The EPO’s Legal Board of Appeal Tightens Formal Requirements for Recording Assignments
Electronic signatures have revolutionized the way we execute agreements and other documents in the digital age. Their use in the past few years has accelerated, in part driven by the COVID-19 pandemic, but also because they are often more convenient and are generally considered to be more secure than handwritten signatures.
Despite the widespread and increasing acceptance of digitally signed documents, the European Patent Office (EPO) has been relatively slow to adapt. In particular, it was only in November 2021 that the EPO announced that it would accept certain digitally signed assignments in order to record changes of ownership at the EPO. Specifically, the EPO will accept digital signatures that are compliant with EU Regulation No 910/2014. In our experience, only a small subset of digitally signed documents comply with that EU regulation, so in practice it has generally been easier to continue using handwritten (“wet”) signatures when recording changes in ownership at the EPO. Whilst it might have been expected that the EPO would relax its requirements in this respect, it appears that instead a recent decision of the Legal Board of Appeal in J5/23 has put an end to the acceptance of any digital signatures, even those that are compliant with EU Regulation No 910/2014 .
In the case underlying this decision, the applicant wanted to record a transfer of ownership by relying on an assignment document that was signed with a “simple” (typed) electronic signature. The EPO’s Legal Division refused to record this transfer, referring to Rule 2(2) EPC and the Notice from the President of the EPO of 22 October 2021. This notice is the source of the requirement noted above, namely that electronic signatures are only acceptable where they meet the requirements of Regulation (EU) No. 910/2014. In line with current EPO practice, the Legal Division reasoned that the simple signature on the assignment document provided by the applicant did not meet this requirement and was therefore not sufficient to register the transfer. The applicant appealed.
Surprisingly, rather than deciding only on the allowability of a simple signature, the Legal Board of Appeal went further and has rejected the use of all electronic signatures on assignment documents used to record changes at the EPO. It concluded that neither Rule 2(2) EPC nor the Notice from the President of the EPO of 22 October 2021 qualify the requirements of the Article 72, which regulates assignments. Rather, the Board argued that Rule 2(2) EPC defines only the formal requirements for filing documents in proceedings before the EPO, which excludes assignment documents. The Board further reasoned that the wording of Article 72 EPC means that assignments need to have a handwritten signature in order to support a transfer of ownership.
The Legal Board’s decision, if followed, thus means that electronic signatures will no longer be accepted on an assignment document, even where the signature meets the requirements of Regulation (EU) No 910/2014. The decision considers that, for electronic signatures to be accepted at some point in the future, it would be necessary for a change to the EPC itself. In other words, the requirements of EPC cannot be overridden by, for example, a Notice from the President or a change to the Implementing Regulations.
This decision makes the EPO’s stance on the formal requirements for recording assignments even stricter than at present. Our recommendation therefore remains that all assignment documents that are to be used to record changes at the EPO bear handwritten signatures of both the assignor and the assignee.
In cases where an assignment has already been executed with electronic signatures, then for the purposes of recordal at the EPO we would suggest one of two options. First, a confirmatory assignment with handwritten signatures can be prepared and used to record the transfer of ownership at the EPO. Alternatively, the parties could countersign the existing assignment with wet signatures.
For the avoidance of doubt, this decision is applicable only to signatures on assignment documents that are used as evidence of a recordal of assignment at the EPO. It does not overhaul the practice in other respects. For example, where an assignment document is submitted as evidence of a valid priority claim. National law remains the decisive factor here.
Should you require advice on the recordal of an assignment, please contact our assignments team or your usual J A Kemp advisor.