Electronic signatures on EPO assignments - don't discard the fountain pen for now

The use of electronic signatures has rapidly grown in recent years, for reasons which will no doubt be readily apparent. However, when it comes to recording assignments of European patents and applications, the EPO have until now only accepted one type of electronic signature - a qualified electronic signature compliant with EU Regulation No 910/2014 (eIDAS Regulation). For this reason, we have generally advised clients to execute a wet ink copy of the assignment for recordal.

Now however it seems that a recent Board of Appeal decision (J05/23) has overturned even this limited acceptance of electronic signatures. In the decision, they conclude that "signature" in Art 72 EPC (governing the requirements for assignment) must in context only mean a handwritten signature or mark.

The appellant had attempted to record an assignment with a typed signature, and referred to Rule 2(2) as support. This rule governs the acceptance of various forms of electronic signature on documents filed with the EPO. However, the Board concluded that this Rule was limited in scope:

"The only possible conclusion is that the scope of application of Rule 2 EPC in its entirety is limited to formal requirements for filing documents in proceedings before the EPO.

Formal requirements for filing documents in proceedings before the EPO concern a relationship between the EPO, a public authority, and a party to proceedings before the EPO, which is usually a private party. Article 72 EPC, on the other hand, regulates formal requirements for assignment contracts. This usually concerns a relationship between two or more private parties. Hence, Rule 2 EPC and Article 72 EPC regulate entirely different matters."

The Board also considered the previous Notice from the EPO Legal Division stating that electronic signatures would be accepted, and concluded this was based on an incorrect interpretation of the law:

"the Notice on which the Legal Division based its decision does indeed deviate from a provision of the EPC, namely from Article 72 EPC as interpreted by the Board as per the above analysis (and as understood by the Legal Division until the publication of the Notice). The Notice's aim of "facilitat[ing] communication by electronic means" with users is commendable. In the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this."

However, the decision does agree that it would be possible for electronic signatures to be accepted, but that this would require a change in the Regulations to define what is considered a signature:

"While under the present legal framework the term "signature" must be understood as referring to handwritten signatures only, Article 72 EPC does, as such, not prohibit the legislator of the Implementing Regulations to the EPC, i.e. the Administrative Council, from specifying the meaning of the term "signature" in the Implementing Regulations (see G 3/19, Reasons XXVI.4). Taking due account of the rationale underlying Article 72 EPC (see points 2.4.2 and 2.4.3 above), such a definition could include a reference to some form of electronic signature and still respect the boundaries set by Articles 72 and 164(2) EPC."

Unless and until this is done, our advice remains unchanged: always prepare a wet-ink copy of any assignment of a European patent application.