Ink marks the spot: Signature standards in patent assignments
A recent decision of the EPO Boards of Appeal calls into question whether even qualified electronic signatures are suitable…
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We previously reported on a decision of the European Patent Office (EPO) Boards of Appeal (BoA) (J 0005/23) issued on 4 September 2023 which called into question whether qualified electronic signatures were suitable for use in assignment documents supporting the request for the transfer of a European patent application.
The case concluded that for the time being, only wet ink signatures would be deemed acceptable on assignment documents supporting the request.
However, a recent decision of the President of the EPO issued on 9 February 2024 appears to signal a departure from the decision of J 0005/23. The decision indicates that a much broader range of signatures will be accepted by the EPO in assignment documents supporting the request. The decision will enter into force on 1 April 2024.
The decision of the President of the EPO dated 9 February 2024 concerning signatures on contracts and declarations under Rules 22, 23, and 85 EPC states:
“Contracts and declarations submitted as evidence to support requests for the registration of a transfer of rights under Rules 22 and 85 EPC and requests for the registration or cancellation of the registration of licences or other rights under Rules 23 and 24 EPC may be authenticated by a handwritten signature, a facsimile signature, a text string signature or a digital signature under the conditions specified by the EPO.”
A Notice issued by the EPO concerning revised Rule 22 EPC revealed:
“With a view to simplifying its procedures and promoting digital transformation, the European Patent Office (EPO) will accept a broader range of electronic signatures on documents submitted as evidence to support requests under Rules 22 and 85 and under Rules 23 and 24 EPC. In line with the signature requirements in the patent grant process, the EPO will accept handwritten signatures, facsimile signatures and text string signatures within the meaning of Article 12(2) and (3) of the decision by the President of the European Patent Office dated 3 May 2023 concerning the electronic filing of documents.”
Article 12(2) and (3) of the decision by the President of the European Patent Office dated 3 May 2023 read as follows:
The decision looks set to simplify the registration process in two main aspects:
The EPO Notice indicates that digital signatures which use Public Key Infrastructure (PKI) technology will now be accepted in addition to handwritten signatures and facsimile signatures. Such digital signatures include advanced and qualified electronic signatures within the meaning of the EU’s eIDAS Regulation.
Furthermore, alternative forms of digital signature which do not use PKI technology will also be accepted “if they are filed electronically, are legible, are not infected with a computer virus, and do not contain other malicious software”.
The EPO Notice also confirms that the EPO have changed their practice concerning examination of an individual’s entitlement to sign documents supporting requests to record the registration of transfers such as licences or assignments on behalf of a legal person.
The EPO Notice states:
“Where a person is entitled to sign by virtue of their position within the legal person, this position needs to be expressly indicated. However, the entitlement will no longer be checked by the EPO.”
The decision of the President comes into effect on 1 April 2024.
From this date onwards, the changes should simplify the requirements of documents submitted in support of recording assignments.
Furthermore, the revised provision will also apply to the registration of grants, transfers and cancellations of licences and other rights under Rules 23 and 24 EPC, as well as to equivalent procedures relating to European patents with unitary effect.
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