Further to our previous bulletin reporting that the EPO were now accepting electronic signatures on assignments, a recent decision by an EPO Board of Appeal (J 0005/23) brings this change into question, setting out that any assignments/licences/other agreements filed at the EPO must be hand signed by all parties for them to be recorded.
A few years ago, the EPO issued a Notice of the President allowing the use of qualified electronic signatures (QES) for executing assignments/licences/other agreements to be filed at the EPO (in addition to handwritten signatures). A QES is a digital signature made with a qualified certificate that identifies the signer reliably and protects against forgery. As such, it has the same legal enforceability as a signature executed by hand. Note that a simple DocuSign signature does not meet this requirement, and so isn’t considered to be a QES.
However, this recent decision from the Board of Appeal sets out that qualified electronic signatures do not meet the EPO’s recordal requirements, and so the above-mentioned Notice of the President is ‘not to be taken into account’. In particular, the Board of Appeal state in paragraph 2.8.3 that:
“In the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this. While a notice from the EPO may be a source of legitimate expectations (see J 10/20, Reasons 1.15), it is, as such, only a document providing information. In particular, 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 (or, for that matter, of the Implementing Regulations to it). 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.”
A further consequence should be that the EPO’s Guidelines of Examination (E-XIV-3) be updated as they currently state that ‘…assignment documents filed electronically may, instead of handwritten signatures, bear qualified electronic signatures…’.
Of course, as is always the case with such decisions, this sets a legal precedent only to the extent of the facts of the case being the same. This can leave some room for deviation, for example where the facts differ. In our recent experience, it seems that some electronic signatures have been accepted by the EPO.
However, for best practice, and to avoid any potential issues until we receive clear guidance from the EPO, our current advice to clients is to ensure that any assignments/licences/other agreements relating to European patent applications are executed with a handwritten signature. It is still acceptable to file scanned copies of the original (hand signed) documents at the EPO. There are ways of remedying situations where assignments have already been executed using electronic signatures, and your usual contact here at Boult Wade Tennant can advise you further.
This Board of Appeal decision does not however rule out the possibility for change in the future. The Board of Appeal indicate at paragraph 2.11 of their decision that the Administrative Council are not prohibited from amending the Implementing Regulations, and so the definition of ‘signature’ could well be updated to include reference to electronic signatures at a future date.