Summary of Facts and Decision
In a recent decision J5/23, the Legal Board of Appeal rejected a request by the applicant to record a transfer of the application from Gyrus ACMI Inc. to Olympus Medical Systems Corporation on the European Patent Register. The applicant relied on the use of an e-signature to sign an assignment document and, when rejected by the EPO, tried to rely on a previous publication by the EPO that e-signatures would be accepted for the purposes of assignment documents.
The relevant legal provision to be applied is Article 72 EPC, which states that for a valid assignment of a European patent application, the request must be made in writing and signed by all parties to the contract. The key question in this decision was the definition of the word “signature” and what the role of electronic signatures play in this Article.
Previously, in an Notice from the EPO (22 October 2021), which was published in the Official Journal of the EPO, it was stated that “qualifying electronic signatures” would be accepted as evidence of transfers as long as they satisfy criteria set out in the Notice - see paragraph 3 for the criteria of a qualifying electronic signature. The purpose of the Notice was to “facilitate communication by electronic means”.
However, in the present decision, the Board appears to move away from the practice of the Legal Division of the EPO – to accept “qualified electronic signatures” on assignment/licence document – and return to a requirement for handwritten signatures. In their reasoning the Board cited many different dictionary definitions for the word “signature” in all three official languages of the EPO. These dictionary definitions formed the “good faith” basis of the “ordinary meaning in the applicable context” which is to be used to interpret the meaning of “signature” in Article 72.
Moreover, the Board considered that because an electronic signature can take a number of different forms, this may lead to a lack of legal certainty, which is at odds with Article 72 EPC. Ultimately, they concluded that only handwritten signatures are considered to fall within the meaning of Article 72, despite the earlier Notice.
Take Away and Comment
In light of this decision, one must ensure that assignment documents are signed with a handwritten signature (informally referred to as a “wet” signature) and not by any electronic form. Additionally, scanned copies of the documents will still be accepted as evidence of an assignment unless the EPO is unable to deduce with sufficient clarity the signatures [reasons 3.2].
Another point to take away from this decision is the view of the Board that Official Journal publications do not implement or specify any legal Articles of the EPC. The Board cite at paragraph 2.8.3 that despite the intentions of the Notice to facilitate communication by electronic means, “[i]n the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this” and “it is, as such, only a document providing information”.
Therefore, care should be taken when reading and interpreting Notices from the EPO as to the meaning of the Articles and Rules of the EPC.
If you wish to discuss any details relating to this decision, please do not hesitate to contact a member of our team.