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.