Practical Guide to: e-Signatures

The law and practice around use of e-signatures around the world has changed considerably as a result of the pandemic and evolving ways of working. Whilst further changes are likely, this Guide aims to summarise the current situation.

What is an e-signature?

An e-signature is:

“an electronic seal in electronic form which is incorporated into or otherwise logically associated with electronic communication or electronic data and purports to ensure the origin and integrity of the communication or data” (UK Statutory Instrument 2016/696 Regulation 1, Schedule 3, “The Electronic Identification and Trust Services for Electronic Transactions Regulations 2016”)

“data in electronic form which is attached to or logically associated with other data in electronic form and which is used by the signatory to sign” (Regulation (EU) No 910/2014, “the eIDAS Regulation”)

“an electronic sound, symbol, or process attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record” (US ESIGN Act, 2000)

What form can it take?

An e-signature can have many different forms, including:

• Simple electronic signature – a signature in electronic form, for example:
  - a typed name
  Abel + Imray
  - a Text string signature (also known as S-signature)
  /ABEL IMRAY/
  - a Facsimile signature i.e. an image of an original handwritten signature

• Advanced/Heightened /Enhanced electronic signature – wherein digital certificates are used to verify identity e.g. DocuSign® or AdobeSign^TM
• Qualified electronic signature – a highly secure and regulated form of e-signature having a qualified digital certificate, wherein the signature is created using a Qualified Signature Creation Device (QSCD). A Qualified electronic signature is usually obtained through the services of a qualified Trust Service Provider (TSP).

NB: This Guide does not cover practice in regard to fax communications.

Practice at the UK Intellectual Property Office (UKIPO)

Under the laws of England and Wales, e-signatures are acceptable for documents where there is a statutory right for them to be “signed” in order for them to be valid, including on assignment and license documentation. An e-signature has the same effect as an original handwritten (“wet”) signature.

The Courts have determined that varied forms of e-signature are valid, provided that the signature is capable of demonstrating an intent to sign. For example, each of the following electronic marks have been found to be valid e-signatures: a name typed at the bottom of an email, clicking an “I accept” box on a website and the header of a SWIFT message.

The UKIPO generally accepts e-signatures on all documents.

Assignments/Licenses

An assignment or license of a UK registered right (e.g. a patent, trademark or design) and associated other intellectual property can be executed with e-signatures, under the laws of England and Wales.

The UKIPO does not normally require a copy of the assignment or license documentation to action the recordal, but occasionally there may be a need to file the documentation on request.

Powers of Attorney

For UK companies, a Power of Attorney should be executed as a deed, requiring signature in the presence of a witness under the laws of England and Wales. A Power of Attorney can be executed with an e-signature, and filed at the UKIPO.

Practice at the European Patent Office (EPO)

Most documents, but not all, can be filed at the EPO with an e-signature.

The EPO permits three types of e-signature for documents filed electronically (OJ EPO 2021, A42):

• Text String signature
• Fascimile signature
• Enhanced e-signature i.e. confirmed with a digital certificate issued by or accepted by the EPO (this type of signature can only be used by Professional Representatives using a Smart Card for filing via EPO Online Filing)

Initials are not acceptable.

Special care should be taken regarding e-signatures in regard of documentation providing evidence of a transfer or license of rights, and powers of attorney.

Assignments/Licenses

An assignment of a European patent application (and associated other intellectual property) can only be registered if the signatures meet certain requirements.

The EPO accepts, for signatures attached to assignment/ license documents, either a traditional wet signature, or a Qualified electronic signature (OJ EPO 2021, A86). Original documentation is not required to be filed, but may be requested.

The bar for Qualified electronic signature is high, and if the signature is found to be deficient, the EPO may require further relevant documentary evidence to be supplied.

The EPO defines Qualified electronic signature as an e-signature that:

(a) is uniquely linked to and capable of identifying the person signing;

(b) is created by means that the person signing can use with a high level of confidence and over which they have sole control;

(c) is associated with the electronic document to be authenticated in such a way that any subsequent change in the data is detectable;

(d) is created by a qualified electronic signature device; and

(e) is based on a qualified certificate.

It may, in most cases, be preferable to obtain traditional wet signatures on assignment and license documents. The parties can sign in counterparts (wherein scanned copies are submitted to the EPO, and the originals are stored safely for future use if needed).

There are other formalities to be complied with for recording assignments, licenses and other such documents at the EPO. In particular, the document should contain:

• The Application Number (of the European or International (PCT) Patent Application)
• Signatures of all parties
• Job titles (for example CEO, President or Managing Director) – the signature must be of a person with authority to sign on behalf of the entity. Increasingly, authorisation to sign on behalf of a legal entity is being examined by the EPO.

Powers of Attorney:

Current best practice remains for Powers of Attorney to be signed with a traditional wet signature, and submitted to the EPO in scanned copy. The originals should be stored in case they are needed at a later time.

Practice at the EU Intellectual Property Office (EUIPO)

The EUIPO tends to accept e-signatures, including on assignment documentation.

For documents which are filed electronically, a simple indication of the sender’s name is deemed to be equivalent to a signature.

Do other foreign offices permit e-signatures?

Requirements around the world vary.

In the US, e-signatures are generally permitted by the USPTO and under US Federal and State laws. The USPTO favours the S-signature i.e. text string, which can be applied to all documents filed using the EFS-web platform including inventor declarations, information disclosure statements, powers of attorney etc. Script style fonts are generally not allowable at the USPTO.

In the US, similar to in the UK, intent is an important factor in the validity of electronically signed documents – therefore including a statement to say that all parties agree to the use of the e-signatures in the agreement may be advisable.

Some countries, for example Japan, require original assignment documents to be signed by hand. If a copy is filed, it must be notarized. The appropriate procedure for notarization can be complex, and it is important to seek advice to ensure local laws are complied with.

In many countries there are certain formalities to attend to in respect of the content and execution of the assignment or license documentation, for example, some offices may require an indication of the application number, some other offices may require signatures of one or both parties to the transaction, whilst some other offices may require the full address of the assignor to be provided.

For applications likely to be filed widely around the world, the safest approach may still be to execute assignments and license agreements with traditional wet signature to ensure they can be recorded (and have legal effect) in all required territories. In almost all jurisdictions copies can be filed at least initially, to be followed up with originals on the request of the intellectual property office.

Key points and tips for businesses:

• Check which local laws by jurisdiction are applicable to the transaction/ agreement in question, and thus determine which type of signature is required for legal validity – are e-signatures permitted?
• Consider including a Governing Law clause in documentation to state that the agreement is governed by a national law which permits e-signature
• To demonstrate intent, consider including a statement to say that all parties agree to the use of the e-signatures in the agreement
• Check the Intellectual Property Office requirements with regard to recordals of the documents – do the relevant offices accept e-signatures?
• Are there any notarisation/ witnessing requirements in any of the countries where the documents are to be registered?
• Keep hold of original documentation. This is of course important for a variety of commercial reasons as well as being important for demonstrating evidence of a transaction upon request of an intellectual property office.

Electronic signatures are generally permitted when filing documents electronically at the UKIPO, EUIPO and USPTO.

The EPO has a stricter approach, and particularly for documentation relating to assignments, licenses and powers of attorney, it may be most appropriate to use traditional wet signatures. It is now permitted to use Qualified e-signatures on documentation relating to assignments/ licenses of rights, however the standard for a Qualified e-signature is high, and may be impractical in some cases.

Requirements around the world vary, and some countries still require a handwritten wet signature on some documentation (e.g. assignment documentation).

We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys. To discuss the subject matter of this Guide, or for any queries, please contact any one of our attorneys.