We reported in October 2023, that the EPO had overturned covid era guidance that allowed the use of e-signatures to execute assignments and other contracts to be recorded at the EPO. The result was that wet-ink signatures were the only recommended approach for executing assignments of European Patent Applications (EPAs).
So, it is with delight that we’re able to share the EPO’s press release from 29 February 2024, where a much more permissive approach to the use of e-signatures was announced. The changes take effect from 1 April 2024.
What’s changed?
The press release summarises the Presidential Decision (OJ EPO 2024, A17) and related guidance note (OJ EPO 2024, A22), which have made two significant changes to the EPO’s practice in relation to contractual formalities.
- Electronic signatures to be permitted
The EPO will accept “a broader range of electronic signatures”. In addition to the previously accepted handwritten and facsimile signatures, the EPO will accept text string signatures and digital signatures.
Digital signatures will be accepted where they meet the requirements of advanced or qualified electronic signatures using Public Key Infrastructure (see here for more on QES signatures). Importantly though, the EPO will also accept other forms of digital signature if they are filed electronically, are legible and are not infected with a virus or malware.
In practice, this should mean that contracts executed using popular digital execution software such as DocuSign® and Adobe Sign will be accepted by the EPO.
- Evidence of authority no longer required
For some years now, the EPO has required that individuals signing contracts (such as assignments or licences) on behalf of companies or other legal persons, either held board level positions or provided evidence to confirm that the signatory was entitled to sign on behalf of the relevant legal person.
This practice frequently involved clients having to execute fresh board resolutions or powers of attorney in favour of employees such as, “General Counsel” or “Chief Patent Counsel”. It added time, effort and inconvenience to the process of recording transfers (and other transactions) at the EPO.
It is welcome news then, that the EPO has changed its practice on this point. The new guidance states that, “where a person is entitled to sign by virtue of their position within the legal person, this position needs to be expressly indicated”, but that the EPO will no longer check their entitlement. We understand this to mean that job title should be included in signature blocks for contracts relating to EPAs.
Where will these changes apply?
The changes explained above will apply to documents submitted to the EPO as evidence in support of requests to record transfers, licences, and third-party interests relating to EPAs. They will also apply to cancellations of licences or third-party interests of EPAs.
When do the changes take effect?
These changes will come into force on 1 April 2024.
Our conclusion
These changes are good news for applicants. The acceptance of e-signatures reflects the frequency with which they are used among our clients and is in-line with practice at other major IP offices, including the USPTO and UKIPO.
We welcome the simplified documentation requirements, which we hope will make recording transfers, licences or other dealing in EPAs simpler and speedier.
If you are curious as to reasons to record IP transactions, please see our recently updated article here.
