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Obtaining Signatures On Patent And Trademark Documents, Inventor Assignments While Sheltering In Place

United States Patent and Trademark Office (USPTO) regulations allow for electronic signatures, but certain formalities must be followed. They have become more important as so many company employees are working from home. 

The USPTO allows signing of most correspondence by use of a so-called S-signature, per the 2004 Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan and in 37 CFR 1.4(d). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature. 

Importantly, the S-Signature is defined by the existence of a set of surrounding forward slash marks. A person signing correspondence must insert his or her own S-signature between a single forward slash mark before and a second single forward slash mark after the signature.  The slashes are critical. What is not critical is who makes the slash marks.

The signatory need not make the slash marks as part of the S-signature. Rather, the slash marks may be placed within the signature block prior to or after execution. The slash marks are necessary indications of an S-signature, but themselves do not form part of the signature itself.

Moreover, document signing services may be used to create an efficient workflow for electronic signature of USPTO documents during shelter-in-place restrictions. Services such as those offered by DocuSign® offer an ability to provide an electronic signature on a variety of devices. Therefore, for execution of USPTO documents, either an electronic image captured from enabling services, for example DocuSign®, or a typewritten name is acceptable; it must include the slashes:

/ DOCUSIGN signature/

or

/ John P. Doe /

Moreover, when considering inventor assignment documents, an electronic signature is effective for transferring patent rights. The statutory basis for assignment may be found at 35 USC §261, which provides that the rights of an inventor are personal property that may be assignable in law by an instrument in writing. Under the Uniform Electronic Transactions Act (UETA), personal property, including patent rights, may be transferred using a compliant electronic signature. Forty-seven states and the District of Columbia, Puerto Rico, and the Virgin Islands have adopted the UETA. Three states –New York, Illinois, and Washington – have adopted alternatives to the UETA, and each allows for the transfer of patent rights using a compliant electronic signature. The same format of the electronic image is required and capturing it from an enabling service such as DocuSign® offers an efficient workflow for inventor assignments, as well.

Until recently, the USPTO required actual handwritten, ink signatures in only two instances: 1) correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and 2) payments by credit cards where the payment is not being made via the USPTO’s electronic filing systems.  In March 2020, in light of the effects of COVID-19, the USPTO announced a waiver in March 2020 of the requirements of 37 CFR 1.4(e) and will accept copies of handwritten signatures in both circumstances.  For these two instances, however, the USPTO does not accept the S-signature format discussed, but rather allows for a copy of a handwritten, ink signature rather than an original signature.

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About this Author

Amy H. Fix Intellectual Property Litigation Attorney Barnes & Thornburg Law Firm Raleigh North Carolina
Partner

Amy’s clients range from large international pharmaceutical corporations to smaller companies producing innovative drugs and drug products. She prepares and prosecutes domestic and international patent applications and provides counseling and strategic guidance to build commercially valuable patent portfolios.

A significant portion of Amy’s practice also involves conducting due diligence reviews for licensing or acquisition of therapeutics for human and animal health, including negotiating and drafting resulting agreements. Moreover, Amy...

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Scott M. Simmonds Intellectual Property Attorney barnes & Thornburg Law Firm Indianapolis
Partner

Intellectual property attorney Scott Simmonds advises on IP acquisition and strategy. He works with business clients to identify the strengths, weaknesses and opportunities of their portfolios, navigate the shifting legal landscape to create significant and enforceable properties, and maximize revenue-generating initiatives designed to monetize valuable IP.

As a leader, Scott administers the firm’s patent practice and serves on the firm’s management committee. As a practitioner, Scott prepares and prosecutes patent applications through the U.S. Patent and Trademark Office (USPTO) and counsels clients on the protection and development of IP. Scott is known for his experience in creating the strategies his clients need to succeed in their respective markets. Having been involved in patent portfolio development and management for a wide range of businesses, Scott knows how to tap the right resources for those he serves.

Scott works directly with inventors, executives and in-house counsel to cultivate the novel and often highly specific differentiators of a given technology or innovation in an effort to increase the value of his client’s patent portfolio. He is also regularly involved in negotiating licensing agreements, conducting freedom to operate analyses, and providing due diligence support for mergers and acquisitions. Clients and colleagues alike appreciate Scott’s ability to frame their critical IP assets within their bigger picture objectives.

Scott joined the firm after spending more than a decade as an engineer working in the design and manufacture of medical devices and patient-handling equipment. As a result, he offers multidimensional business experience that ranges from planning and development to budgeting and staffing. His business experience and education help him to understand client concerns from their distinct perspective.

He has experience with technologies such as:

  • Hospital beds and patient-handling equipment

  • Controls systems for electro-mechanical systems

  • Refrigeration systems and controls

  • Aircraft engines

  • Concrete working equipment

  • Dental appliances

  • Surgical support systems

  • Neural networks

  • Hydraulic transmissions

Scott focuses on providing the legal solutions that make sense for his client’s specific business and operations. He is at his best when supporting creativity, problem-solving and helping his clients succeed.

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