epo assignment electronic signature

For the foreseeable future, wet-ink signatures are back as the only recommended approach to executing assignments of European Patent applications (EPAs).

In recent case J 0005/23 , the EPO has backtracked from its notice issued on 22 October 2021 (referred to here as the October 2021 Notice), which we reported here , in which it had said that it would accept, as evidence supporting a request for a recordal of a transfer of an EPA, either a copy of an assignment executed in wet-ink or executed via qualified electronic signature (QES).

Background facts

In J 5/23, the parties to an EPA assignment signed using text string signatures (see below for what this means) had attempted to record the transfer at the EPO. In issuing a deficiency notice to the request, the Legal Division referred to the October 2021 Notice and informed the applicant that the electronic signatures on the assignment did not fulfil the requirements of a QES. It invited the applicant to re-submit the document in PDF format bearing either QES or handwritten signatures. As the applicant failed to do so, the Legal Division rejected its request for the transfer to be recorded.

The applicants appealed, causing the EPO’s Boards of Appeal to consider the valid form of signature for assignments of EPAs.

Relevant law

The law setting out the requirements for a valid assignment of an EPA is at Article 72 of the European Patent Convention:

“ An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract. ”

Article 72 is supported by the Implementing Regulations, specifically rule 22 , which states that:

“ 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. ”

Based on these provisions, we know that an assignment of an EPA must be in writing and signed and that evidence of the assignment must be provided for the EPO to record the transfer, but neither the Article nor the Implementing Regulation provides express requirements as to the form of the document and what is meant by “ the signature of the parties ”.

What form of signature?

When the EPC was enacted in 1973, digital signature was but a theory (the earliest digital signatures came into use in the late 1970s), and so perhaps it was not considered necessary to specify what was meant by “signature”.  Now, however, there are any number of different signature methods.

The Boards of Appeal considered several of the available types of signature and what was intended by Article 72.  The signature types considered included: wet-ink (or by hand execution), text string signatures, or qualified electronic signatures.

Wet-ink : a signature which has been handwritten, e.g. using “wet-ink”. Wet-ink signatures include no ID verification measures.

Text string signatures : “A text string signature is a string of characters, preceded and followed by a forward slash (/), selected by the signatory to prove their identity and intent to sign” ( https://www.epo.org/en/legal/guidelines-epc/2023/a_viii_3_3.html ):

//CARPMAELS & RANSFORD LLP//

Text string signatures are acceptable to the EPO on documentation filed using the EPO’s own filing software. This form of signature is often used for procedural matters.

Qualified electronic signatures : A QES is a digital signature which includes identity verification measures, including:  

• Having the ability to uniquely identify and link its signatory to the electronic signature.
• Allowing the signatory to have sole control of the keys used to create the electronic signature.
• Identifying if the data has been tampered with after its accompanying message has been signed.
• Invalidating the signature if signed data has been altered in any manner.

A signature meeting all of the requirements above is an “Advanced electronic signature”.  A QES is all of the above plus the addition of a qualified certificate. This certificate is issued by a qualified trust service provider and it attests to the authenticity of the electronic signature to serve as proof of the identity of the signatory.

Under the relevant EU law, a QES has the same legal effect as a handwritten signature and this is recognized in all member states of the EU.

The Boards of Appeal’s Decision

The Boards of Appeal considered various points including the legal status of the EPC (an international treaty) vis-à-vis the possible instruments to amend or interpret the EPC, including, the October 2021 Notice.  Significantly, the Boards found,

“The Notice’s aim of “facilitat[ing] communication by electronic means” with users is commendable. In the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this. While a notice from the EPO may be a source of legitimate expectations (see J 10/20, Reasons 1.15), it is, as such, only a document providing information. In particular, the Notice is not a legal instrument passed by a competent legislative body … and therefore is not to be taken into account for a systematic interpretation of Article 72 EPC.”

As a result, the October 2021 Notice – with its statement that the EPO would accept assignments executed via QES – was not an authoritative interpretation of the meaning of “signature” under Article 72 EPC.  The most that the October 2021 Notice could do was create “legitimate expectation”, i.e. an expectation on the part of applicants recording assignments at the EPO that the EPO would accept an assignment executed via QES.  The result being that, while the applicant could expect the EPO to accept an assignment executed via QES as evidence to support the recordal of change of applicant, that did not mean that the assignment had been validly executed under Article 72, and so it was possible that such an assignment was not a valid assignment.

Indeed, the Board went on to determine that, “ In the absence of any such handwritten signature, an assignment agreement does not comply with the formal requirements under Article 72 EPC and, under Rule 22(3) EPC, has no effect vis-à-vis the EPO. ”

Practical advice:

• E-signed assignments dealing with the transfer of EPAs may still be binding on the parties to the contract, this will be a matter for the governing law of the assignment.
• At the time of writing, the EPO has not withdrawn the Notice and so it may still be possible to record an assignment of an EPA executed via QES.
• Our recommendation for anyone executing assignments of EPAs is for the document to be executed by hand. This can be executed in counterparts (i.e. each signatory executing their own copy), and only a scanned copy of the wet-ink signed agreement will be required for filing at the EPO.

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice.

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Recording assignments with the EPO – time called on using electronic signatures

The European Patent Office's (EPO's) Legal Board of Appeal (LBoA) has drawn a line under the use of electronic signatures to record assignments. Assignments will need to bear the handwritten signatures of all parties in order to be recorded at the EPO . Here, we look at the background to this change in position on signatures and what you need to consider going forward.

Under Article 72 EPC, assignments of European patent applications require "the signature" of the parties to the contract. Historically, this meant the EPO required any assignment filed in support of a request to record a change in patent ownership to contain handwritten signatures of the parties.

Just under two years ago, the EPO issued a notice stating that it would accept 'qualified electronic signatures' in addition to handwritten signatures for the purposes of recording assignments. However, in its recent decision (J 5/23) , the LBoA confirmed that electronic signatures on copies of assignment agreements do not satisfy the requirements of a "signature" specified in Article 72 EPC, and so cannot be used to support a request to record a change in ownership at the EPO .

The immediate practical take-away is that applicants should ensure any assignments filed at the EPO to record a change in ownership contain handwritten signatures (though copies of such assignments can still be filed electronically).

A wider, perhaps more subtle take-away can be inferred from the reasoning of the LBoA . In reaching its decision, the Board concluded that a notice from the EPO is, as such, only a document providing information and is not a legal instrument that can either implement or specify any Articles of the EPC or its Implementing Regulations (rules). The Board therefore ruled that the notice could not be taken into account when interpreting Article 72 EPC.

This reasoning serves as a reminder that notices from the EPO purporting to effect changes in practice should be read and interpreted with care.

To discuss any of the points raised here, or any other issues in relation to managing and protecting your patents, please get in touch with a member of our global intellectual property practice .

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Home > Insights > EPO now accepts Qualified Electronic Signatures (QES) on assignments and licences

EPO now accepts Qualified Electronic Signatures (QES) on assignments and licences

As of 30 November 2021, the European Patent Office accepts Qualified Electronic Signatures (QES) attached to electronically filed documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC. Similarly, the EPO will also accept such electronic signatures to support request for registration of a licence or other rights under Rule 23 EPC. A link to the November 2021 issue of the EPO Official Journal publishing the notification can be found here .

By way of background, there are 3 different types of electronic signatures which are widely accepted in the UK and Europe, namely, Simple Electronic Signatures (SES), Advanced Electronic Signatures (AES) and Qualified Electronic Signatures (QES). These are based on the electronic identification, authentication and trust services regulation . The UK government has published a helpful guide to electronic signatures here .

A simple electronic signature may just be a scanned original signature or one that is created by the signatory on the document to be executed, but without any signatory identity verification.

Consequently, a Simple Electronic Signature is probably the most convenient for the signatory because no identify verification is required, however, it does have the lowest level of security.

An Advanced Electronic Signature is uniquely linked to the signatory, identifies the signatory and is linked to data within the signature that can detect any changes made.

Finally, a Qualified Electronic Signature is an electronic signature that is created by a qualified electronic signature creation device, and which is based on a qualified certificate for the electronic signature.

One example of a Qualified Electronic Signature (QES) is an electronic signature which has been created using a certificate and unique signatory key. The key can be stored on a smart card or USB token. Because the signatories’ identity has been verified as part of the Qualified Electronic Signature creation process, a Qualified Electronic Signature has the highest level of security.

As the EPO has decided to adopt Qualified Electronic Signatures on electronic documents to support a transfers or licences of right, it does mean that signatories will face the additional burden of obtaining the certificate, and unique signatory key, and also using these in conjunction with the qualified electronic signature creation device to generate the signature, if they wish to use an electronic signature.

What this is likely to mean is that using Qualified Electronic Signatures on documentary evidence to support the recording of transfers, licences or other rights at the EPO is likely to be most attractive for those signatories who are already regularly using Qualified Electronic Signatures for other purposes or likely to do so in the near future.

However, under the current Guidelines for Examination , the EPO will accept as documentary evidence of a transfer or licence the original document or a copy of that document.

Accordingly, for signatories who do not regularly use Qualified Electronic Signatures, it may be easier to execute an original paper transfer or licence document using an original “wet ink” signature and then submit a copy of the executed document to the European Patent Office.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please  contact  Reddie & Grose LLP for advice before taking any action in reliance on it .

Mark Bentall

Principal Associate

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EPO patent assignment recordal: signatures & evidence

24 April 2018

The EPO’s approach to assignment recordal has changed over the last two years. At D Young & Co we have seen that the new approach has required applicants to provide more detailed documentation in support of their request which often results in the recordal taking longer than expected.

The main requirements for an assignment recordal have not changed. Article 72 EPC states: “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”.

Whilst this legal basis has not changed, the level of evidence the EPO now requires has.

Previously the EPO was happy to accept evidence that both parties agreed to the transfer, for example by having the assignor sign the assignment and the assignee request the relevant recordal at the EPO, however this is no longer the case. Assignments for recordal at the EPO are now expected to be in writing and signed by all parties to ensure that they meet the requirements of Article 72 EPC.

The Guidelines for Examination, which came into force on 01 November 2016, confirmed that the signatures of the parties (that is, the assignor and the assignee) must appear on the documents submitted as evidence of the transfer and also stated that a signatory signing on behalf of a corporate owner must give their precise job title.

The latest version of the Guidelines for Examination, which came into force on 01 November 2017, went further and states: “Where a document is signed on behalf of a legal person, only such persons as are entitled to sign by law, by the legal person’s articles of association or equivalent or by a special mandate may do so. National law applies in that respect. In all cases, an indication of the signatory’s entitlement to sign, for example his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this . Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. The EPO will in particular examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity.” (GL E XIV 3) (emphasis added).

Whilst this indicates that proof of a signatory’s authority to sign such documents might be requested in exceptional cases, at D Young & Co we have noted that this is being requested as standard, unless the relevant signatory is a director, president or CEO of the relevant company. Our discussions with the officers at the EPO have revealed that this is indeed the case, and that proof of authority for any signatory who is not a director, president or CEO of the relevant company is required.

We have also been informed that such proof of authority should state that the relevant signatory has authority to sign legally binding documents, in particular in relation to the assignment or transfer of patents and patent applications, on behalf of the company.

Whilst we have been able to obtain this guidance from the EPO, an explanation as to why this degree of evidence is now required has not been forthcoming. In any event this new approach is now the standard to which applicants must adhere when requesting recordal of an assignment or transfer at the EPO.

Recommendations

In light of the EPO’s new stricter approach, and from the experience of our various attorneys in recording assignments over the past two years, we recommend the following actions:

• Ensure any assignment that might be recorded at the EPO is signed by all parties.
• Ensure the job titles of the signatories are listed on the assignment.
• If the job title of any signatory is not director, CEO or president of the company (or company secretary for US companies), provide proof of authority for that signatory.
• The proof of authority should state that the signatory is authorised to sign legally binding documents on behalf of the company (in particular relating to the transfer or assignment of patents and patent applications).
• The proof of authority could be in the form of a specific document signed by a director, CEO or president of the company, an extract from the relevant commercial register or minutes from a board meeting.

It is hoped that by following these recommendations a request for recordal of assignment at the EPO will be swiftly approved and excessive delays avoided.

Applicants considering filing a request for recordal of assignment should contact their usual D Young & Co patent attorney who will be happy to advise as to whether your documentation will meet the EPO’s new requirements and any further steps that should be taken.

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Insights: Electronic signing of assignments

Assignment documents filed electronically may now be signed using ‘qualified electronic signatures’.

Previously Previously, assignments, licences and other agreements for recordal were only accepted by the EPO if they had been executed using an original hand signature (though scanned copies were, and still are, sufficient for filing).

Now At the end of last year, the EPO indicated that any assignment, licence or other agreements for recordal may be executed using a qualified electronic signature.

But what is a qualified electronic signature?

Three types of electronic signatures are widely accepted in Europe:

Simple electronic signatures – for example, a scanned copy of an original signature or an electronically created signature that has no identity verification.

Advanced electronic signatures – uniquely identify the signatory and are linked to the signature data such that any changes can be detected.

Qualified electronic signatures – an electronic signature created by a qualified electronic signature creation device using a qualified certificate to identify the signer.

Qualified electronic signatures offer the highest level of security. The EPO have made it clear that only qualified electronic signatures will be accepted. The EPO official journal sets out that a qualified electronic signature is an electronic signature that is –

a) Uniquely linked to and capable of identifying the person signing; b) Created by means that the person signing can use with a high level of confidence and over which they have sole control; c) Associated with the electronic document to be authenticated in such a way that any subsequent change in the data is detectable; d) Created by a qualified electronic signature device; and e) Based on a qualified certificate.

The onus is on the requestor to show that an electronically signed document meets the above requirements. As an example, the qualified electronic signature requirements will be met if the parties use a digital execution software like DocuSign® or AdobeSign™ and provide the certificate confirming digital execution. The key benefit of electronic signatures is to ease the administrative burden on obtaining handwritten signatures. This may be welcome news to parties who already use electronic signatures for other purposes. However, not all IP offices accept electronic signatures, and so the requirement to obtain handwritten signatures will remain in some cases.

All other assignments/licences/other agreements requirements at the EPO have not changed. As a reminder:

1) The European Patent Application number (or corresponding PCT application number, if applicable) must be mentioned. 2) All parties to the assignment/licence/agreement must sign the document(s). 3) Signatories must be of a sufficiently senior position. For example, CEO, President, Managing Director, Company Secretary. An “authorised signatory” is likely to be rejected by the EPO without additional evidence that proves the signatory is authorised by the party.

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Caution Required When Using Electronic Signatures in Patent Filings

Electronic signatures have soared in popularity as a result of social distancing measures related to COVID-19. While such signatures are generally accepted by the United States Patent and Trademark Office (USPTO), Wilson Sonsini urges clients to be wary when using these signatures. Most patents are eventually filed outside the United States, and the use of electronic signatures may create risks for these filings.

Papers Filed at the USPTO

The USPTO does accept DocuSign and equivalent electronic signatures, but only for papers submitted to the USPTO electronically. 1  As an alternative to a "wet" handwritten signature, inventors and applicants can also use the USPTO "S-signature" option on any paper filed at the USPTO. 2  An S-signature is a signature (name) inserted between forward slash marks, but not a handwritten signature. Please consult with our Wilson Sonsini patent team regarding any questions about the S-Signature format.

Assignments

The European Patent Office (EPO) and UK Intellectual Property Office (UK IPO) typically do not require the filing of assignment documents unless there is doubt in the issue, such as where the applicant of the priority applications differs from that listed in the EP or UK filing. In that case, the EPO and UK IPO may ask for evidence of the assignment, which should have been executed prior to the Convention filing (e.g., the PCT filing). This applies to U.S. provisional applications as well, particularly where inventors are listed on the provisional and the PCT is filed in the true applicant's name. In such a case, an assignment should be executed before filing the PCT.

The EPO will not accept electronic signatures on assignments. 3  In the United Kingdom, at least one decision of the UK courts has indicated that an electronic signature may be given the same weight as a handwritten signature, but the law is unsettled and may vary from country to country. Further, if a UK or another national court were to decide the validity in the context of a patent derived from a European patent, there is a significant chance that it would adopt the EPO's stringent rejection of electronic signatures for non-procedural acts, which include assignments.

Numerous other countries and jurisdictions have rejected the use of electronic signatures for assignments. These include—but are not limited to—China, Japan, Korea, Taiwan, Mexico, Eurasia, Guatemala, El Salvador, Honduras, Nicaragua, Costa Rica, Panama, Columbia, Dominican Republic, Argentina, Chile, Peru, Malaysia, Indonesia, Philippines, Vietnam, and Thailand.

Recognizing the importance of handwritten signatures for filings outside of the United States, Wilson Sonsini urges clients to obtain wet signatures for all assignments, at least where there is any chance of filing an application outside of the United States. In circumstances where this is not feasible, it may be wise to obtain electronic signatures and abstain from recording until wet signatures are attainable.

[1] 37 CFR § 1.4(d)(3).

[2] 37 CFR § 1.4(d)(2).

[3] cf. Rule 2(2) EPC; Article 10 of the Decision of the President of the EPO dated 9 May 2018 concerning electronic filing of documents (OJ EPO 2018, A45); Decision of the President dated 12 July 2007 concerning the electronic signatures, data carriers, and software to be used for the electronic filling of patent applications and electronic documents, Special Edition No. 3, OJ EPO 2007, A.5.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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