Transferring a patent

What does the transfer of an intellectual property (IP) right mean?

Transferring a patent application or a patent basically means selling the patent (application) to someone. By transferring the patent application or the patent you assign all of the rights, title and interests coming with the IP right to the assignee in return for a lump sum payment.

When transferring a European patent application or patent, you do not have to transfer it in all the Contracting States. You are allowed to transfer your rights in one state or in a few countries as well.

Reasons to transfer your patent

If you would like to make money off your invention, transferring your patent (application) is an option for that. However, by selling your patent you only receive a one-time payment, but you give up all your rights. If you no longer wish to maintain and pay for your patent and own the exclusive right, you can transfer your patent. 

You can also transfer your patent to your own company, if you filed the patent application as the inventor, but now you would prefer to transfer the right to your company's intangible assets.

How to transfer your pending European patent application?

If you have a pending European patent application that you are assigning to someone else, you should request the record of the change of ownership at the EPO so that they know who the application belongs to and whom to contact. Once the EPO has registered the transfer, the newly registered applicant is entitled to exercise the right to the European patent application in proceedings before the EPO.

A transfer of an application which is filed before publication will be kept secret and only becomes part of the public register after publication.

As mentioned before, you can transfer for one or more designated contracting states, do not have to give up your right in all of the contracting states.

How to transfer your granted European patent?

You may also transfer your granted patent, but the registration procedure is slightly different if the grant was a long time ago. Within 9 months of the grant (or during the opposition procedure) you may still request the EPO directly to register a transfer, but after this period of time, you will have to contact the local patent offices.

After grant, the European patent becomes a bundle of national patents in the countries where the European patent has been validated. Consequently, the recording of any transfers becomes the responsibility of the national patent offices, and you have to request them to accord your transfer. Requesting the recording of a transfer at a national patent office usually requires the payment of a certain official fee and the filing of prescribed forms.

Steps you need to take in order to register the transfer with the EPO*: 

• Request in writing

• Evidence with the signatures of both parties (Any kind of written evidence suitable for proving the transfer is admissible, but it has to be signed by both parties.**)

• Payment of administrative fee (link to the EPO's current fee schedule)

What to do as an assignee (if you acquired a right from a patent proprietor/applicant)?

If you have received an intellectual property right, such as a patent or a trademark, it is in your interests to make sure that your right is recorded at the relevant patent offices in order to become the registered proprietor.

In general, you should inform the patent offices about the transfer of rights as soon as possible in order to ensure that the patent office always knows who the proprietor/applicant is during the proceedings. Some countries even have penalties for late recording of transfers.

What is the difference between transfer and license?

Both license and transfer generate income for the patent owner from his patent and both actions can be initiated by the patent owner by locating interested third parties. 

When you transfer a patent to another party, the owner of the patent (application) changes and you will no longer have any rights associated with the patent. However, when you license your patent, you continue to have property rights over the patented invention, because you – the licensor – remain the patent proprietor. So, licensing provides you with more rights, hence benefits. Furthermore, while transferring your patent usually means a lump sum payment at the time of the transfer, by licensing you can receive continuous royalty payments (e.g. the percentage of the licensee's sales). Transferring a patent on the other hand relieves you, since after a transfer you no longer have the responsibility to maintain the patent, pay the fees and monitor the infringing activities – actions that you would be obliged to take as a licensor.

(If you do not understand a term, check our IP dictionary here.)

* This is defined in Rule 22 EPC:
”(1) The transfer of a European patent application shall be recorded in the European Patent Register at the request of an interested party, upon production of documents providing evidence of such transfer.
(2) The request shall not be deemed to have been filed until an administrative fee has been paid.”
See the full legal text here.

** This is defined in Art. 72 EPC:
”An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”
See the full legal text here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023