Insights: Electronic signing of assignments

Assignment documents filed electronically may now be signed using ‘qualified electronic signatures’.

Previously
Previously, assignments, licences and other agreements for recordal were only accepted by the EPO if they had been executed using an original hand signature (though scanned copies were, and still are, sufficient for filing).

Now
At the end of last year, the EPO indicated that any assignment, licence or other agreements for recordal may be executed using a qualified electronic signature.

But what is a qualified electronic signature?

Three types of electronic signatures are widely accepted in Europe:

Simple electronic signatures – for example, a scanned copy of an original signature or an electronically created signature that has no identity verification.

Advanced electronic signatures – uniquely identify the signatory and are linked to the signature data such that any changes can be detected.

Qualified electronic signatures – an electronic signature created by a qualified electronic signature creation device using a qualified certificate to identify the signer.

Qualified electronic signatures offer the highest level of security. The EPO have made it clear that only qualified electronic signatures will be accepted. The EPO official journal sets out that a qualified electronic signature is an electronic signature that is –

a) Uniquely linked to and capable of identifying the person signing;
b) Created by means that the person signing can use with a high level of confidence and over which they have sole control;
c) Associated with the electronic document to be authenticated in such a way that any subsequent change in the data is detectable;
d) Created by a qualified electronic signature device; and
e) Based on a qualified certificate.

The onus is on the requestor to show that an electronically signed document meets the above requirements. As an example, the qualified electronic signature requirements will be met if the parties use a digital execution software like DocuSign® or AdobeSign™ and provide the certificate confirming digital execution. The key benefit of electronic signatures is to ease the administrative burden on obtaining handwritten signatures. This may be welcome news to parties who already use electronic signatures for other purposes. However, not all IP offices accept electronic signatures, and so the requirement to obtain handwritten signatures will remain in some cases.

All other assignments/licences/other agreements requirements at the EPO have not changed. As a reminder:

1) The European Patent Application number (or corresponding PCT application number, if applicable) must be mentioned.
2) All parties to the assignment/licence/agreement must sign the document(s).
3) Signatories must be of a sufficiently senior position. For example, CEO, President, Managing Director, Company Secretary. An “authorised signatory” is likely to be rejected by the EPO without additional evidence that proves the signatory is authorised by the party.