The EPO relaxes its rules on recording assignments of patents

Our previous article reported on a controversial decision of the EPO’s Legal Board of Appeal, which held that an assignments of a European patent or patent application would only be officially recorded by the EPO if the assignment document bore the wet (handwritten) signatures of both parties to the assignment.

In an era where commercial transactions are, increasingly, effected by electronic documentation, this Decision was widely seen as retrograde and problematic.

It is therefore welcome news that the Administrative Council and President of the EPO have sought to bring about a significant liberalisation of the EPO’s practice in this area.

An amendment to the Implementing Regulations, agreed by the Administrative Council in December 2023 and due to come into effect on 1 April 2024, formally delegated to the EPO President the authority to lay down the requirements for authenticating the signatures to a patent assignment document, in the context of a request for recordal of the assignment.

The President has exercised his prospective authority by issuing a Decision declaring that such documents may be “authenticated by a handwritten signature, a facsimile signature, a text string signature or a digital signature under the conditions specified by the EPO”. Guidance issued by the EPO suggests that where a digital signature is used, the documents in question may be accepted as sufficient evidence if they are filed electronically, are legible, are not infected with a computer virus and do not contain other malicious software. This Decision will also come into effect on 1 April 2024.

Under this new practice, the requirements for securing recordal of a patent assignment may be expected to become much less stringent as of 1 April 2024.

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.

Get in touch if you would like to discuss your innovations and brand protection further.