ukipo patent assignment form

UK: The Basics Of Patent Law - Assignment And Licensing

Gowling WLG's intellectual property experts explain assignment and licensing in a series of articles titled 'The basics of patent law'.

The articles cover, respectively: Types of intellectual property protection for inventions and granting procedure ; Initiating proceedings ; Infringement and related actions ; Revocation, non-infringement and clearing the way ; Trial, appeal and settlement ; Remedies and costs ; Assignment and Licensing and the Unified Patent Court and Unitary Patent system.

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017 , for which Gordon Harris and Ailsa Carter wrote the UK chapter .

Introduction

Any patent, patent application or any right in a patent or patent application may be assigned (Patents Act 1977 (also referred to as "PA") s.30(2)) and licences and sub-licences may be granted under any patent or any patent application (PA s.30(4)).

The key difference between an assignment and a licence is that an assignment is a transfer of ownership and title, whereas a licence is a contractual right to do something that would otherwise be an infringement of the relevant patent rights. Following an assignment, the assignor generally has no further rights in relation to the relevant patent rights. On the granting of a licence, the licensor retains ownership of the licensed rights and generally has some continuing obligations and rights in relation to them (as set out in the relevant licence).

Formalities

Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31). With regards the assignment of a European patent application however, such assignment must be in writing and signed not just by the assignor but by both parties to the contract (Article 72 EPC).

There is no particular statutory provision regarding the form of a licence or sub-licence (exclusive or otherwise). However, in view of the advisability of registration (discussed below) and legal certainty, it is sensible that any licence be in writing. In addition, normal contractual formalities apply, such as intention to create legal relations, consideration and certainty of terms, etc.

Registration

Registration (with the UKIPO) of an assignment or licence is not mandatory. However, if the registered proprietor or licensor enters into a later, inconsistent transaction, the person claiming under the later transaction shall be entitled to the property if the earlier transaction was not registered (PA s.33). Registration is therefore advisable. Failure to register an assignment or an exclusive licence within six months will also impact the ability of a party to litigation to claim costs and expenses (PA s.68) and might, potentially, enable an infringer to defend a claim for monetary relief on the basis of innocent infringement (PA s.62).

The procedure for registration is governed by the Patents Rules 2007. The application should be made on the appropriate form, should include evidence establishing the transaction, instrument or event, and should be signed by or on behalf of the assignor or licensor. Documents containing an agreement should be complete and of such a nature that they could be enforced. A translation must be supplied for any documentary evidence not in English.

In practice (particularly in the context of a larger corporate transaction in which many different asset classes are being transferred, not just intellectual property), parties sometimes agree short form documents evidencing the transfer of the relevant patent rights and will submit these for registration. This can enable parties to save submitting full documents for the whole transaction, which may include sensitive commercial information that is not relevant to the transfer of the patent rights themselves.

Types of licence

A licensee may take a non-exclusive or exclusive licence from the licensor. The distinction between such licences is both legally and commercially significant.

On a basic level an exclusive licence means that no other person or company can exploit the rights under the patent and this means the licensor is also excluded from exploiting such rights. Exclusivity may be total or divided up by reference to, for example, territory, field of technology, channel, or product type. The extent of exclusivity generally goes to the value of the rights being licensed and will feed into the agreed financials. It is worth noting that the term "exclusive licence" does not have a statutory definition under English law, so it is very important to define the contractual scope of exclusivity in the relevant licence agreement.

In the event a licensor wants to retain the ability to exploit the rights in some way (for example an academic licensor may want the ability to continue research activities) then appropriate carve outs from the exclusivity should be expressly stated in the licence agreement.

A non-exclusive licensee has the right to exploit rights within the patent as determined by the licence agreement. However, the licensor may also exploit such rights as well as granting multiple other licences to third parties (which may include competitors of the original licensee).

Much less common is a sole licence, by which the patent proprietor agrees not to grant any other licences but gives the licensee the right to use the technology and may also still operate the licenced technology itself.

Compulsory licences

A compulsory licence provides for an individual or company to seek a licence to use another's patent rights without seeking the proprietor's consent. Compulsory licences under patents may be granted in circumstances where there has been an abuse of monopoly rights, but are very rarely granted in the UK.

An application for a compulsory licence can be made by any person (even a current licensee of the patent) to the Comptroller of Patents at any time after three years from the date of grant of the patent. In respect of a patent whose proprietor is a national of, or is domiciled in, or which has a real and effective industrial or commercial establishment in, a country which is a member of the World Trade Organisation, the applicant must establish one of the three specified grounds for relief. If satisfied, the Comptroller has discretion as to whether a licence is granted and if so upon what terms. The grounds are:

• demand for a patented product in the UK is not being met on reasonable terms;
• the exploitation in the UK of another patented invention that represents an important technical advance of considerable economic significance in relation to the invention claimed in the patentee's patent is prevented or hindered provided that the Comptroller is satisfied that the patent proprietor for the other invention is able and willing to grant the patent proprietor and his licensees a licence under the patent for the other invention on reasonable terms;
• the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
• by conditions imposed by the patentee, unpatented activities are unfairly prejudiced.

The terms of the licence shall be decided by the Comptroller but are subject to certain restrictions on what type of licence can be granted, namely the licence: cannot be exclusive; can only be assigned to someone who has been assigned the part of the applicant's business that enjoys use of the patented invention; will be for supply to the UK market; will include conditions allowing the patentee to adequate remuneration; and must be limited in scope and duration to the purpose for which the licence is granted.

Infringement

The type of licence is also significant when it comes to tackling infringement. Under statute, an exclusive licensee has the same right as the proprietor of a patent to bring proceedings with respect infringement committed after the date of the licence and such proceedings may be brought in the licensee's name (PA 67(1)). An exclusive licensee of a patent application may also bring proceedings in its own name (PA ss. 67(1) & 69). In practice, however, these statutory provisions are often excluded or varied by parties negotiating complex licensing transactions. A licensee may also have a right under a licence to bring proceedings for an infringement occurring before the licence came into effect.

A non-exclusive licensee does not have any right under statute to bring proceedings in its own name. However, this could be negotiated into a licence agreement, though it may be difficult for a licensor to agree this point if it has multiple non-exclusive licensees.

Effect of non-registration on infringement proceedings

There is no requirement that a licence must be registered before proceedings can be commenced by an exclusive licensee. However, non-registration can affect a licensee's ability to recover its costs in relation to such proceedings.

Implied terms

Established rules of construction apply to assignment and licence agreements. Parties should ensure that important terms are included as express terms. There is no implied warranty that any assigned or licensed patent will be valid, or that an assignee or licensee will work the invention (for example, that they will exploit the rights and manufacture products). In certain very limited circumstances a court will order 'rectification' of an assignment or licence agreement, namely a court will order a change in the assignment or licence agreement to reflect what the agreement ought to have said in the first place. Regardless of this, all key terms should be included expressly in all assignment and licence agreements.

Termination of licences

Except where there is express contractual provision or where a licence has been wrongly terminated and damages sought, under English law there is no compensation payable to licensees on termination of a licencing agreement. The licence agreement should be clear as to what circumstances may give rise to termination, for example the non-payment of royalties, material breach or insolvency. The agreement should also make clear what happens in the event of termination in relation to, for example, existing stock of licensed products or work in progress.

Next in our 'The basics of patent law' series, we will be discussing the Unified Patent Court and Unitary Patent system.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Assigning intellectual property rights (IPRs)

• Categories: Patent Infringement , United Kingdom
• April 16, 2020

Once a business or individual has successfully secured intellectual property rights, they are in a position to transfer or sell those rights. In order to effectively transfer the ownership of the various types of IPRs, a contractual assignment must first be put in place.

An intellectual property assignment is the transfer of an owner’s rights, title and interest in a specific type of intellectual property. In some ways similar to tangible property, under an assignment agreement, the transferring party (‘assignor’) will transfer their ownership rights to a third party (‘assignee’). Generally, the three main types of IPRs transferred in these type of agreements are trade marks, copyrights and patents.

Regarding trade marks, a trade mark assignment is a transfer of ownership of a trade mark from one party to another. A trade mark assignment must be in writing and signed and dated by or on behalf of the assignor. In order to complete the transfer successfully, the United Kingdom Intellectual Property Office (UKIPO) must be notified by way of a TM16 form accompanied by the assignment and payment of relevant fees (£50 for form TM16 only). Once the UKIPO receives the required documentation, a new trade mark certificate will not be issued to the new proprietor of the mark  however, the change of ownership details will be updated on the official register.

With regards to copyrights, as this type of IP is regarded as an ‘unregistered right’, it is of upmost importance to ensure the record of a transfer is documented in writing. Unlike a trade mark assignment which details the trade marks being transferred, a copyright assignment will detail a list of works (or future works) that are being transferred, for example,  the designs of a product. A copyright can be assigned in whole or partially. For example, the owner of the copyright could assign the right to copy the written works to one writer, and assign the right to make translations of the work to another writer.

As for patents and similarly to trade marks, a patent assignment requires for the assignor to transfer the ownership of the patent to the assignee by way of a signed written assignment. With patent assignments, the UKIPO needs to be formally notified of the transfer within six months as failing to do so could potentially limit the proprietor’s chances of being awarded costs in a subsequent infringement action. Recording an assignment will also put other third parties on notice that one has an interest in a patent. Drafting a patent assignment is of fundamental importance to ensure the proper transfer of ownership.

Whether trade marks, copyrights or patents, an assignment should be drafted bespoke to suit you or your businesses needs and desired outcomes. Lawdit can assist you in ensuring the transfer of your IP is a smooth process.

If you would like any further information on assigning your intellectual property, contact us today.

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Requirements for Filing a Patent Application

25 March 2010

The requirements for filing a patent application are illustrated in this article with reference to the filing of a patent application in the United Kingdom (UK).

What do I need to file a patent application?

If you want to obtain patent protection for an invention in the UK, you can file a patent application at the United Kingdom Intellectual Property Office (UKIPO). Your application will consist of:

• A request for the grant of a patent: the UKIPO publishes a special form for the request (Patents Form 1), use of which ensures that the proper information is provided. This includes the name and address of the patent applicant, who may be a company or an individual. Applications can be jointly filed in two or more names.
• A specification: this is a document describing your invention. It includes a written description, claims and possibly drawings. Preparing a specification which will give you a robust granted patent is a skilled task, so applicants typically employ a patent attorney for this.

How should my application be drafted? Should the application include examples of my invention?

The written description of your invention should be sufficiently clear, complete and detailed to enable a person skilled in the relevant technical field to work the invention. If there are different variants and examples of the invention, these should be described. The description usually begins with a summary of what is already known in the technical area of the invention, followed by the description of the invention and the advantages it offers or problems it solves. You also need a title which indicates the subject matter of the invention, and an abstract, which is a brief summary of the invention. If you keep the description concise, this will reduce costs for translating the application if it is later filed abroad. You can use English or Welsh for the description for filing at the UKIPO. If you need to use another language, the UKIPO will ask for a translation into English or Welsh.

What are claims?

The claims are a set of statements which follow the description, and define the protection you want for your invention. There should be an “independent” claim, which sets out the combination of features that defines the invention in its broadest form and distinguishes the invention from what is already known. The independent claim can be followed by “dependent” claims, which include all the features of the independent claim, plus one or more extra features. Independent claims in different categories of invention (apparatus, product, substance, method, process, etc.) can be included in one application. However, within one application, the claims should relate to just one invention or inventive concept.

Do I need drawings or figures in my patent application?

Drawings can be used to supplement the description if appropriate. These might include line drawings, representative figures and cross-sectional diagrams of products, devices and apparatus, flow charts of methods and computer programs, graphs, diagrams of chemical structures, and the like. Parts shown in figures are typically labelled with reference characters which are used in the description when referring to those parts. The drawings should be grouped together after the claims, and the description should include a list of the individual figures.

Is there a fee for filing a patent application?

The UKIPO charges a small application fee. This can be paid when the application is filed, or later. The fee does not need to be paid to obtain a filing date for the application. Further fees are payable for the application to be searched and examined, but these can also be paid after filing.

Must I disclose who invented my invention?

It is a legal requirement to identify the inventor(s) of the invention described in a patent application. The UKIPO publishes a form for this (Patents Form 7).

Are biological deposits required for biological inventions?

The patent application must disclose the invention in sufficient detail for a person skilled in the relevant technical field to carry out that claimed invention. If an invention involves the use of or concerns biological material which is not available to the public the invention shall only be regarded as being disclosed if a sample of the biological material has been deposited with a recognised depositary institution.

Where and how should biological deposits be submitted?

The biological sample must be submitted to a depositary institution which carries out the function of receiving, storing and furnishing biological material. Using a depository institution recognised under the Budapest Treaty eliminates the need to make a deposit in each country in which patent protection is sought. A list of such depository institutions can be found here .

Are nucleotide/amino acid sequences required in the patent application?

A patent application relating to a polynucleotide or polypeptide should contain the sequence of the polynucleotide or polypeptide in the specification.

How should nucleotide and amino acid sequences be submitted?

Nucleotide and amino acids sequences must be listed in a sequence listing which complies with the requirements and standards adopted under the Patent Cooperation Treaty for the presentation of sequence listings in patent applications. A further copy of the sequence listing in electronic form is required.

Do I need a patent attorney to file my patent application?

No. Applicants can file their own applications at the UKIPO. However, you can appoint a patent attorney to represent you if you wish. The attorney can file the application on your behalf, or you can appoint one later.

How do I file my application?

The UKIPO accepts applications filed on paper or digital media and delivered by mail, facsimile or by hand to its premises in Newport (Wales) or London. You can also file on-line through the UKIPO’s website. Electronic filing using special software is available for registered users. The forms, details of current fees, and instructions for filing applications can be found at the UKIPO’s website .

Can I file my application abroad?

For a UK resident, if the invention contains information relating to matter that is related to matters of defence or national security, a first application must be filed at the UKIPO. Other national requirements can apply for inventions made in countries or for inventors or applicants resident in other countries.

Subject to the considerations as to where a first application must be filed, a patent application can be filed at patent offices around the world to obtain patent protection in other countries. The European Patent Office accepts applications which can cover over 30 European countries. The World Intellectual Property Organisation administers the Patent Cooperation Treaty, which streamlines the initial application process for many countries. In both cases, the requirements for a patent application are very similar to those for the UK. However, the filing, search and examination fees are much higher, reflecting the larger number of countries involved.

Filing an application directly with a national patent office is also possible, to obtain patent protection in that country only. Requirements for new applications vary according to local law. D Young & Co can prepare a single specification that is suitable for use in many countries, subject to any translation requirements.

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Patent Prosecution Matters

Recording assignments at patent offices, importance of recording assignments at patent offices.

Patents and patent applications are a form of intellectual property – this allows them to be owned and transferred between parties, just like other forms of property.

Patent offices around the world, including the United Kingdom Intellectual Property Office (UKIPO) and the European Patent Office (EPO), maintain a register of patents (and patent applications) and their respective owners. When a patent or patent application is assigned to a new owner, the named proprietor on the register can be updated by filing a request with the relevant patent office. It is also possible to record other patent-related transactions, such as mortgages or licences.

Why is it important to record an assignment at the Patent Office?

It is recommended to record an assignment as soon as possible, as there may be negative consequences of delaying doing so. For example, although there is no statutory requirement to record an assignment against a UK patent, if an assignment is not recorded within six months then the assignee may not be able to claim costs or expenses in infringement proceeding for an infringement that occurred before the assignment was recorded.

It is also beneficial to record any assignments of European patent applications at the EPO. This is because, once granted, a European patent is validated as separate national patents. Recording a single assignment for one application in the European phase is therefore much cheaper and more efficient than doing so in multiple patent offices after grant.

Depending on the jurisdiction, there may be a requirement to record of an assignment against foreign patents and/or patent applications.

What is required to record an assignment?

Requirements for recording an assignment vary by jurisdiction, but in general a form needs to be filed giving details of the assignee, together with payment of a fee. Evidence of the transfer may also be required, such as a copy of a signed assignment document. It may be necessary to indicate the authority of the signatory on the assignment, by stating the signatory’s job title (e.g. director).

Is there anything else that I need to know?

It is important to note that the assignment of patents and patent applications may be subject to stamp duty in the UK. This will depend on the date of the transfer and whether any real property (e.g. land, buildings, etc.) or any stocks or shares in a business entity were transferred together with the IP. When recording the assignment at the UKIPO you will need to indicate either that stamp duty is not payable, or that all necessary stamp duty has been paid.

Jemma Jacobs

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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• Recordal of assignments UKIPO EUIPO and EPO Trade Marks

Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

* Update to this article now available here

The Covid-19 pandemic has challenged all our expectations of working life, with many of us in Europe now working remotely for at least the next few weeks/months.  This new way of working will have many knock-on effects, including needing to find work arounds and new approaches for tasks previously carried out in the office or in-person.

In this article we will: (i) clarify the position on digital execution of documents in the UK; (ii) examine the signature requirements for documents to be recorded at the UKIPO or EPO (i.e. when are “wet-ink” signatures required); and (iii) consider the options for obtaining notarised and/or legalised documents for recordals at IP offices (where this is required).

The majority of this article focusses on the position in the UK, but before we do that, a word on digital execution globally.  There is growing acceptance of e-signatures in many jurisdictions, but if you are executing IP assignments or other documents which need to be recorded globally, wet-ink signatures remain the most globally accepted method.  At present, you may wish or need take a dual approach – using e-signatures where you know they are valid and will be accepted, but for documents that need to be used/filed in multiple jurisdictions (where you don’t know if e-signatures will be accepted), using wet-ink signatures may be the safest option.

What is “digital execution”?

There are many different words which can be used to describe the digital execution of documents.  For the purposes of this article, the key distinction to be drawn is between “wet-ink” signatures (i.e. someone signing a physical document using a pen) and “electronic signatures” or “e-signatures” – this is an umbrella term covering all forms of signature by electronic means.

Digital execution in the UK

Case law in England has determined that e-signatures will be accepted in a wide range of situations.  This includes documents where there is a statutory requirement for them to be “signed” in order to be valid (such as in relation to the assignment of IP rights – see below for more on this).  Provided that the signatory inserts the electronic signature in the appropriate place in the document with the intention of authenticating it, the statutory requirement will be satisfied.

In addition, the English Courts have confirmed that an electronic signature has the same status as a wet-ink signature ( Golden Ocean Group Ltd v Salgaocar Mining Industries Pvt Ltd. [2012] EWCA Civ 265) and have accepted a variety of marks as valid signatures.  This includes signing with an “X” or signing with a mark (even where the party executing the mark can write), both of which are likely to be less specific and less certain than the use of an electronic signature.

The English law approach to e-signatures is summarised in the Law Commission’s 2019 report on electronic execution of documents.  The report details a series of propositions based on case law which together form the current legal framework for accepting e-signatures in England, Wales and Northern Ireland (note that the position in Scotland is different).

Assignments of Intellectual Property Rights: Patents, Copyright, Trade Marks, Registered Designs

Under English law, a valid assignment of UK patents, copyright, trade marks (UK and EU) and all forms of design right (UK registered and unregistered and EU registered and unregistered) must be in writing, which may be an electronic document, and be signed by or on behalf of at least the assignor (an assignment of an EU trade mark generally also needs to be signed by the assignee).  Signatures may be in writing (i.e. wet-ink) or an electronic signature.

However, there is one significant exception to the acceptability of e-signatures on IP assignments: assignments of European Patent applications (in our experience, the EPO will not accept assignments where the signatures are e-signatures).

Simple contracts (e.g. NDAs or employment contracts)

A simple contract is an agreement between two or more parties where there is an accepted offer (for example for exchange of goods or services), consideration and an intention to create legal relations.  In practice, this includes most commonly encountered contracts, including non-disclosure agreements and employment contracts.

Under English law, execution of a simple contract by a company or a limited liability partnership must be in accordance with the provisions of the UK Companies Acts and the parties’ own internal rules.  Whilst the use of e-signatures on simple contracts is not prevented by the Companies Acts, the parties may have internal rules which do (in addition to issues such who can sign and if more than one signature is required for a valid execution).  Accordingly, before agreeing to execute a simple contract by e-signature, it would be prudent to confirm that it’s allowed under the signatory’s internal rules on document execution.

Powers of Attorney

IP owners will frequently need to grant powers of attorney in order to authorise third parties to act for them.  We also often see (and use) “further assurance” clauses in IP assignments.  The purpose of a further assurance clause is to ensure that the assignor will sign any further documents and do any further acts as may be required for the assignment to be completed – for example, assisting with any project to record the change of owner owner on IP registers.  Many further assurance clauses also qualify as a power of attorney.

Where the IP owner is a UK company, any power of attorney granted by the company must satisfy the requirements of the Powers of Attorney Act 1971 in order to be valid.  This Act requires that powers of attorney are executed as deeds.  Under English law, the execution formalities required for deeds are more stringent than those required for simple contracts.  These requirements will vary depending on the party executing (e.g. an individual, company, limited partnership), but generally there is a requirement for a deed to be “ signed in the presence of a witness ”.

Whether the signature is applied using “wet-ink” or electronically, the witness must be in the same room as the signatory – it is not possible for a signature to be witnessed virtually, for example, via video call.

Accordingly, if you are executing powers of attorney and English law applies, you will need to execute the document as a deed and ensure that a third party is available (in person) to witness the signature.

Recordal of documents at the UK Intellectual Property Office (UKIPO) European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO)  

Electronic signatures are a valid form of execution of IP assignments under English law.  As a result, they can be used in documentation which is submitted to the UKIPO to record transfers of ownership against the UK IP registers for patents, trade marks and designs.

It is worth noting that where the recordal of a transfer is requested either by the registered IP proprietor or their recorded agent, it will not usually be necessary to file a copy of the transfer document at the UKIPO.  This does not change the position in relation to the underlying validity of the assignment documents, but it can help smooth the recordal process in cases where the underlying documents contain confidential material or the parties would prefer not to file them with the UKIPO.   

As set out above, our experience is that electronic signatures are not accepted by the EPO except in the context of using EPOline to file documents electronically.  Specifically, they are not an accepted form of execution on assignments or powers of attorney filed at the EPO.

However, there are few other requirements for assignments of European Patent (EP) applications.  For example, there is no requirement that they be witnessed or notarised.  If you do need to record assignments of EP applications, the recordal is carried out electronically – by submitting scanned copies of assignments.   Typically, a party’s EPO representative will record the assignment at the EPO by filing a request letter, a copy of the assignment and paying the relevant fee.  Although digital signatures are not permitted, no originals are required and the parties may sign in counterparts.  This ability to use scanned counterparts may be of assistance at the moment when many of us are working remotely and obtaining original signed documents may be difficult.  The signed originals should, however, be retained in case required for evidential purposes in the future.

The EPO’s other requirements about the authority of the individuals executing the assignments and their ability to bind the parties continue to apply.  If you need further guidance on this, please refer to our previous article .

Assignments of EUTMs or Community Designs executed via e-signature are acceptable at the EUIPO.  The EUIPO does not consider whether an assignment is valid when registering it – it merely looks to see if the transfer document matches with the assignment provided, i.e. are the registered proprietor and assignee identical and is the trade mark correctly identified.

In order to ensure that the underlying assignment is valid, parties are advised to include a governing law clause specifying that the assignment is governed by a national law which permits e-signature (e.g. the law of England).

Notarisation and Legalisation

“Notarisation” generally refers to one of two things: (i) a notary witnessing a signature, i.e. a party executing a document in the presence of a notary to which the notary affixes a notarial attestation that the party executed the document in their presence (and may include confirmation that the individual signatory was authorised to bind the party); or (ii) a notary providing a copy of an original document which is certified by the notary to be a true copy of the original document.

There is rarely a requirement under English law, or for recordal at the UKIPO, for a document to be executed in the presence of a notary or for notarised copies of documents to be provided.  Specifically, this is not required for any document mentioned in this article (i.e. assignments of IP, powers of attorney, simple contracts).  However, many IP offices around the world will not accept agreements/assignments filed for recordal purposes unless the signatures have been witnessed by a notary and/or notarised copies of the originals have been provided.

Applying the general English law approach to witnessing of documents set out above, it will not be acceptable for notaries to witness the execution of documents unless they are in the same location as the signatory.  Accordingly, it will be difficult to comply with these formalities during the current pandemic whilst parties are practising social distancing.  In our experience, however, there are only a handful of countries in Europe which require this type of notarisation.  If you receive a request for this type of notarisation, please let us know and we will enquire with our local agents.  It is possible that IP offices will relax their usual requirements under the current circumstances.

We expect that it will remain possible for parties to obtain certified true copies of documents from notaries for the foreseeable future.  That depends, however, on the ability of the parties to obtain and courier original wet-ink signed documents to notaries so that the copies can be made.

There are software programs aimed at offering e-notarisation as a way to enable notaries to have an equivalent to e-signature.  However this is not universally accepted.  If you are considering this option, it is important to consider the local requirements in the country in which the documents will be used – we can work with you and our notary contacts to advise on whether e-notarisation is a possibility for the recipient jurisdiction.

Turning to “legalisation” (the process of authenticating or certifying a document so it will be recognised has having legal effect in the country where it is being used), certain IP registries won’t accept documents unless they have been legalised.  The UK Government’s legalisation service has been suspended during the current pandemic except for “exceptional” documents.  There is no guidance as yet in relation to what “exceptional” documents are, but we would not expect it to include assignments of IP or powers of attorney where they need to be legalised.  This may well be the case in other countries.

Where legalisation is not possible, other options may be available.  For example, some countries will accept a secure notarial seal instead.  Again, caution is recommended here as this will very much depend on the requirements of the destination country.  A further option where the relevant document has been notarised but there is difficulty in obtaining legalisation in time to meet an upcoming IP office deadline, is to email the local agent a scanned copy of the existing notarised document.  This can be filed at the IP office to try and ensure that the deadline is met, at the same time explaining to the office that the hard copy legalised document (bearing the original notarisation and legalisation) will follow by courier as soon as the legalisation formalities are completed, and explaining as necessary the particular issue holding up the legalisation step. From experience, this approach of filing just notarised documents has worked in the past at certain IP offices as a necessary “place holder”. In the current climate even more so, one would imagine that this approach would be acceptable – it should in any case be discussed with the local agent.

If getting documents legalised is something that you are currently working through, we can help by bringing together knowledge from our Transactions team, notaries and local agents to try and find a practical solution.

Practical steps

Documents executed by e-signatures are generally acceptable for use in the UK.  The most significant difficulty we have in using e-signed documents is at the EPO in relation to European Patent applications.  That said, given that only scanned documents need to be filed at the EPO, we would hope that parties will still be able to obtain the necessary signed documentation – even if that means downloading a scanning app!

Here’s a checklist which may be helpful when determining whether to use an electronic signature:

• Are they acceptable under the law governing the agreement?
• If no governing law is specified – are electronic signatures valid under the law of the countries in which the parties are located?
• Is the document a deed or are witnesses for the signatures otherwise required? If so, are there witnesses available who are physically present with the signatories?
• Where the agreement is intended to transfer IP rights – are digital signatures accepted by the IP registry at which the agreement will be recorded?
• Will notarisation and/or legalisation be required? If so consider the countries for which this will be required prior to execution and seek advice from local agents as to the best way to comply with local requirements.

As a final note, the mass remote working event caused by Covid-19 is causing all of us to re-think what we do and how we do it.  We would expect IP offices and governments to continue to review the situation, including acceptance of e-signed documents, over the coming weeks and months.  We will keep you updated on key developments for the UK and Europe as matters progress.  If you do have any specific questions for us, please let us know.

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice.

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