In a recent decision by the European Patent Office’s Legal Board of Appeal, it was decided that the term "signature" in Article 72 EPC must be understood as referring to a handwritten depiction of someone's name.
Electronically applied signatures cannot be used to register assignments at the EPO and ‘wet’ handwritten signatures should therefore be used on assignment documents.
Background
J 0005/23 relates to an appeal against the decision of the Legal Division dated 23 February 2023 on European Patent Application No. 21204983.7. A request for registration of transfer of the Application from the Applicant ‘Gyrus ACMI Inc.’ to ‘Olympus Medical Systems Corporation’ was made, in support of which an electronically executed copy of an assignment agreement for both the assignor and the assignee was filed.
The Legal Division rejected the request for registration of a transfer of the Application, on the basis that the electronic signatures in the assignment agreement lacked a qualified certificate within the meaning of Regulation (EU) No. 910/2014[1], as referred to in the Notice from the EPO dated 22 October 2021. The Applicant appealed and argued that the transfer should be registered based on the interpretation that the signature under Article 72 EPC (hereinafter referred to as the ‘signature’) may also take the form of “text string signatures” without requiring any further qualification, which according to the Applicant was expressly allowed as per Article 12 of the decision of the President of the EPO dated 14 May 2021. The Applicant also contended that Rule 2(2) EPC allows means other than a handwritten signature to authenticate a document filed before the EPO.
The Legal Board therefore decided on the requirement of ‘signature’ for a transfer of patent application by an assignment contract. In particular, the Board decided on how the term “signature” in Article 72 EPC is to be interpreted and whether it encompasses electronic signatures in the form of “text string signatures” without any further qualification.
Legal provisions governing the transfer of rights
Article 72 EPC requires that – An “assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”. Under Rule 22(1) EPC, the transfer of a European patent application is recorded in the European Patent Register on request and upon production of documents providing evidence of such transfer.
Further, pursuant to Rule 22(3) EPC, “a transfer has effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in Rule 22(1) EPC have been produced”.
Interpretation and reasons
The Board made its assessment based on principles of interpretation laid down in Articles 31 and 32 of the Vienna Convention on the Law of Treaties 1969 (VCLT). According to the Board, the starting point of interpretation under Article 31 VCLT is the wording, i.e., the “objective” meaning of the term to be interpreted, regardless of the original “subjective” intention of the contracting parties (see G 3/19, Reasons XIV.2).
The Board also relied on various dictionary (Cambridge, Oxford, etc.) definitions of the term signature and noted that the term has been referred to as a handwritten depiction of someone’s name.
The Board emphasised that the general rationale underlying Article 72 EPC is that “there must be clear and unambiguous formal requirements for the transfer of a European patent application, resulting in a sufficient level of authenticity of the assignment contract”. This is the minimum mandatory requirement.
In particular, the Board stated that when signing parties put their names in a distinctive manner, it creates an objectively verifiable link between signature and signatory and would be clearly attributable to the signing parties. This would not be the case if the signatures were electronic in nature. If any type of text in electronic form referring to the name of a person was considered a “signature” within the meaning of Article 72 EPC, that would be a deviation from such a rationale.
For a possible definition of electronic signature, the Board referred to Regulation (EU) No. 910/2014. The regulation provides definitions for a simple electronic signatures (such as the “text string signatures”), advanced electronic signatures which are uniquely linked to and capable of identifying the signatory, and qualified electronic signatures which are additionally based on a qualified certificate. The Board, in this context, noted that this regulation might not be legally binding in all contracting states to the EPC since not all states are EU member states.
The Board disregarded the Applicant’s argument with regard to Rule 2(2) EPC and found that it regulates entirely different matters vis-à-vis Article 72. It was noted that Rule 2(2) EPC in essence relates to formal requirements for filing documents in proceedings before the European Patent Office. The Rule concerns the European Patent Office as a public authority and a party to proceedings before the European Patent Office as a private party. In contrast, Article 72 concerns two or more private parties.
In this regard, it was also noted that: In the context of Rule 2 EPC, i.e. in the context of filing documents in proceedings before the EPO, the purpose of requiring a signature is mainly to ensure that the identity of the person who filed the document can be determined with a sufficient degree of certainty. Given that the EPO provides online services allowing applicants, attorneys and other users to file documents electronically in a secure environment which is protected by smart card or username/password access, the required level of authenticity in a purely procedural context such as this can also be achieved by means other than a signature on the document filed. This consideration is, however, not applicable to a document the subject of which is the contractual transfer of a European patent application as an object of property from one private party to another.
The Board went on to reject the application of a Decision dated 14 May 2021 noting that it is not concerned with formality requirements for assignment contracts under Article 72 EPC, but is limited only to the filing of documents in proceedings before the EPO.
With respect to the Applicant’s reliance on the “Notice from the European Patent Office dated 22 October 2021”, the Board did not take this notice into account for the reason and noted that: 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 is not part of the material referred to in Article 31(2) and (3) VCLT, and therefore is not to be taken into account for a systematic interpretation of Article 72 EPC. Hence, the contents of the Notice have no bearing on the interpretation of the term “signature” in Article 72 EPC.”.
Conclusion
The Board, therefore, concluded that the term ‘signature’ as referred in Article 72 EPC, must be understood as referring to handwritten signatures only. An assignment document which lacks such a handwritten signature is considered to be not in compliance with the formal requirements under Article 72 EPC and Rule 22(3) EPC and has no effect vis-à-vis the EPO.
The Decision comes as a surprise as we move towards greater amounts of electronic means of communication and digitization of legal documents. It would be interesting to see if the legislators would propose amending the Implementing Regulations to include electronic signatures within the scope of the term ‘signature’; until then, assignments should be executed in “wet” ink.
[1] See Article 3(10), (11) and (12) of Regulation (EU) No. 910/2014.