Amended Rule 19(1) – ‘Designation of the inventor’ at the EPO

The European Patent Office, EPO, Official Journal of January 2021 provides an update on the changes to Rules 19 and 43 EPC relating to designation of the inventor and publication of inventor details by the EPO. From April 1, 2021 it is no longer necessary to provide the full address of the inventors named in the ‘designation of the inventor’.

Past procedure up until April 1, 2021: When filing a European Patent Application, if the applicant was not the inventor or the sole inventor, a designation of the inventor form was filed including the name and address details of each inventor. Pursuant to Rule 19(3), the EPO sent a letter by registered post to each named inventor, to communicate to them the information contained in the inventor designation form 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 had been designated in a patent application was in fact an exception in the patent grant procedures of the EPC members states.

In most countries, the obligation to inform the inventor about their designation rests with the applicant.

When the notification to the inventor failed, the EPO under issued a communication to the applicant, asking for the inventor’s new address, and a new notification was issued to the inventor when the applicant submitted updated address details. Otherwise, no further attempt at notification was made to contact the inventor.

The EPO reports that in 2019 181,532 patent applications were filed. Under procedure at the time, 530,194 letters (EPO Form 1048 or 1204) were sent by registered post, to inform inventors of their designation. Around 7% (36,442) were returned as undeliverable.

New procedure

The EPO has decided to stop the practice of notifying any non-applicant inventors. Rule 19 paragraphs (3) and (4) has been 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 entered into force on 1 April 2021 and apply to any inventor designation filed on or after that date. Rule 19(1) EPC as amended also applies to any international application entering the European phase on or after that date.

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.

As of 1 April 2021, the EPO no longer requires applicants to indicate full addresses (including street and house number) when designating an inventor.

Instead, applicants need only provide the inventor’s country and place of residence. The place of residence is the city or other municipality where the inventor permanently resides, and includes the postal code (where available). If either the country or the place of residence is missing, the EPO will invite the applicant to remedy this deficiency, and will refuse the application if it is not remedied in time.

The EPO will also accept the country and place of employment instead of the inventor’s place of residence. The place of residence (or of employment or business) includes the name of the city or municipality where the inventor permanently resides (or works or has his place of business) together with the postal code.

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, there has been a welcome for the change to Rule 19 and the requirements for the designation of inventors. The changes provide a reduction in administration and improved privacy for inventors.

For further information, please contact Catherine Hanratty, Director, Patents.