Article 22

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 9 February 2024 concerning revised Rule 22 EPC

1. On 14 December 2023, the Administrative Council of the European Patent Organisation adopted amendments to Rule 22 EPC, which relates to the registration of transfers of rights.1 The changes will enter into force on 1 April 2024.

2. The revised provision also applies to the registration of grants, transfers and cancellations of licences and other rights under Rules 23 and 24 EPC. It further applies mutatis mutandis to equivalent procedures relating to European patents with unitary effect.2

Acceptance of electronic signatures on contracts and declarations supporting requests under Rules 22 and 85 and under Rules 23 and 24 EPC

3. The first change concerns signatures on assignment contracts and on other contracts and declarations supporting requests under Rules 22 and 85 and under Rules 23 and 24 EPC. Under amended Rule 22(1) EPC in conjunction with Rule 2(2) EPC, the competence to decide on permitted signatures has been delegated to the President of the EPO. The decision on this will enter into force on 1 April 2024.3

4. With a view to simplifying its procedures and promoting digital transformation, the European Patent Office (EPO) will accept a broader range of electronic signatures on documents submitted as evidence to support requests under Rules 22 and 85 and under Rules 23 and 24 EPC. In line with the signature requirements in the patent grant process, the EPO will accept handwritten signatures, facsimile signatures and text string signatures within the meaning of Article 12(2) and (3) of the decision by the President of the European Patent Office dated 3 May 2023 concerning the electronic filing of documents.4 Documents bearing a facsimile signature or a text string signature may be filed either on paper or electronically using the EPO's electronic filing services.

5. In addition, the EPO will accept digital signatures that use Public Key Infrastructure (PKI) technology, including advanced and qualified electronic signatures within the meaning of the EU's eIDAS Regulation.5 It will also accept digital signatures that do not use PKI technology if the conditions specified in paragraph 6 below are met.

6. Where a digital signature is used, the documents in question can be accepted as sufficient evidence if they are filed electronically,6 are legible, are not infected with a computer virus and do not contain other malicious software. The EPO is not obliged to receive, open or process documents that do not meet these criteria.

7. As a rule, the EPO does not examine the authenticity of the signature applied to a document. However, where any doubts over its authenticity arise, the EPO will require clarification and may request further evidence.

Entitlement to sign

8. A further simplification applies for the registration processes under Rules 22 and 85 and under Rules 23 and 24 EPC. The EPO has changed its practice concerning examination of an individual's entitlement to sign on behalf of a legal person as far as documents submitted in support of requests under Rules 22 and 85 and under Rules 23 and 24 EPC are concerned. Where a person is entitled to sign by virtue of their position within the legal person, this position needs to be expressly indicated. However, the entitlement will no longer be checked by the EPO.7

Abolition of the administrative fee where the request is filed via MyEPO Portfolio

9. The second change relates to the administrative fee due for the registration of a transfer of rights. Under revised Rule 22(2) EPC, the competence to decide when an administrative fee is due has been delegated to the President of the EPO.

10. In line with the EPO's commitment to digital transformation and sustainability, it will be possible to file requests for registration of transfers of rights, licences and other rights via MyEPO Portfolio as of 1 April 2024. No administrative fee will be due where a request for registration under Rules 22 and 85 or under Rules 23 and 24 EPC is filed via MyEPO Portfolio.8 Where the request is filed via other means, the administrative fee remains due. In the latter case, the request is not deemed to have been filed until the administrative fee has been paid.

Previous notice superseded

11. As of 1 April 2024, the notice from the European Patent Office dated 22 October 2021 concerning electronic signatures on documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC and requests for registration of a licence or other rights under Rule 23 EPC⁹ will cease to have effect.