Electronic Signatures and Patent Rights
Intellectual Property Alert 03/23/20 Joseph R. Decker, Stephen J. Gardner
As companies, research institutions, and universities continue to move to work-from-home situations (or are required to do so) in the wake of the COVID-19 pandemic, it may become slower or more cumbersome to obtain signatures for formal documents needed to pursue, prosecute, and license patent rights. This is especially problematic in the United States, as the USPTO has indicated that it will not relax existing deadline requirements, unlike some of its foreign counterparts. However, IP owners are reminded that USPTO rules, as well as U.S. Federal and most state laws, allow for electronic execution of documents and the use of scanned or other electronic copies of executed documents. Many documents involving foreign patent rights, assignments, or exclusive licenses to/with foreign entities may still require original copies or handwritten signatures.
Guidance for Signature Requirements
In order to meet deadlines and prepare necessary forms for the USPTO, one option may be for inventors and other employees to execute documents via electronic signatures. We want to remind our clients and other patent owners that most inventor signatures and many other types of signatures needed at the USPTO can be done electronically. Under 37 C.F.R. § 1.4(d)(2), the USPTO permits the use of electronic signatures for all documents filed using the EFS-web platform or via facsimile. This rule includes inventor declarations, powers of attorney, information disclosure statements, etc. However, the relevant inventor or employee must affix his or her own signature to the document, regardless of whether that signature is electronic or handwritten. Under USPTO rule 1.4(d)(2), the proper method is the “S-Signature”, indicated by placing one's name in between a pair of forward slashes (Ex: "/John Smith/”) on the signature line. The relevant regulation states: "The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before and a second single forward slash mark after the S-signature (e.g., /Dr. James T. Jones, Jr./)". (37 C.F.R. § 1.4(d)(2); MPEP 502.02). Note that, while these are referred to as "S-signatures", no "s" is placed before the forward slashes (as had previously been done at times). Also, the USPTO strongly encourages each S-signature to include the individual's full name and to be rendered the exact same way each time the individual signs a document, for sake of consistency. Finally, simply using script-style fonts will not suffice. While some inventors may be accustomed to inserting their signatures using specific fonts (and some applications like Adobe Sign use stylized fonts), doing so likely will not suffice for purposes of documents and correspondence to be filed with the USPTO, and the USPTO will consider them unsigned documents. (See MPEP 502.02). A script-style font may be used, but it would still require the signer to place forward slashes before and after the signer's name.
Please keep in mind that the USPTO does not assess the sufficiency of assignment documents, which are not filed "using the EFS-web platform" (instead via the EPAS); rather their sufficiency may be interpreted according to state law. Although there is not a single, universally accepted body of law indicating that all electronic signatures suffice for patent assignments, and state laws vary, most U.S. state and federal laws seem to indicate that they would permit the use of electronic signatures in patent licenses and other transactions involving intellectual property. Be sure to consult your attorney regarding electronic signature requirements for these types of transactions, particularly assignments and exclusive licenses. Subject to variation among state laws, a recognized electronic signature service, such as DocuSign™, could be sufficient for these transactions. Please note that where it is the normal practice to notarize documents, it may be difficult to do so using e-signatures. Some states may allow e-notarizations, but the use of these services is still limited.
From an international perspective, many countries still require handwritten signatures for certain types of patent-related documents. This can include requirements for original or legalized copies of patent and related legal documents. Thus, it is important to check with the local laws of each foreign country for a particular patent application. In the meantime, however, U.S. and PCT documents can proceed with electronic signatures and scanned copies of most documents. For contracts (like licenses) relating to patents, it is also important to check local laws on whether electronic signatures can suffice. Some countries are known to require handwritten signatures, "heightened" forms of electronic signatures (like Docusign-style signatures or other "digital signatures"), or even notarization, for documents that implicate assignments, licenses, or other grants of rights in patents.
If you have any questions about whether electronic signatures can be used in patent-related documents, please contact your local Quarles & Brady attorney or: