02/12/2021
As of 30 November 2021, the European Patent Office accepts Qualified Electronic Signatures (QES) attached to electronically filed documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC. Similarly, the EPO will also accept such electronic signatures to support request for registration of a licence or other rights under Rule 23 EPC. A link to the November 2021 issue of the EPO Official Journal publishing the notification can be found here.
By way of background, there are 3 different types of electronic signatures which are widely accepted in the UK and Europe, namely, Simple Electronic Signatures (SES), Advanced Electronic Signatures (AES) and Qualified Electronic Signatures (QES). These are based on the electronic identification, authentication and trust services regulation. The UK government has published a helpful guide to electronic signatures here.
A simple electronic signature may just be a scanned original signature or one that is created by the signatory on the document to be executed, but without any signatory identity verification.
Consequently, a Simple Electronic Signature is probably the most convenient for the signatory because no identify verification is required, however, it does have the lowest level of security.
An Advanced Electronic Signature is uniquely linked to the signatory, identifies the signatory and is linked to data within the signature that can detect any changes made.
Finally, a Qualified Electronic Signature is an electronic signature that is created by a qualified electronic signature creation device, and which is based on a qualified certificate for the electronic signature.
One example of a Qualified Electronic Signature (QES) is an electronic signature which has been created using a certificate and unique signatory key. The key can be stored on a smart card or USB token. Because the signatories’ identity has been verified as part of the Qualified Electronic Signature creation process, a Qualified Electronic Signature has the highest level of security.
As the EPO has decided to adopt Qualified Electronic Signatures on electronic documents to support a transfers or licences of right, it does mean that signatories will face the additional burden of obtaining the certificate, and unique signatory key, and also using these in conjunction with the qualified electronic signature creation device to generate the signature, if they wish to use an electronic signature.
What this is likely to mean is that using Qualified Electronic Signatures on documentary evidence to support the recording of transfers, licences or other rights at the EPO is likely to be most attractive for those signatories who are already regularly using Qualified Electronic Signatures for other purposes or likely to do so in the near future.
However, under the current Guidelines for Examination, the EPO will accept as documentary evidence of a transfer or licence the original document or a copy of that document.
Accordingly, for signatories who do not regularly use Qualified Electronic Signatures, it may be easier to execute an original paper transfer or licence document using an original “wet ink” signature and then submit a copy of the executed document to the European Patent Office.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
