Brief outline of the case
The Legal Division rejected the applicant’s request for the transfer of the application from Gyrus ACMI Inc. to Olympus Medical Systems Corporation to be recorded in the European Patent Register.
The applicant appealed this decision
The appeal was dismissed.
The case is interesting as it deals with what can be considered as a signature under Art 72.
The legal situation
According to Art 72, the assignment of a European patent application must be made in writing and requires “the signature of the parties to the contract“. Under R 22(1), the transfer of a European patent application is recorded in the European Patent Register on request and upon production of documents providing evidence of such transfer. Pursuant to R 22(3), a transfer has effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in R 22(1) have been produced.
The case in hand hinges on how the term “signature” in Art 72 is to be understood and, in particular, whether it encompasses electronic signatures in the form of “text string signatures” without any further qualification.
The board held that, when interpreting the provisions of the EPC, the principles of interpretation laid down in Articles 31 and 32 of the Vienna Convention on the Law of Treaties 1969 (VCLT) must be applied, cf. G 5/83, Reasons 4; G 2/12, Reasons V.(3). The board also referred to G 3/14, Reasons 55.
The starting point of interpretation under Art 31 VCLT is the wording, i.e. the “objective” meaning of the term to be interpreted, regardless of the original “subjective” intention of the contracting parties, see G 3/19, Reasons XIV.2.
Definition of signature
The Board provided dictionary extracts by way of example only, as a first approximation for establishing the most common usage of the term “signature” in the context in which this term is used in Art 72, i.e. in the context of signing a contract. The board referred to the Cambridge English Online Dictionary and to the Merriam-Webster’s Online Dictionary.
For the board, in the given context of a contract the dictionary definitions refer to the term “signature” mostly – although not exclusively – as a handwritten depiction of someone’s name.
From the different linguistic versions of Art 72
The board also referred to the various versions in all three official languages of Art 72.
The signature requirement in Art 72 ensures that the assignment contract becomes clearly attributable to the signing parties when they put their names on the contract in a distinctive manner, thereby creating an objectively verifiable link between signature and signatory.
It also highlights the legal significance of the act, thereby helping to prevent approval due to a lack of attention. This is commensurate with the importance of this legal transaction, which “has the effect of making a patent application the property of another person”.
If one were to interpret the term “signature” in Art 72 as also including electronic signatures, the question immediately arises as to which kind of electronic signatures could qualify as a “signature” within the meaning of Art 72.
The possibilities include simple electronic signatures, such as the “text string signatures” referred to by the applicant, advanced electronic signatures which are uniquely linked to and capable of identifying the signatory, or qualified electronic signatures which are additionally based on a qualified certificate.
In this respect, the board referred Regulation (EU) No. 910/2014 of the European Parliament and of the Council of 23 July 2014 on electronic identification and trust services for electronic transactions in the internal market.
The board considered that it would be at odds with this rationale of Art 72 if – without any explicit legal basis – any type of text in electronic form referring to the name of a person were considered a “signature” within the meaning of Art 72. Moreover, such an interpretation would not ensure that a “signature” makes the assignment contract clearly attributable to the signing party.
The EPC as signed and the later amendments
At the Munich diplomatic conference 1973, not only the Articles but also the Implementing Regulations to the EPC 1973 were directly concluded between the Contracting States.
The legal situation is less clear with regard to subsequent amendments to the Implementing Regulations. In Art 33(1,c), the contracting states to the EPC empowered the Administrative Council, as an organ of the international organisation created by the EPC, to amend the Implementing Regulations.
Accordingly, none of the subsequent amendments to the original Implementing Regulations were concluded between the contracting states to the EPC themselves but were adopted by the Administrative Council. This is true for the entire Implementing Regulations to the EPC 2000.
Against this background, i.e. in the absence of a separate agreement among the contracting states on the Implementing Regulations to the EPC 2000 and the subsequent amendments to these, the question arises whether the current Implementing Regulations are also to be regarded as part of the “text” of the treaty within the meaning of Art 31(2) VCLT.
Rule 2(2) EPC is not applicable in the present instance
Generally speaking the Implementing Regulations must be taken into account when interpreting Art 72. Hence, the applicant’s reference to R 2(2) – which in the applicant’s opinion provides meaningful context for the interpretation of Art 72 – cannot be disregarded from the outset.
For the board, R 2(2) does not have any impact on the interpretation of the term “signature” in Art 72.
The scope of application of R 2 in its entirety is limited to formal requirements for filing documents in proceedings before the EPO.
Formal requirements for filing documents in proceedings before the EPO concern a relationship between the EPO, a public authority, and a party to proceedings before the EPO, which is usually a private party.
Art 72, on the other hand, regulates formal requirements for assignment contracts. This usually concerns a relationship between two or more private parties.
Hence, R 2 and Art 72 regulate entirely different matters.
R 2 cannot be regarded as a provision implementing Art 72. Moreover, the mere fact that R 2 is part of the general provisions in Chapter I of the Implementing Regulations, as argued by the applicant, does not lead to an extension of its scope of application – which is clearly delimited in R 2 itself.
The applicant also invoked the “Decision of the President of the EPO dated 14 May 2021 concerning the electronic filing of documents” (OJ EPO 2021, A42), which is based on R 2. However, contrary to the applicant’s assertion, this decision does not provide meaningful context for the interpretation of Art 72 EPC either.
For the board, R 2(2), second sentence, does not empower the President of the EPO to specify what qualifies as a signature under Art 72 EPC.
The board concluded thus that, in the absence of a different definition in the Implementing Regulations, the term “signature” in Art 72 must be understood as referring to a handwritten depiction of someone’s name.
The distinction made by the board between electronic signatures in dealings with the EPO, allowable under R 2(2) and signatures in the meaning of Art 72, which can only be handwritten, is interesting and understandable.
It remains to be seen, whether in view of the progressing digitisation of the world, this distinction can be upheld.
On the other hand, the day when contracts signed in presence of a notary public will allow electronic signatures appears rather in the distant future. This will be first a question for national legislators in the EPC Contracting States, before it will concern the EPO. And for contracts between parties outside the EPC Contracting States, this day might never come.