In November’s Official Journal, the EPO included the news that many of us have been awaiting for some time – that the EPO now accepts assignments, licences and other agreements for recordal that have been executed via a “qualified electronic signature”.

What is the change?

With effect from 30 November 2021, licences, assignments and other agreements executed using a qualified electronic signature will be accepted by the EPO as evidence in support of a registration of a transfer of rights, or a registration of a licence or other rights.  As set out in the Official Journal, 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 requirements of a qualified electronic signature can be met through using digital execution software such as DocuSign® or AdobeSign™, but please note it is not the standard form of digital execution that such software will produce (which is an advanced electronic signature) but an enhanced signature protocol and the EPO may require an individual to also provide the signing certificate confirming that they have digitally executed the document.  If you do not already hold such a certificate, you may need to obtain one from a Trust Service Provider (DocuSign is itself a Trust Service Provider whilst AdobeSign integrates with third party services such as DigiCert®).  Previously, the EPO only accepted assignments, licences and other agreements which had been executed using wet-ink, handwritten signatures (although a scanned copy of such documents was, and remains, sufficient for recordal purposes).

Are there additional formalities for recording assignments, licences or other agreements at the EPO?

All other formal requirements for assignments, licences and other agreements at the EPO remain in place.  Here are our top three things to ensure are included:

1. The European Patent Application number: the EPO will not accept assignments, licences or other agreements which do not mention the EP number or (if applicable) the relevant PCT application number.
2. Signatures of all parties to the relevant agreement/licence.
3. Job titles: the EPO still requires that signatories are sufficiently senior (e.g. obviously board level positions like CEO, President, or Managing Director for UK companies, or Company Secretary for US companies) and/or have evidence to show that they are authorised to bind the relevant party. “Authorised Signatory” is not normally sufficient without further evidence.

The ability to use electronic signatures will ease the documentary burden on parties looking to record assignments, licences or other agreements at the EPO and brings the EPO into line with the UKIPO, and EUIPO (on which see our previous article here).

However, as we have reported previously, it remains important to record changes and/or third party interests relating to registered IP rights at all relevant IP offices and there remain many patent and trade mark offices worldwide which do not accept electronically signed documentation.  Therefore, whilst this change in practice at the EPO is very welcome, it does not mean that digital execution will always be the best solution.

Our Transactions Team are experts in multi-jurisdictional IP transfers. If we can help you with any query in relation to transferring IP, please get in touch.