You’ve made your European patent application. You now want to assign it. You check the relevant provision of the European Patent Convention (EPC), Article 72, which requires “the signature of the parties to the contract”. But beware. According to a recent decision of a Board of Appeal of the European Patent Office (EPO), the signatures need to be by hand in order to record the assignment with the EPO.

Background

The decision arose in a case where the appellant had sought to record the assignment of a European patent application in the European Patent Register. It had filed an electronic copy of its assignment agreement bearing electronic signatures – specifically, “text string signatures” – for both parties. But the Legal Division of the EPO refused to record it, asking for the assignment to be re-submitted with either handwritten or “verifiable electronic signatures” (these giving a higher level of assurance than text string signatures). The appellant refused to do so. Instead, it appealed to the EPO’s Board of Appeal, requesting that the decision be set aside and the transfer of rights be recorded.

The key issue the Board of Appeal had to decide was what “signature” means in Article 72 and whether it encompasses electronic signatures in the form of text string signatures.

Board of Appeal decision and reasoning

The Board of Appeal found that “signature” meant handwritten signature and did not encompass electronic signatures of any kind (including verifiable electronic signatures). Assignment agreements that don’t bear a handwritten signature do not comply with the formal requirements of Article 72 and have no effect vis-à-vis the EPO, with the result that the EPO will not record the transaction in the European Patent Register.

According to the Board, the rationale behind Article 72 is that there must be clear and unambiguous formal requirements for the assignment of a European patent application, which provide a sufficient level of authenticity of the assignment agreement. The Board’s view was that this purpose would be achieved by interpreting “signature” to mean handwritten signature, but not if it was taken to cover electronic signatures. This interpretation also aligned with common dictionary definitions of “signature” in the context of a contract.

In favour of its own case, the appellant had pointed to:

  • another provision of the EPC (Article 2(2)) which states, “[w]here the Convention provides that a document must be signed, the authenticity of the document may be confirmed by handwritten signature or other appropriate means… permitted by the President of the [EPO]”; and
  • a decision of the President of the EPO and a “Notice” from the EPO (each in 2021), which both essentially state that documents filed electronically at the EPO can use electronic signatures.

However, the Board drew a distinction between requirements under Article 2(2), which, when read in context, are limited to the formal requirements for filing documents in proceedings before the EPO; and under Article 72, which relate to requirements for assigning a European patent application. As a result, the scope and meaning of Article 2(2) has no impact on the meaning of “signature” in Article 72. Nor does the decision of the President of the EPO referred to above (which is also based on Article 2(2)).

As for the 2021 EPO Notice, the Board concluded that whilst it may be a source of legitimate expectations, it was not a legal instrument which could be used to interpret Article 72. In any case, the Board noted that a text string signature was not a sufficiently robust “qualified electronic signature” in accordance with that EPO Notice.

So, the Board dismissed the appeal and refused to record the assignment.

What does this mean in practice?

The decision may be slightly surprising given the widespread use of e-signatures, especially in the UK where execution formalities are often more relaxed than in other jurisdictions. As such, this decision serves as a reminder to take extra care, and seek specialist advice, when executing important documents.

For now, assignees of a European patent application (whether standalone or as part of a wider transaction) would be well advised to insist on handwritten signatures.

The Board did, however, give some hope for the future by noting that the Administrative Council, which has responsibility for the Implementing Regulations under the EPC, could amend this position. It will be interesting to see whether the Administrative Council takes up that invitation.

“[T]he signature requirement in Article 72 EPC ensures that the assignment contract becomes clearly attributable to the signing parties when they put their names on the contract in a distinctive manner, thereby creating an objectively verifiable link between signature and signatory.”

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