Volume 51, Issue 2
Signing Documents Electronically
In the age of COVID-19 and social distancing, working from home with no access to a printer and scanner (one that actually works anyway) is the new norm for many. Therefore, a practical question is, how can certain documents be signed and returned for filing, without risking rejection by the USPTO? For example, can programs like DocuSign be used to sign an Inventor Declaration? The answer is yes, but only when the signature is in the proper S-signature form, or a “graphical representation” of a signature. However, it is uncertain if such electronic signatures will satisfy all legal requirements for assignments in all jurisdictions, especially outside the U.S. Thus, they should be used with caution for assignments, if at all. The USPTO accepts three forms of signature: (a) handwritten signature, (b) S-signature, and (c) a graphic representation of (a) or (b). See 37 C.F.R. § 1.4(d)-(f). Handwritten signature is the default, universally accepted signature form for all USPTO correspondence, while S-signature and graphic representation are broad exceptions accepted for most routine filings. Handwritten signatures come in two flavors: original and copy. An original handwritten signature must be “personally signed, in permanent dark ink or its equivalent,” by that person signing the document. A copy of the original can be a direct copy or an indirect copy, such as a photocopy or a fax transmission. In certain rare, formal instances, an original handwritten signature, not even a copy thereof, is the only form of acceptable signature. These include: registration to practice before the Patent and Trademark Office in patent cases, disciplinary investigations and proceedings (1.4(e)(1)), paying by credit card without using Electronic Filing System (“EFS”) submission (1.4(e)(2)), and signing a document statutorily required to be certified (1.4(f)). In March, 2020, however, the USPTO announced that it considered COVID-19 an “extraordinary situation” under 37 C.F.R. 1.183, and thus, until further notice, the USPTO is sua sponte waiving the requirements of 37 C.F.R. 1.4(e)(1) and (2) for an original handwritten signature. It currently accepts other forms of signature for these filings, including copy of a handwritten signature and S-signature. 85 FR 17502, Mar. 30, 2020. Note that a signature written by hand, using a finger or a stylus, on the surface of a touch screen probably does not qualify as such a “handwritten signature,” even though it is technically “handwritten.” Why? Because it is not signed in “permanent dark ink or its equivalent.” Arguably, “equivalent” here is vague, but it is unlikely that one can submit an iPad or DocuSigned signature for one of the few formal situations in §1.4(e) and (f) without an “extraordinary situation” such as COVID-19. Fortunately, most other documents can be signed with an S-signature or graphic representation. These two forms are most useful for signing documents electronically while working from home. An S-signature is simply a signature inserted between two forward slash marks, and is by definition not a “handwritten signature.” If John Smith types “/John Smith/” in a Word document, it is an S-signature. If he instead writes “/John Smith/” on a piece of paper using permanent dark ink, it is an original handwritten signature, and therefore not an S-signature. S-signatures may include any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature. It also needs to have the signer’s name presented in printed or typed form preferably immediately below or adjacent the S-signature (1.4(d)(2)). S-signature can be used for filing in paper, fax, or via EFS, in patent application, patent, reexamination, or supplemental examination proceedings (1.4(d)(2)). It can also be used for signing the cover sheet of an electronically filed assignment (3.31(a)(7)(i)). Therefore, if the client inserts the signature between two forward slash marks on iPad or DocuSign on top of his or her printed name in the signature block, a valid S-signature has been used to sign the document. However, the same signature without the forward slash marks is not a valid S-signature (and also not a valid handwritten signature). By the way, a registered practitioner must also supply the registration number, either as part of the S-signature (e.g., inserting it between the forward slash marks, after the name), or immediately below or adjacent to the S-signature. The unique perk for a registered practitioner is that the “#” sign can be used in the S-signature before his or her Reg. Number. Meanwhile, a non-practitioner is not allowed to use the “#” sign as part of the S-signature. There is no definition for “a graphic representation” of a handwritten signature or an S-signature, and it is not entirely clear as to the difference between “a copy of the handwritten signature” and “a graphic representation of a handwritten signature.” It is possible that a copy is of the same size, while a graphic representation can be electronically enlarged or shrunk. For example, a handwritten signature can be captured as an electronic image, digitally compressed and/or shrunk, saved and imported into a PDF application for use in electronic signing. Regardless, the USPTO approves the use of such graphic representation for documents to be submitted through the EFS. Therefore, the graphic representation can be as useful as the S-signature for EFS filing, if one knows how to create the image and apply it to the document. Signing assignments is a bit more complicated, partly because it is usually not executed solely for the assignment of U.S. rights. Under the U.S. law, 35 U.S.C. §261 explicitly requires the patent assignments be “in writing.”. So far, forty-seven states (excluding New York, Illinois, and Washington), plus the District of Columbia, and the U.S. Virgin Islands have adopted the Uniform Electronic Transactions Act (“UETA”), which harmonizes state laws regarding the validity of electronic signatures. New York, Illinois, and Washington have adopted UETA-like provisions to allow for the transfer of patent rights using a compliant electronic signature. Detailed provisions for complying with the electronic signature requirements of the UETA and similar state laws are beyond the scope of this article. In summary, if a working printer or scanner is not readily available at home, most patent prosecution, reexamination, and supplemental examination documents to be filed with the USPTO can be validly and easily signed using either an S-signature, or a graphic representation (if submitted through EFS). Only in limited and very rare formal circumstances will an original handwritten signature be required under normal circumstances. As such, even when using a program like DocuSign, don’t forget your slashes. Meanwhile, S-signature and graphic representation should be used with caution, if at all, when executing assignments.
2020 Ⓒ Boston Patent Law Association
Message from the President Michael Bergman
Message from the Editor-in-Chief
Recap of the BPLA Webinar with USPTO Director Iancu
Lessons on Inherency Challenges After Hospira v. Fresenius Kabi USA
PTAB Launches the Legal Experience and Advancement Program (LEAP) for the Next Generation of Patent Practitioners
Signing Documents Electronically
The Case Law Club’s Virtual Discussion of Hulu v. Sound View Innovations
In Memoriam Q. Todd Dickinson
The Supreme Court Upends the First Circuit’s Approach to Recovery of Defendant’s Profits Under the Lanham Act
United States Patent Office Finds Artificial Intelligence System Cannot Be An Inventor
The Pirates of Precedence, or How a Modest Copyright Case Could Affect Controversial Supreme Court Cases
Diversity Committee Meeting
BPLA Legislative Committee Holds Discussion on COVID-19 IP and Legislative Issues
Community Calendar
Officers and Board of Governors
In-House Committee Activities
Welcome Foreign Associates
Job Listings