J 0005/23: EPO stops use of electronic signatures on assignment documents
We will all be aware that electronic signatures are now widely used for signing legal documents such as contracts and assignments. It was therefore no surprise that the European Patent Office (EPO) published a notice in OJ 2021, A86, accepting, for the purposes of recording a transfer of ownership, assignment documents that have been electronically signed, albeit only if using a very specific form of electronic signature that complied with EU Regulation No. 910/2014.
Sadly, many commercially available products do not comply with this EU regulation and so the ability of patentees to take advantage of this notice were limited. However, it was seen as a small step in the right direction.
Unfortunately, a very recent decision from the Legal Board of Appeal (J 0005/23) has stopped even this limited use of electronic signatures. The decision of the Board of Appeal found that “signature” in the sense of the laws governing the requirements of an assignment must, in context, only mean a handwritten signature or mark.
The decision essentially said that the EPO was incorrect to issue the notice accepting electronic signatures on assignment documents, as it was based on an incorrect interpretation of the law, and that the laws governing the requirements of an assignment as currently written do not allow assignment documents signed with an electronic signature to be recorded at the EPO.
In a glimmer of hope for proprietors, though, the Board of Appeal did say in 2.11 of the decision that in its view “[w]hilst under the present legal framework, the term “signature” must be understood as referring to handwritten signatures only, [the framework] does not, as such, prohibit the legislator of the Implementing Regulations to the EPC… from specifying the meaning of the term “signature” in the Implementing Regulations…[and] such definition could include reference to some form of electronic signature”.
In other words, the EPO could ask the Administrative Council to change the Implementing Regulations of the EPC to define that “signature” may also mean electronic signature, so that the EPO can once again record a transfer of ownership where the assignment documents have been signed using an electronic signature.
Given that the EPO’s strategic framework includes a desire to transform and improve the way it interacts with users, and that a fully digitalised process is paramount to this, it is hoped the EPO will convene the Administrative Council to approve these changes soon. While making these changes, it may also be prudent for the EPO to remove the requirement for the electronic signature to comply with EU Regulation no. 910/2014, to allow use of more mainstream commercial products such as Docusign.
Until these changes to the Implementing Regulations are made, however, it is important that assignments are signed using wet ink signatures so that transfers can be correctly recorded at the EPO.
