Article updated October 2023
This article was originally published on 14 May 2021, but has been updated in light of changes at the EPO.
Document signing has presented novel challenges in the new remote-working environment. Recording an assignment at the European Patent Office (EPO) can be straightforward provided that the formal requirements are understood and complied with. This article aims to set out those formal requirements so that pitfalls can be avoided.
Article 72 EPC relating to Assignment reads:
An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.
Documents evidencing the transfer must be filed with the request for recordal. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy) or other official documents or extracts thereof, including a confirmatory document prepared for the purposes of the recordal.
Although the Article of the EPC has not changed, the EPO Guidelines for Examination relating to Article 72 EPC changed in 2016 and again in 2017. They require now that the signatures of all parties to the contract i.e. assignee and assignor must appear on the documents submitted as written evidence proving the transfer.
Entitlement to sign
An indication must be given as to the signatory's entitlement to sign. This will typically involve listing the job title of any signatory of the assignment. The EPO has the right to request documentary proof of the signatory's authority to sign. Our understanding is that, in practice, the EPO will usually request proof of a signatory’s authority to sign unless the relevant signatory is a Director, Managing Director, President or CEO of the relevant company. If the signatory is entitled to sign as a result of a special authorisation, best practice is to submit a copy (which does not need to be certified) of the authorisation in order to obviate the need for the EPO to request such proof.
Form of signatures
In the current circumstances, electronic signatures might be more readily obtainable than an original (wet) signature. In a notice dated 22 October 2021, available here, the EPO announced it would now be accepting electronic signatures to support registration of a transfer or a licence.
However, in a Board of Appeal decision dated 4 September 2023 (J5/23, available here), the Board decided that this notice deviated from Article 72 EPC. Instead, the Board concluded that Article 72 EPC ‘must be understood as referring to a handwritten depiction of someone’s name’ (Reasons 2.9).
If the evidence presented is found to be unsatisfactory or where doubts arise as to the authenticity of the signature, the EPO may require the submission of further relevant documentary evidence.
The EPO will also accept a scanned copy of an original signature and the parties may sign in counterparts.
The national law of China, Japan and Korea foresees that a seal or stamp can take the place of a signature. As we understand current practice, this will be accepted by the EPO for China, Japan and Korea, provided it is accompanied by the seal holder's name in printed form.
The administrative fee must be paid in full, otherwise the request is deemed not to have been filed. Where the request relates to multiple applications, a separate fee has to be paid for each application.