J 0005/23 – EPO decision calls into question the use of electronic signatures
Electronic signatures have become common place in business and everyday life. They are a quick and convenient way to authorise a document without the need to do it the old fashioned way, of picking up a pen. However, a recent decision from the EPO Legal Broad of Appeal may mean that it’s time to go out and buy some more ink!
Recordal of transfer of rights at the EPO is governed by Article 72 EPC which states:
“An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”
The EPO issued Notice OJ EPO 2021, A86 on 22 October 2022 concerning the use of electronic signatures on documents submitted as evidence to support such requests for registration of a transfer of rights and requests for registration of a licence or other rights.
This notice states that the Legal Division will accept “qualified electronic signatures”, in addition to handwritten signatures. The term “qualified electronic signature” has a special meaning and relates to the provisions of EU Regulation No. 910/2014 in which this term is defined as the most stringent type of electronic signature. The requirements of using a qualified electronic signature are quite onerous and many of the commonly used electronic signature software programs are not capable of generating the required certification tokens.
In the recent case of J 0005/23, an appeal was filed against the decision of the Legal Division to reject a request to register a transfer of rights for a European patent application on the basis that the electronic signature was not a qualified electronic signature. However, this appeal may have far wider reaching consequences.
The applicant filed with the Legal Division evidence in support of the request which was an electronic copy of an assignment agreement, bearing “text string signatures” (i.e. //John Smith//) for both the assignor and the assignee. The Legal Division rejected this as not meeting the requirement of a qualified electronic signature within the meaning of Regulation (EU) No. 910/2014. However, at appeal, the applicant argued that the “text string signatures” do in fact meet the requirements and the transfer of rights evidenced by the assignment document should be recorded on the European Patent Register.
The Legal Board of Appeal took the view that this was insufficient to be considered a signature, but the Board went far further and called into question the use of all electronic signatures at the EPO.
The Legal Bord of Appeal stated that Notice OJ EPO 2021, A86 was “commendable” but a notice is the wrong means to achieve implementing the use of electronic signatures because it is “only a document providing information”. The Board summarised this point thusly:
“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 would appear that one cause for concern of the Board is the fact that some national courts may not accept a qualified electronic signature because not all contracting states to the EPC are EU member states recognising Regulation (EU) No. 910/2014 and that such potential inconsistencies regarding transfer of rights should be avoided.
The Board did however provide a suggestion of sorts for how the EPO can validly use electronic signatures going forwards and stated:
“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).\2
It remains to be seen if the President of the EPO and the Administrative Council will act on this issue and make an amendment to the Implementing Regulations to ensure that electronic signatures can continue to be validly used.
Practice note
This decision marks the EPO as being at odds with many other patent offices and the general trend towards digital working but, on the basis of this decision, we strongly recommend that handwritten signatures are used on assignment documents and licence agreements which are to be recorded at the EPO.
