Ruling on signature validity in patent application assignments
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Expert AnalysisLocal Insights

Ruling on signature validity in patent application assignments

Sponsored by

inspicos-400px.png
contract-3002431.jpg

Edward Farrington of Inspicos suggests what measures can be taken to ensure the requirements of patent application assignments are fulfilled after a ‘text string’ signature was declared invalid

The transfer of a patent application from one party to another before the EPO is governed by Article 72 of the European Patent Convention (EPC). This stipulates that an assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.

A decision of the EPO president, published in the Official Journal of the EPO (OJ EPO, 2021, A42) in May 2021, allowed signatures on documents to be:

  • In the form of an enhanced electronic signature;

  • A reproduction of the signature (facsimile signature); or

  • In the form of a string of characters, preceded and followed by a slash (/) sign (a so-called text string signature).

Ruling on signature requirements

A decision by the Legal Board of Appeal – J5/23 – in September 2023 studied the signature requirement when a patent application is transferred under Article 72 of the EPC. The applicant in J5/23 had filed an assignment document in which one party had signed using a text string signature.

The Legal Board of Appeal studied the Vienna Convention on the Law of Treaties, and definitions of the term ‘signature’ in the three official languages of the EPO. The board found that the term ‘signature’ in Article 72 of the EPC should be understood as requiring the parties to “put their names on the assignment contract in a distinctive manner”. It also construed the signature requirement as a requirement to provide handwritten signatures, resulting in an unambiguous formal requirement.

The signature on the assignment on file, which was in the form of a text string signature, was therefore deemed not to fulfil the requirements of Article 72 of the EPC, and thus the assignment was invalid.

Additionally, the Board of Appeal found that a decision of the president of the EPO from 2021 was not concerned with assignments, and had no bearing on the case in question.

Key takeaway for patent applicants

It is therefore strongly recommended that when patent applications are to be assigned, copies of the assignment are printed, signed, and scanned, to guarantee that they meet the requirements of Article 72 of the EPC.

more from across site and ros bottom lb

More from across our site

We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Law firms that pay close attention to their client relationships are more likely to win repeat work, according to a survey of nearly 29,000 in-house counsel
The EMEA research period is open until May 31
Practitioners analyse a survey on how law firms prove value to their clients and reflect on why the concept can be hard to pin down
The winner of Managing IP’s Life Achievement Award discusses 50 years in IP law and how even he can’t avoid imposter syndrome
Saya Choudhary of Singh & Singh explains how her team navigated nine years of litigation to secure record damages of $29 million and the lessons learned along the way
The full list of finalists has been revealed and the winners will be presented on June 20 at the Metropolitan Club in New York
A team of IP and media law specialists has joined from SKW Schwarz alongside a former counsel at Sky
The Irish government has delayed a planned referendum on whether Ireland should join the Unified Patent Court, prompting concern about when a vote may take place
With more than 250 winners recognised during the ceremony, there are many reasons to be positive about the health of the IP industry in EMEA
Gift this article