Changes in Requirements for Recording Transfers and Licensing Transactions of European Patent Applications

Starting from 1st April 2024, the European Patent Office (EPO) is implementing a more relaxed approach towards the requirements for recording changes in transfers and licensing transactions of European Patent Applications. This change is aimed at streamlining the process and embracing digitalization. The EPO will now accept electronic signatures, and eliminate the administrative fees if the request is filed electronically via MyEPO Portfolio. In this article, we will delve into the details of these changes and explore their impact on the patent application process.
Transition Challenges
In November 2021, the EPO announced that it would accept qualified electronic signatures (QES) for executing assignments, licenses, and other recording agreements. However, a Board of Appeal’s decision in September 2023 seemed to overturn this decision. The Board stated that the electronic signature on the assignment did not meet the requirements of a QES and requested handwritten or compliant electronic signatures. This led practitioners to recommend providing scanned versions of wet signatures for executing EP patent application assignments.
Changing Contractual Formality Rules
As of 1st April 2024, the EPO is introducing a new concept for the registration of transfers of rights and licenses for EP and UP procedures. This change marks a significant milestone in the digitalization and simplification of the EPO’s procedures. The EPO President’s Decision (OJ EPO 2024, A17) and related guidance note (OJ EPO 2024, A22) summarize the major changes in the EPO’s practice. The key changes include the acceptance of electronic signatures and the elimination of the requirement for evidence of entitlement to sign. Handwritten and facsimile signatures will still be accepted.
Acceptance of Electronic Signatures
The EPO's new practice allows for a more flexible attitude towards the acceptance of electronic signatures. This means that applicants can now use electronic signatures, in addition to handwritten signatures, facsimile signatures and text string signatures, to execute assignments, licenses, and other agreements for the purpose of registration before the EPO. The acceptance of electronic signatures is a significant step towards aligning the EPO's formalities with other major patent offices, such as the USPTO and UKIPO.
Advantages of Electronic Signatures
The allowance of electronic signatures brings several advantages to applicants. Firstly, it eliminates the time constraints associated with obtaining physical signatures. Co-owners of patents and patent applications can now provide permissions and add signatures in real-time without the need for paper prints. This flexibility allows for smoother and faster processing of ownership changes. Secondly, the use of electronic signatures reduces administrative burdens and costs associated with printing, scanning, and mailing physical documents. Applicants can now conveniently execute assignments and licensing transactions digitally, saving time and resources.
Elimination of the Requirement to provide Evidence of Entitlement to sign
Another significant change in the EPO's practice is the elimination of the requirement for evidence of authority to sign. Previously, applicants had to provide evidence of authority, such as board resolutions, when delegating signature authority to employees. However, under the new rule, applicants only need to indicate the job title of the person signing the agreements relating to European Patent Applications. As long as the job title is clearly indicated in the signature blocks, the EPO will no longer check their entitlement. This change allows for more flexibility in delegating signature authority and streamlines the process for applicants.
Simplified Registration Process
The changes in the EPO's practice bring about a simplified registration process for transfers of rights and licenses. Applicants can now register these changes more easily and quickly, thanks to the acceptance of electronic signatures and the elimination of administrative fees. Additionally, if the requests for change are filed through the MyEPO portfolio, no administrative fee will be due. This simplification reduces the hurdles for applicants and encourages them to promptly register any ownership changes.
Conclusion
The EPO's more relaxed position regarding the requirements for recording changes in transfers and licensing transactions of European Patent Applications brings several advantages to applicants. The acceptance of electronic signatures aligns the EPO's formalities with other major patent offices and facilitates smoother and faster processing of ownership changes. The elimination of the evidence of authority to sign requirement allows for more flexibility in delegating signature authority. These changes mark an important milestone in the digitalization and simplification of the EPO's procedures, making life easier for applicants and reducing administrative burdens. The new registration process encourages applicants to promptly record any ownership changes, ensuring transparency and accuracy in the patent application process.
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