In a notable recent decision, the EPO’s Legal Board of Appeal has declared that an assignment of a European patent application can only take effect before the EPO if the original assignment document bears the handwritten signatures of both parties to the assignment. Assignments executed by way of electronic signatures of any type, including “advanced” or “qualified” electronic signatures, will not be recorded by the EPO.
This is a departure from previous EPO practice and may come as a surprise, in an era when electronic signatures are in widespread use within well-established legal frameworks which allow for a high level of signatory authentication; including eIDAS Regulations in the EU and UK, and the E-SIGN Act in the US. The EPO recognises that “qualified electronic signatures” have equivalent legal effect in many jurisdictions to handwritten signatures; but notes that this may not be the case for all contracting states to the EPC.
This decision establishes that, for the purposes of the EPO, only assignments which have been executed by hand are recognised as effective. In such cases, scanned electronic copies of the original signed document will usually be accepted by the EPO as evidence of the assignment.
Unless and until the EPO changes its practice or enacts new Regulations, assignments of European patent applications should be signed by hand in original form by both parties to the transaction, in order that the assignment may be recorded and take effect vis-à-vis the EPO.
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