Posted on 15/6/2022

How should I sign documents in the patent system?

There are new rules relating to the manner in which a document should be signed.

Certain documents in the patent system require a signature, either of the applicant/owner of a patent application or patent, their appointed representative (patent attorney) or of a new owner following an assignment of a patent application or patent.

The rules for signatures are not as simple as who needs to sign the document (which is not the subject of this discussion), but there are also rules relating to the manner in which the document is to be signed (how it is signed, which is the subject of this discussion).

In some cases, a document to be signed is ‘signed’ as a part of the filing process. In other cases, a document such as an assignment of ownership of a patent application or patent or a licence of rights relating to a patent application or patent will need to be signed before it can be recorded on a Register of patent applications or patents maintained by a national IP Office.

Moreover, the rules relating to how a document is to be signed vary across the world.  Some countries require a simple signature, some require a ‘wet ink’ signature, and some require that a document be signed in the presence of a notary and then be legalised or Apostilled.

Whilst there are IP Offices around the world which accept ‘electronic’ signatures, the nature of electronic signatures also differs, and it is important to understand what exactly is meant when an IP Office states that ‘electronic’ signatures are accepted because the term ‘electronic signature’ or ‘e-signature’ is a category of methods for signing a document.

As explained by Docusign, one of the leaders in the field of electronic signatures, ‘a digital signature is a specific type of electronic signature that uses a specific technical implementation to meet the needs of highly regulated industries. The use of digital signatures is regulated in legal texts, such as the European eIDAS regulation of 2014 and the United Kingdom’s Electronic Identification and Trust Services for Electronic Transactions Regulations of 2016.

Electronic signatures are typically divided into three main categories: basic electronic signatures, advanced electronic signatures, and qualified electronic signatures.

A basic electronic signature refers to any signature that is applied electronically.  It does not require strong signer authentication or ID verification. An example of this type of signature is, where the signatory’s name is typed between slashes or an example signature (an image developed by the program used to sign) is applied when the signatory clicks a button.

An advanced electronic signature (AES) is an electronic signature that includes additional user authentication steps to uniquely link to and identify the person signing.  An AES is created when a signatory is asked to produce a valid document to confirm their identity, as well as a unique access code after the signing process. A digital certificate will be generated and attached to the signed electronic document as part of this process. This digital certificate allows the signed document to be authenticated in such a way that any subsequent change in the document data, is detectable.

A qualified electronic signature (QES) is a higher level than the AES and is created through a face-to-face ID verification process by a Qualified Trust Service Provider – which may be from either the UK or EU – and a digital certificate is created with an electronic signature device which includes the verified ID.

So, what does this mean?

From 1 January 2022, the European Patent Office (EPO) began accepting Qualified Electronic Signatures (QES) attached to electronically filed documents submitted as evidence to support requests for registration of a transfer of rights and for registration of a licence or other rights.

Whilst this is a positive step for remotely signing documents, the requirement that the electronic signature be a qualified electronic signature means that it may actually still be more straightforward to sign the documents using a handwritten signature (because once signed using a wet-ink, handwritten signature, a scanned copy of the signed document was, and remains, sufficient for recordal purposes), although the qualified electronic signature does offer a higher level of security and certainty given the face-to-face ID verification process to be undertaken by a Qualified Trust Service Provider.

As an aside, the EPO still requires that any assignment or licence include the EP patent application or patent number or the relevant PCT number, the signature of all parties to the assignment/licence and if a document is signed on behalf of a company, the signing party must clearly be authorised.  Board level positions like CEO, President, or Managing Director are recognised for UK companies, or Company Secretary for US companies but any “Authorised Signatory” can sign if evidence is provided to show that they are authorised to bind the company.

The United States Patent and Trademark Office (USPTO) has also recently updated its position to list several more permitted electronic signature formats. However, the USPTO has long been one of the countries with more relaxed rules around the signatures on documents and has accepted scanned copies of wet ink signatures and also basic electronic signatures without any advanced authentication or ID verification or digital certificates. The USPTO also permits the use of electronic signature systems like DocuSign® or AdobeSign™ for signing of documents.

In the UK, the UK Intellectual Property Office (UKIPO) has also accepted scanned copies of wet ink signatures for many years.

Some commentary has hailed the change at the EPO to accept the use of electronic signatures, and whilst a good step forward has really only brought the EPO into line with other major IP Offices around the word such as the UKIPO and the USPTO.

So, whilst this change in practice at the EPO is welcome as it allows some form of remote signature of documents where wet ink signatures is not possible or impractical, it does not mean that electronic signature of documents will always be required nor is it necessarily the best solution.

As always, it is best to check with your Wilson Gunn patent attorney if you are unsure about how to sign a document.

Wilson Gunn