Transfer of ownership of a European patent (application) before the European Patent Office (EPO) is not an easy task. Evidence of the transfer must be provided in the form of a written document (such as an assignment document) signed by all parties.  Until recently i.e. just after the start of COVID in October 2021, the only form of signature the EPO recognised was a handwritten signature i.e. original signature of all parties. This therefore required documents to be printed, signed by hand of the titular, and scanned before filing electronically with the EPO. Any proximity or relationship issues between the parties which could make this a difficult process to coordinate, not to mention increase the cost, were of no consequence whatsoever to the EPO!

Regretfully, nothing has changed since the adoption of the new e-signature rules.

New e-signature rules

Following a Notice from the EPO published in OJ 2021, A86, the EPO now additionally accepts some highly specific forms of e-signature. So, for the purposes of recording a transfer of ownership, assignment documents that have been signed using a qualified e-signature as defined in EU Regulation No 910/2014 – would be acceptable.

Qualified e-signatures

Unfortunately, not all e-signatures are created equal or indeed treated equal.  The e-signatures generally fall into three distinct categories: i) basic electronic signatures; ii) advanced electronic signatures; iii) and qualified electronic signatures.

  1. basic electronic signaturerefers to any signature that is rendered digitally, (for example, where the signatory’s name is typed between slashes – this format is accepted by the USPTO).
  2. An advanced electronic signatureis an electronic signature that is uniquely linked to and capable of identifying the person signing; is created by means that the person signing can use with a high level of confidence and over which they have sole control; and is associated with the electronic document to be authenticated in such a way that any subsequent change in the data is detectable (for example DocuSign®).
  • qualified electronic signatureis an advanced electronic signature with a qualified digital certificate that has been created by a qualified signature creation device.

According to the EPO’s new practice, the EPO will only accept qualified electronic signatures that meet the definition provided in EU Regulation No 910/2014 (also known as the eIDAS regulation). Notably, this requires a very particular form of qualified digital certificate to be used that is ultimately backed by a supervisory governmental body in the EU.

Whilst major electronic signature platforms which are accepted as legally binding worldwide (for example, DocuSign®) are able to support qualified electronic signatures, in all cases, signatures from these platforms do not meet the exacting requirements of the eIDAS regulation and are notaccepted by the EPO. The requirement for a qualified electronic signature according to the eIDAS regulation is a high bar indeed – so mush so that as of March 2022, the EPO had not accepted as single request for recording a transfer of ownership involving an electronic signature using the convenient for all and legally accepted by most DocuSign® executed assignment documents.

Why you ask is this strictness necessary when the EPO goes to extreme lengths to distance itself from inventorship or ownership determinations and instead, relies on national legal provisions? Well, may be, this is exactly the reason i.e. absolute clarity on patent ownership, even if it means a contradiction with rest of the world which has already recorded and recognised a transfer, using a DocuSign® signed assignment!

Effectively, the old system which thankfully is still available for recording a transfer remains the easiest way to record a transfer the EPO – insist on original signatures by the titular.