Ongoing Pandemic Highlights Importance of S-Signatures

Disruption to travel, mail, and in-person meetings caused by the ongoing COVID-19 pandemic has made acquiring signatures problematic and the need for inventor signatures has created a direct impact on the patent procedures for many companies.   To mitigate these issues, it is increasingly important for applicants and their counsel to understand the United States Patent Office’s acceptance of electronic signatures.  Pursuant to 37 C.F.R. § 1.4(e), electronic signatures are acceptable for all submissions to the USPTO except correspondence relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and payments by credit cards where the payment is not made by the electronic filing system.  Electronic signatures have been used regularly by U.S. attorneys for patent filings since their acceptance began in 2004.

Electronic signatures may also be used for documents including inventor declarations and powers of attorney. This can greatly facilitate obtaining signatures in a remote workforce. However, it is important to note that the relevant inventor or employee must affix his or her own signature to the document, regardless of whether that signature is electronic or handwritten.  The proper method for electronic signatures is referred to as the “S-Signature,” which requires the inventor to place his or her name in between a pair of forward slashes (Ex: “/John Smith/”) on the signature line.  While the signing individual must apply their own signature (type their name) to the document, the slash marks do not have to be entered by the signing party.  For example, the slashes may be pre-inserted in a document before it is sent to an inventor for signature.  This may further increase efficiency and ensure proper application of the signature.

While the USPTO accepts electronic signatures, if the signature were to become the subject of a contentious matter, there is little evidence of who signed and when they signed the document.  The evidence is often limited to the e-mail exchange in which the signed document was attached.  However, certain signature services may be used to verify the authenticity electronic signatures.  It is important to note that the signatures must still include the slashes.  Pre-inserting the slashes or building them into a signature workflow may also be done when using a signature service, which can make the process more efficient for the signing party and reduce the chance of improper signature application.

For applicants and patent owners with international concerns, it is important to consider the rules of all applicable jurisdictions.  Notably, the U.S. and Patent Cooperation Treaty (PCT) have enacted rules regarding the acceptance of electronic signatures in the form of S-Signatures.  However, some countries may require handwritten signatures or enhanced electronic signature procedures.

Assignments, licenses, and other grants carry additional considerations globally and even within the U.S. because the validity of such grants is generally interpreted according to the controlling law, which may be state law.  There is no universal rule indicating what type of electronic signatures will be sufficient in court.  In the United States, the Electronic Signatures in Global and National Commerce (ESIGN) Act in 2000 made electronic signatures legal in every state and U.S. territory when federal law applies.  All states and Washington D.C. have enacted some form of electronic signature laws, mostly adopting the Uniform Electronic Transactions Act (UETA).  Notable states that have not enacted the UETA, but have instead enacted their own electronic signature laws include Illinois, New York, and Washington.  As a result, in order to determine whether an electronic signature is sufficient in a given jurisdiction, it is still important to check local rules.

It is possible that an electronic signature may be contested years after the relevant document was signed.  Therefore, it may be prudent to bolster the validity of an assignment or license signature with additional evidence.  The evidence needed to do this varies from jurisdiction to jurisdiction, but options include remote notarization, electronic signature software, video evidence of the signing, or bolstering the S-Signature with a traditional ink signature once in person signings become feasible.

In the United States, notarization greatly bolsters the validity of an assignment signature.  35 U.S.C. § 261 states that a notarization “shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent.” In other words, a notarized signature shifts the burden to the challenger to prove that the signature is not authentic.  Notarization can be done remotely so long as the signer is willing to verify his or her identity by sending the notary copies of his or her ID and other identifying information.  A notarized signature is preferable to a witnessed signature, as the notarization does not require the notary to testify to the authenticity.

If neither a notary nor a witness is available, the authenticity of an electronic signature can be bolstered by electronic signature software.  These tools add authenticity and anti-tampering features to an electronic signature and may retain records on the signing that can be recalled later.  However, the acceptability of these types of software is not always consistent among international jurisdictions.  It may also be beneficial to have video evidence of the signature being applied.

In foreign countries, the acceptability of electronic signatures varies from country to country.  In Europe for instance electronic signatures made with anti-tampering software may qualify as “advanced signatures,” which may be very likely to be considered authentic.  Other countries may only accept traditional signatures and notaries.  To cope with the realities of the pandemic, it may be necessary to use an electronic signature at first and establish procedures for bolstering those signatures with traditional signatures and notarization later affirming their validity.

With a remote workforce and social distancing practices, it is important to consider the efficiencies of electronic signatures for your patent procedures.  If you have any questions about whether electronic signatures are appropriate for your specific needs, please contact a Maier & Maier attorney today.

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