E-Signing Patent Documents Might Sometimes Be the Wrong Approach
By Joseph Hetz and Hervey Su
Prior to the Covid-19 pandemic, the US Patent and Trademark Office’s electronic signature rules required inventors to type their signature between two slashes or use a graphically inserted replica of a previously created wet—or ink—signature.
During the pandemic’s early days, the USPTO revised its e-signature guidance to allow e-signatures created with a commercial platform, such as DocuSign.
With many inventors working from home, the platform became a popular tool for obtaining inventor signatures on declarations and assignments.
Although many employees are returning to the office, the work-from-home-era practice of using DocuSign is here to stay, especially since people are accustomed to using the tool in various aspects of their lives. However, there are three misconceptions about using DocuSign for patent documents.
Myth: The USPTO Accepts ‘DocuSign Signatures’
One misconception is that, because of its revised guidance, the USPTO now accepts “DocuSign signatures,” as if a “DocuSign signature” was monolithic. But there are many ways DocuSign can be used to create an e-signature, and only some comply with the guidance.
For example, the signor often chooses a signature to adopt—usually having a script font that has the appearance of a written signature. Such a signature wouldn’t comply with USPTO guidance because it is missing slashes before and after the signature.
Fortunately, DocuSign allows the slashes to be prepopulated, eliminating the risk of forgetting to include them. Also, the USPTO allows “hand-drawn” signatures—e.g., using a mouse or a fingertip—that don’t require slashes, and DocuSign can be configured to force the inventor to create such a signature.
Myth: E-Signature Rules Apply to Assignments
Since declarations and assignments are often presented together to an inventor, USPTO rules on e-signatures often are assumed to apply to both declarations and assignments.
Unlike signatures on declarations, which are governed by USPTO rules, signatures on assignments are only governed by federal and state law, such as the E-signatures in Global and National Commerce Act and the Uniform Electronic Transactions Act .
Still, since the documents are typically signed together, it’s good practice to configure DocuSign to use the same signature rules on both the declaration and the assignment.
Also, since evidence of the signor’s intent is typically examined when determining the validity of an e-signed document, it’s good practice to include language in the assignment that the assignor agrees to using e-signatures.
Myth: Wet Signatures Needed for Foreign Filings
Another misconception is that foreign countries don’t accept e-signatures. But Canada’s Intellectual Property Office honors a variety of e-signatures, such as /s/ signatures and DocuSign.
Second, the US declaration and assignment don’t need to be submitted in many foreign countries—such as Australia, Canada, and Germany—so it shouldn’t matter if those are e-signed.
E-signatures aren’t accepted in China, Japan, and Mexico, however, and DocuSign contracts may not meet the strict requirements in Brazil for e-signatures.
Inventor-signed formal papers don’t need to be filed when nationalizing into those countries from a Patent Cooperation Treaty application, so it usually shouldn’t matter if the US declaration and assignment are e-signed.
However, if an error in the inventor or applicant information needs to be corrected during the national stage, it might need a copy of the US assignment and, if e-signed, it may be rejected.
The rules aren’t clear for some countries. India requires inventor-signed documents, for example, and its Information Technology Act allows for e-signatures. Nevertheless, the Indian Patent Office has been known to reject e-signatures.
But there’s a workaround. In nationalizing into India from a PCT application, an e-signed declaration under PCT Rule 4 would be accepted, so it’s good practice to include one as part of the DocuSign package if and inventor may file in India.
A wet signature is the gold standard and safest option, especially if foreign filing is contemplated. But if using DocuSign, it’s important to configure its setting to only accept a USPTO-approved signature and add language in the assignment that the assignor agrees to the use of e-signatures.
This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.
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Author Information
Joseph F. Hetz is a partner at Crowell & Moring and co-chair of the firm’s patent prosecution practice group.
Hefeng (Hervey) Su is an associate at Crowell & Moring and splits time between the patent and ITC litigation and patent prosecution groups.
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Myth: The USPTO Accepts 'DocuSign Signatures'. One misconception is that, because of its revised guidance, the USPTO now accepts "DocuSign signatures," as if a "DocuSign signature" was monolithic. But there are many ways DocuSign can be used to create an e-signature, and only some comply with the guidance. For example, the signor ...
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