Is an electronic signature valid for recording an assignment before the EPO? Not now, answers the Legal Board of Appeal.
The Legal Board of Appeal (LBoA) of the European Patent Office (EPO) has decided that assignments recorded at the EPO require handwritten signatures of all parties involved, in an apparent end to the allowability of qualifying electronic signatures in assignment documents.
Article 72 EPC states:
“[a]n assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”
Traditionally, only handwritten signatures in assignment documents have been accepted by the EPO (the EPO accepting electronically filed, e.g., pdf, copies of such documents).
Recently, general acceptance and the use of electronic means for signing documents has become more widespread outside of the EPO. In late 2021, the EPO issued a Notice outlining that “qualified electronic signature[s]” would be accepted to “facilitate communication by electronic means”. The notice outlined that such electronic signatures must be compliant with Regulation (EU) No 910/2014 – a strict bar to acceptance of which many commonly used commercial electronic signing services do not meet. However, notwithstanding the strict bar to acceptance, the Notice highlighted a tentative move towards acceptance of increasingly common electronic means for signing transactions.
In an apparent backstep, a recent decision by the LBoA (J5/23) has ended the acceptance of electronic signatures in assignment documents before the EPO (even such electronic signatures complying with Regulation (EU) No 910/2014).
A key takeaway from the decision is that:
“… the principles of interpretation laid down in Articles 31 and 32 of the Vienna Convention on the Law of Treaties 1969 (VCLT) must be applied … While a notice from the EPO may be a source of legitimate expectations … it is, as such, only a document providing information … the Notice is not a legal instrument passed by a competent legislative body, so it can neither implement nor specify any articles of the EPC … It is not part of the material referred to in Article 31(2) and (3) VCLT, and therefore is not to be taken into account for a systematic interpretation of Article 72 EPC. Hence, the contents of the Notice have no bearing on the interpretation of the term “signature” in Article 72 EPC … 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.”
Reasons 2.3, 2.8.3, and 2.9
In other words, Notices issued by the EPO are not legal instruments and should not be used as such. In this case, it was determined that the Notice, including a definition of a “qualifying” signature, should not have a bearing on what a “signature” should constitute under the EPC.
Accordingly, whilst Notices issued by the EPO may provide an expectation of change in practice before the EPO, the content of such Notices should be viewed with a degree of caution, particularly if there is a deviation from established interpretation by a competent legislative body.
However, the LBoA has not completely ruled out the future possibility of accepting electronic signatures in assignment documents for recordal at the EPO. In particular, the LBoA confirmed that:
[w]hile under the present legal framework the term “signature” must be understood as referring to handwritten signatures only, Article 72 EPC does, as such, not prohibit the legislator of the Implementing Regulations to the EPC, i.e. the Administrative Council, from specifying the meaning of the term “signature” in the Implementing Regulations … such a definition could include a reference to some form of electronic signature … and still respect the boundaries set by Articles 72 and 164(2) EPC. Providing such a definition in the Implementing Regulations would then change the context in which the term “signature” in Article 72 EPC is interpreted pursuant to Article 31 VCLT … both by the departments of the EPO and by national courts.
Reasons 2.11
If electronic signatures in assignments to be recorded before the EPO are indeed accepted in the future, it remains to be seen as to whether strict requirements, such as those laid out by Regulation (EU) No 910/2014, must be met.
Regardless, whilst there may be steps towards acceptance of electronic signatures by the EPO in the future, it remains, at least for now, that assignment documents to be recorded before the EPO should include handwritten signatures of all parties to the assignment. In practice, with many still remote working at least some of the time, it is now commonplace for wet signatures to be applied to separate copies and electronic copies to be made with a smartphone for filing at the EPO.If you have any questions in connection with preparing or recording assignments at the EPO or throughout Europe, please don’t hesitate to reach out to Ben Shepherd, Jack Gunning, or your usual Forresters representative.
