October 2023 CONFIRMATION AS TO THE CORRECT FORM OF A SIGNATURE FOR AN ASSIGNMENT
This article looks at the requirements of Article 72 EPC, i.e., the requirement that the assignment of a European patent application must be made in writing and contain “the signature of the parties to the contract”.
The Decision
According to Article 72 EPC, the assignment of a European patent application must be made in writing and requires “the signature of the parties to the contract”.
The question for the Legal Board of Appeal in J 0005/23 was whether the definition of “signature” includes text string signatures, e.g., “/Joe Bloggs/”?
Dictionary definitions were referred to when considering the meaning of “signature” and, in the given context of a contract, the dictionary definitions refer to the term “signature” mostly, although non-exclusively, as a handwritten depiction of someone’s name.
In the proceedings leading to the decision under appeal, the Appellant argued that the Legal Division accepted so-called handwritten signatures on a confirmatory assignment agreement being provided in the form of an electronic copy (and hence not necessarily as “wet signatures” on paper). The Appellant considered this to fail any requirement that the signature must be a “handwritten depiction” of someone’s name.
The Board disagreed with the Appellant re this alleged contradiction, stating that the formal requirements for the conclusion of an assignment contract under Article 72 EPC must not be confused with the requirements for filing a document in proceedings before the EPO.
A document filed as evidence that an assignment contract was validly executed with the parties’ handwritten signatures is a document which is filed in proceedings before the EPO, and assessment thereof falls under Rule 2 EPC and the decision of the President of the EPO dated 14 May 2021 concerning the electronic filing of documents.
The rules with respect to documents filed in proceedings before the EPO were not considered relevant to the requirements of Article 72 EPC, where it remained clear to the Board that a handwritten depiction of the parties’ names was necessary.
It is noted that the Board accepted only one electronic format as meeting the requirements of Article 72 EPC; this being that of a “qualified electronic signature”, e.g., that used with the current UPC smart cards.
Acceptance of qualified electronic signatures is consistent with the national courts of EU member states under (EU) No. 910/2014. A qualified electronic signature is considered to fulfil the legal requirement for a signature with respect to data in electronic form in the same way that a handwritten signature does with respect to data on paper. It is backed by a unique certificate that proves validity beyond doubt.
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This Decision highlights the importance of ‘best practice’ in executing formal assignment documents, especially on any transactions that may be relied on at the EPO. Whilst qualified electronic signatures suffice, their use remains limited, and therefore execution of assignment documents is suggested to be in the form of a wet signature, even if you then file a scanned copy at the EPO.
