Compared to some patent offices, the European Patent Office (EPO) traditionally placed a high burden on the evidence required to record a transaction, such as an assignment, licence, security interest, etc.
For example, documentation used to support a transaction required handwritten, wet-ink, signatures by all parties. Moreover, where a party to a transaction is a company, evidence showing the authority of the signatory to sign on behalf of said company was required if it was not clear that they were authorised to do so based on their job title. This often meant that additional evidence was required to record a transaction at the EPO compared to recording the same transaction at another patent office.
However, from 1 April 2024, this is set to change.
Electronic signatures
From 1 April 2024, the EPO will accept a “broader range of electronic signatures” on documents submitted as evidence to support a transaction. Specifically, the EPO will accept:
- handwritten signatures, facsimile signatures and text string signatures;
- digital signatures that use Public Key Infrastructure (PKI) technology; and
- digital signatures that are legible, are not infected with a computer virus and do not contain other malicious software.
While it remains to be seen how this will work in practice, the last bullet point suggests that evidence (e.g. assignment documents, licence agreements, contracts, etc.) signed using traditional e-signing software, such as DocuSign®, should be acceptable to support a request to record a transaction.
Authorisation to sign
Additionally, the EPO will change its approach when assessing an individual’s entitlement to sign on behalf of a company. From 1 April 2024, where a person is entitled to sign by virtue of their position within the company/legal person, this position needs to be expressly indicated, but will no longer be checked by the EPO.
Therefore, it seems that as long as the job title of the individual signing on behalf of a company is indicated, this will be sufficient to show that they are authorised to sign on behalf of said company.
Conclusion
The above-mentioned changes will streamline the registration of transactions at the EPO and bring the process in line with other patent offices, such as the US-PTO and the UK-IPO. Note that other specifics of recording transaction at the EPO, such as having a signature from all parties, have not changed.
If you have any questions regarding registration of transactions, please contact your usual Forresters attorney.
