4 April 2024

EPO relaxes requirements for registering transfers, licences, and other rights

As previously reported here, the EPO’s recently updated Guidelines for Examination indicated that changes would be made to the requirements for registering transfers, licences, and other rights when amended Rule 22(1) EPC entered into force.

Amended Rule 22(1) EPC entered into force on 1 April 2024 and this Notice from the EPO confirms what this means in practice.

Three key changes have taken effect:

  1. Relaxed signature requirements

The EPO has historically placed strict requirements on the form of signatures used for assignment contracts and other documents supporting requests to register transfers, licences, and other rights. Essentially, the only acceptable signature was a handwritten signature.

A brief step forward occurred in 2022 with the EPO accepting qualified electronic signatures as defined in EU Regulation No 910/2014, but this was quickly reversed in 2023 in view of Board of Appeal decision J 0005/23 in 2023, which took the view that the EPC required “a handwritten depiction of someone’s name”.

Now, amended Rule 22(1) EPC has allowed the EPO to significantly relax this requirement. As of 1 April 2024, the EPO has begun accepting a wide variety of signatures. These include handwritten signatures, facsimile signatures, text string signatures, and various digital signatures.

The EPO now even accepts digital signatures that do not use Public Key Infrastructure (PKI) technology, provided that they are filed electronically, are legible, and are not infected with a computer virus or other malicious software.

  1. No entitlement checks

Entitlement to sign is another area in which the EPO previously followed a strict approach, requiring signatories to assignment contracts and other evidence to hold a high-level position (e.g. director or CEO) at the relevant company. Otherwise, the EPO would require separate evidence of the signatory’s entitlement to sign.

In practice, this often became a cumbersome process, sometimes requiring a CEO of a multinational organisation to sign separate evidence confirming that their Head of IP is, in fact, entitled to sign IP-related contracts by virtue of their position.

As of 1 April 2024, the EPO has stopped this practice. While it is still necessary to expressly indicate the signatory’s position that entitles them to sign, the entitlement will no longer be checked by the EPO.

  1. No fee required

In an effort to encourage the use of the MyEPO Portfolio platform, the EPO has now abolished the administrative fee where the request is filed via MyEPO Portfolio. Note, however, that the administrative fee will still be required where the request is filed by alternative means.

Through the relaxation of the two requirements that have likely resulted in the most inefficiencies in the registration process, together with the abolishment of the administrative fee when the MyEPO Portfolio platform is used, the EPO has created a more user-friendly, cost-effective system for registering transfers, licences, and other rights, in a move that will be welcome to all involved.