Electronic signature considerations for patent practice

21 September 2020

In the wake of the COVID-19 pandemic, many people are working from home, making it more difficult than usual to get handwritten signatures. Here are answers to some frequently asked questions regarding the use of electronic signatures on assignment documents for patents and patent applications.



When do I need to submit assignment documents to the Canadian Intellectual Property Office?

It is no longer the case that you always need to submit assignment documents to the Canadian Intellectual Property Office (CIPO) in order to record a transfer of a patent or patent application. According to procedures that came into effect in October 2019, the applicant may record a transfer without submitting the assignment document. Evidence of the transfer is only required when the transfer is recorded by the transferee, in which case a copy of the assignment document along with one of the following pieces of evidence would be considered satisfactory (s. 6.05.01b, MOPOP):

  • A signed statement from the transferee stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
  • An affidavit, or other proof to the satisfaction of the Commissioner, from a witness stating that to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
  • The signature of a witness or the presence of a corporate seal on the document effecting the transfer; or
  • A document showing that the transfer was registered in a patent office of another country.

There is no general requirement to submit assignments to CIPO in conjunction with a patent application in Canada, but the option to do so remains available as a distinct process from recording a transfer

Does CIPO accept electronic signatures on assignment documents?

Generally, CIPO does not accept electronic signatures. However, due to the COVID-19 pandemic, CIPO has reduced its signature requirements and is temporarily accepting electronic signatures. This temporary measure was recently published on CIPO's website (see Question #39). Although it appears that this measure applies to all documents, including assignment documents, CIPO does not explicitly specify whether assignment documents may be electronically signed. CIPO has also not specified how long it will continue to accept electronic signatures.

Which types of electronic signatures does CIPO accept?

Due to the COVID-19 pandemic, CIPO is temporarily accepting the following types of electronic signatures:

  • Facsimile signatures (images of a signature submitted by facsimile)
  • Text string signatures (also known as s signatures (Ex: /JohnDoe/))
  • Font type signatures
  • Digital signatures that are an electronic capture of a handwritten signature (such as DocuSign)

Are electronically-signed assignment documents legally valid?

In addition to the question of whether CIPO will accept electronic signatures, there is the further question of whether an electronically signed assignment legally effects the transfer of patent rights. This will depend on the jurisdiction of the assignment. If the assignment is governed by foreign law, then the legal validity of the electronically signed assignment document will depend on the law in that foreign jurisdiction.In this case, neither the Patent Act nor the Patent Rules (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

In Canada, there are separate federal and provincial regimes for electronic signatures. The federal regime applies to the Patent Act (R.S.C., 1985, c. P-4), since it is a federal statute. Part II of the Personal Information Protection and Electronic Documents Act (S.C. 2000, c. 5) (PIPEDA) deals with electronic signatures under the federal regime. If a federal statute requires a signature on a document, then that signature must be handwritten, unless the federal statute in question appears in Schedules 2 or 3 of PIPEDA. Very few federal statutes appear in these Schedules. As a result, the federal regime under PIPEDA has limited applicability. In particular, the Patent Act is not listed in the Schedules. When a federal statute requires a signature on a document and does not appear in Schedules 2 or 3 of PIPEDA, you can also find permission to use an electronic signature in the federal statute itself, in related regulations, or in case law.

In this case, neither the Patent Act nor the Patent Rules (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.


NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.

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