé TAASTRUP Tel Fax pvs@dkpto.dk 1. Transfer of rights by transaction (eg sale, merger) or by operation of law (eg succession, insolvency, compulsory execution) 2. Licences and other rights 1 Which supporting documents must be filed? Deeds of transfer signed by the patent proprietor or relevant legal decision. A declaration of consent by the transferee is not required. 44 PA Licence agreement 44 PA 2 Must a national professional representative be appointed? No No 3 Must a form be used? No No 4 Special fee payable? No No, but see column 7 5 Entries and data recorded in the register Recording on request of transfer of rights or grant of licences 44 PA 47 PO Legal proceedings may be brought against a registered patent proprietor. Restrictions on the grant of additional licences, may be entered on request. 44(4) PA 6 Is a transfer registered by the EPO under Rule 85 EPC recognised? Yes A transfer recorded in the EPO European Patent Register is recognised by the DKPTO. Only where the DKPTO has not yet been informed of a transfer under R. 85 EPC is a copy of the EPO certificate (EPO Form 2544) required. 7 Special features Documents not drafted in Danish, English, Norwegian or Swedish must be accompanied by a translation. Last updated: /02/2015 9

10 EPO Legal Texts - National Law, Chapter IX: France Page 1 of 2 Home Law & practice Legal Texts National Law relating to EPC National Law, Chapter IX: France Print Share Table of Contents A B I II IIIA IIIB IV V VI VII VIII IX X State France Previous Next IX. Registering a transfer, licences and other rights in respect of a European patent in the national patent Register Central Industrial Property Office Institut national de la propriété industrielle (INPI) 15 rue des Minimes CS COURBEVOIE CEDEX Tel. in France: Tel. from abroad: contact@inpi.fr 1. Transfer of rights 2. Licences and other rights (i) by transaction(eg sale, merger) 1 Which supporting documents must be filed? - sale: copy of the contract (signed by both parties) for an instrument of private agreement, or (for an authentic instrument) a copy of that instrument (see column 7). Registration may relate only to an extract from the instrument, in which case, failing the signature of the parties on the extract, the applicant sends it to INPI, which returns it to him, at his request, after verification of its conformity. Proof of payment of the prescribed fees must be provided. Art. R Reg. - merger: copy of the merger agreement (for an instrument of private agreement) or (for an authentic instrument) a copy of that instrument, or an extract from the commercial and companies register showing the amendment. Art. R Reg. (ii) by operation of law(eg succession, insolvency, compulsory execution) - death(in the case of transfer on death or by unilateral action): a document evidencing the transfer of title. - insolvency: the transfer of the patent is only registered in the event of liquidation of the insolvent s estate on presentation of the document legally establishing the transfer. Art. R Reg. For assignment or the grant of a right of exploit constitution or assignment of a lien, see under 1 Art. R Reg. 2 Must a national professional representative be appointed? No (provided the applicant has his residence or place of business in France or another EU or EEA member state; otherwise, appointment of a representative is compulsory) 3 Must a form be used? Yes, in 4 copies 4 Special fee payable? EUR 26 per right designated in the request for registration up to a maximum amount of EUR 260 where a request for registration concerns more than 10 rights Fees Ord. of Entries and data recorded in the register Transfers of rights, as well as licences, sub-licences, mortgages, seizure; transfers pursuant to final judgments (such as action for recovery of property). Entry in the register has declaratory effect. However, the act only has effect vis-à-vis third parties from the time of registration. Art. L PL 19/02/

11 EPO Legal Texts - National Law, Chapter IX: France Page 2 of 2 1. Transfer of rights 2. Licences and other rights 6 Is a transfer registered by the EPO under Rule 85 EPC recognised? Yes Entry in the European Patent Register of acts transmitting or amending the rights deriving from a European patent application or a European patent gives such acts effect with regard to third parties. Art. L PL 7 Special features A copy of the act recording the registration may be sent to the requester if an additional copy of that act was attached to the request. If the act is not drawn up in French, a full translation must be attached (a sworn translation is not compulsory). Last updated: /02/

12 EPO Legal Texts - National Law, Chapter IX: Netherlands Page 1 of 1 Home Law & practice Legal Texts National Law relating to EPC National Law, Chapter IX: Netherlands Table of Contents A B I II IIIA IIIB IV V VI VII VIII IX X State Netherlands Previous Next IX. Registering a transfer, licences and other rights in respect of a European patent in the national patent Register Central Industrial Property Office Octrooicentrum Nederland (Netherlands Patent Office) P.O. Box HJ Den Haag Tel Fax octrooien@rvo.nl 1. Transfer of rights by transaction (eg sale, merger) or by operation of law (eg succession, insolvency, compulsory execution) 2. Licences and other rights 1 Which supporting documents must be filed? either the original or a certified copy of the document containing the deed of transfer of title by the proprietor and declaration of acceptance by the assignee Art. 64, 65 PA Original or a certified copy of the licence agreem an accepted testamentary disposition Art. 56 PA 2 Must a national professional representative be appointed? No No 3 Must a form be used? No No 4 Special fee payable? EUR 27 Art. 64(1) PA Art. 8(2) PR EUR 27 Art. 56(2) PA Art. 8(2) PR 5 Entries and data recorded in the register Any special stipulations made in respect of the transfer Transfer confers substantive rights. Transfer by assignment shall take effect vis-à-vis third parties only after its entry in the register. Licence (how created), sub-licence A licence established by an agreement or testa disposition shall take effect vis-à-vis third partie after its entry in the register. 6 Is a transfer registered by the EPO under Rule 85 EPC recognised? Art. 64, 65 PA Yes A copy of the EPO certificate (EPO Form 2544) is required. Art. 56(2) PA 7 Special features Documents are accepted in Dutch, English, French and German. Last updated: /02/

13 EPO Legal Texts - National Law, Chapter IX: United Kingdom Page 1 of 2 Home Law & practice Legal Texts National Law relating to EPC National Law, Chapter IX: United Kingdom Print Share Table of Contents A B I II IIIA IIIB IV V VI VII VIII IX X State United Kingdom Previous Next IX. Registering a transfer, licences and other rights in respect of a European patent in the national patent Register Central Industrial Property Office Intellectual Property Office (IPO) Concept House Cardiff Road NEWPORT South Wales NP10 8QQ Tel Fax or Intellectual Property Office (IPO) London Branch Office 1st Floor 4 Abbey Orchard Street LONDON SW1P 2HT information@ipo.gov.uk 1. Transfer of rights by transaction(eg sale, merger) or by operation of law (eg succession, insolvency, compulsory execution) 2. Licences and other rights 1 Which supporting documents must be filed? To tell us you have sold your patent you need to fill in form 21. Form 21 is not a replacement for the assignment or other agreement, merely the form that you should use to ask us to record it. For assignments signed on or after 22 December 1999 the form need be signed only by or on behalf of the assignor. For earlier assignments all parties or their representatives should sign. If this is not possible, we will accept other documents as evidence that the assignment has taken place and that any necessary stamp duty has been paid. In most cases a properly completed and signed form 21 is all that is required, but the comptroller may ask for additional evidence if necessary. Licences and other transactions such as mortga granting of security may also be registered on f As with assignments, a properly completed and form is usually all that is needed for registration more evidence may be required in some cases Sect. 32, 33 PA R. 47 PR 2 Must a national professional representative be appointed? No, but an address for service in the EEA or Channel Islands should be given for all proceedings. R. 103 PR 3 Must a form be used? Yes, Form 21, one form only irrespective of the number of patents transferred Yes, Form 21 4 Special fee payable? GBP 50 GBP 50 5 Entries and data recorded in the register All additional rights, e.g. mortgages, agreements, licences, sub-licences Registration in the register generally has merely declaratory effect. However, certain rights only accrue by virtue of registration (e.g. under Sect. 33 and 68 PA) 6 Is a transfer registered by the EPO under Rule 85 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. If the EPO Form 2544 has been issued at the EPO in French or German, an English translation of the form will also be required to support an application for registration made on UK Form /02/

14 EPO Legal Texts - National Law, Chapter IX: United Kingdom Page 2 of 2 1. Transfer of rights by transaction(eg sale, merger) or by operation of law (eg succession, insolvency, compulsory execution) 2. Licences and other rights 7 Special features 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 Stamp duty may still be payable on transactions after 28 March 2000 if items other than intellectual property are involved. For further information, contact the Assignment section, Tel Last updated: /02/

15 I.P.F.I. I P FRAUD INVESTIGATIONS WILSON GUNN'S BOGUS APPLICATION ON 21 JULY 2004 TO THE EUROPEAN PATENT OFFICE, PASSING OFF PARTS OF AN UNEXECUTED SALE AGREEMENT AND A FAX OF A DIFFERENT DOCUMENT AS EVIDENCE OF TRANSFER OF OWNERSHIP OF FIVE 2002-GRANTED PATENTS (IN OPPOSITION PROCEEDINGS) BY VIRTUE OF AN AGREEMENT DATED 15TH SEPTEMBER

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38 THIS IS A DOWNLOAD OF ALL TRANSFER-RELATED DOCUMENTS HELD BY THE EPO WHICH WERE FILED BETWEEN 17 & 29 NOVEMBER THIS DOCUMENT HAS BEEN INCLUDED MERELY TO IDENTIFY THE OPPONENT'S REPRESENTATIVE, KUHNEN & WACKER, WHO STILL RETAIN ALL OF THE FILES RELATING TO THE OPPOSITION. 38

39 THIS TURNS OUT TO BE THE SO-CALLED 'ASSIGNMENT DOCUMENTATION' REFERRED TO IN THE 5 OCTOBER 2006 RESISTANCE TO DISCLOSURE OF ASSIGNMENTS: