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In a third (and we hope final) update on whether or not the EPO accepts digital signatures on assignments/licences/other agreements (see our two previous bulletins discussing this issue here: Update 1 and Update 2), we can confirm the welcome news that as of 1 April 2024, digital signatures (as determined by the President of the EPO) on such documents will be accepted by the EPO.
Digital signatures
In recent years, the EPO has changed their mind more than once on whether or not digital signatures on assignments, licences and other agreements are acceptable. The President of the EPO previously indicated that qualified electronic signatures should be acceptable, as reported in our Update 1.
Later, a Board of Appeal decided that the President could not make such a decision that overrides the requirements set out in the European Patent Convention (EPC) and its Implementing Regulations (IR). We reported this in our Update 2, where we ended saying that the Board of Appeal noted the IR could be amended to allow digital signatures. This has now happened as the IR have been amended to delegate the power to determine acceptable forms of signature to the President of the EPO.
And so we return to the situation described in our Update 1 meaning that, from 1 April 2024, the EPO will accept text string signatures and digital signatures, in addition to the previously accepted handwritten and facsimile signatures. This makes our previous advice to clients to ensure documents are executed with a handwritten signature appear ultra-cautious.
Acceptable forms of digital signatures will include, but are not limited to, advanced electronic signatures and qualified electronic signatures. You can find more details about these signature types in Update 1, but it appears that documents signed using the likes of the popular DocuSign® or AdobeSign™ applications will be acceptable at the EPO.
Entitlement to sign
Another (small) change to the registration of transfers, licences and other rights regards the EPO’s practice of checking a signatory’s entitlement to execute documents on behalf of a legal person/company.
As before, each signatory must still be suitably entitled to sign such documents on behalf of the legal person/company and the signatories’ positions are still required as indicators of their entitlement to sign. Previously, the EPO would challenge this entitlement if a signatory’s position was not one of a few well recognised positions, such as a company secretary/CEO etc.
The EPO still require an indication of the signatories’ positions. However, as of 1 April 2024, the EPO will no longer be checking their entitlement to sign on behalf of the legal person/company. That said, the EPO have also reserved the right to check in exceptional circumstances where “the circumstances of a particular case necessitate this”. This change promises to ease the burden on clients by simplifying the steps for providing sufficient authorisation, although it is not yet clear in which circumstances the EPO will request proof of a signatory’s entitlement.
The Guidelines (E-XIV-3) have been updated to reflect these changes and now indicate that contracting parties must ensure that signatories are duly authorised in accordance with the national law applicable to signing the document. As such, at least for now, it seems that a document containing the signature and title of a person who, on the face of it, looks to be a reasonable person that has been duly authorised to sign on behalf of the legal person/company, should be accepted by the EPO.
As always, do contact your usual Boult advisor with any questions.
Read more about these changes in February’s issue of the EPO Online Journal: OJ EPO 2024, A16 – Decision of the Administrative Council of 14 December 2023 amending Rules 1, 22, 41, 147 and 152 of the Implementing Regulations to the European Patent Convention (CA/D 26/23), OJ EPO 2024, A18 – Decision of the President of the European Patent Office dated 9 February 2024 concerning signatures on contracts and declarations relating to European patents with unitary effect and OJ EPO 2024, A22 – Notice from the European Patent Office dated 9 February 2024 concerning revised Rule 22 EPC