Lewis Roca Blog

As more states order their residents to stay at home to minimize the spread of the coronavirus, the effects of the COVID-19 outbreak continue to mandate a significant change in business conduct. Working from home may mean working without convenient access to common office equipment such as printers and scanners. As such, the situation lends itself to taking advantage of the USPTO’s acceptance of electronic “S-signatures” wherein documents can be signed without being printed.

Each inventor named on a patent application filed with the USPTO must sign an oath or declaration stating that they believe they are an original inventor of the claimed subject matter (37 C.F.R. 1.63(a)(3)). As specified by the signature requirements for USPTO documents, the inventor oath or declaration can be signed by (1) a handwritten signature (37 C.F.R. 1.4(d)(1)) or (2) an S-signature (37 C.F.R. 1.4(d)(2)).

When the oath or declaration is signed using a handwritten signature, i.e., by the inventor personally signing the document in permanent dark ink, the signature is relatively easy to verify. Of course, this method requires the inventor to print the document and then scan or mail the document to be filed.

However, particularly due to restrictions imposed to combat the COVID-19 outbreak, it may not be possible or practical for the inventor to print or scan documents. In these cases, the inventor can sign their oath or declaration using a so-called “S-signature” which is an electronic signature inserted between forward slash marks, e.g., /John Smith/. S-signatures can be also be used for other documents, including powers of attorney and information disclosure statements, filed with the USPTO by paper, electronically via the EFS-Web platform, or by facsimile. There are several USPTO requirements for using an S-signature:

1) The S-signature must consist only of letters or Arabic numerals with appropriate spaces and commas, periods, apostrophes, or hyphens as necessary, e.g., /Dr. James T. Jones, Jr./. "Letters" include English and non-English alphabet letters, and text characters (e.g., Kanji). Non-text, graphic characters (e.g., a smiley face created in the True Type Wing Dings font) are not permitted.

2) The person signing must insert their own signature, i.e., the signer must directly type their own signature using a keyboard. It is not permitted for one person (e.g., an assistant) to type in the signature of a second person (e.g., an inventor) even if the second person directs the first person to do so.

3) The signer’s name must be printed or typed immediately below or adjacent the S-signature and be reasonably specific enough so that the identity of the signer can be readily recognized.

When an S-signature is used, the USPTO strongly suggests that each signer use their full name and, for consistency purposes and to avoid raising a doubt as to who has signed, that the same S-signature be used each time, with variations of the signature being avoided.

Examples of proper and improper handwritten and S-signatures can be found here: https://www.uspto.gov/sites/defaultassets/htmldocuments/documents/sigexamples_alt_text.pdf

Regardless of whether a handwritten signature or an S-signature is used, evidence of the signature’s authenticity should be maintained in the event that the USPTO challenges the signature. As such, if a copy of a handwritten signature is submitted, the original signature should be retained. If an S-signature is used, an email or other transmission of the signature request and the returned signature should be retained. Where S-signatures are used for multiple inventors, each inventor should separately send back their signature as evidence of authenticity rather than one inventor using a single transmission for all signatures.

While S-signatures as described above are acceptable, an electronic reproduction of a handwritten signature, e.g., a scanned signature, that is electronically applied to a document is not a personally signed original document under 37 CFR 1.4(d)(1)(i) and reproductions of such correspondence cannot be copies under 37 CFR 1.4(d)(1)(ii). As such, electronic reproductions of handwritten signatures should be avoided. Additionally, patent assignments are not filed via EFS-Web and their sufficiency may be interpreted under state law. There is not a universally accepted body of law indicating that all electronic signatures suffice for patent assignments, and state laws vary. However, most U.S. state and federal laws appear to permit the use of electronic signatures in patent assignments and other transactions involving intellectual property. Please consult your attorney with any questions regarding electronic signature requirements for these types of transactions, particularly assignments and exclusive licenses.

As described above, the U.S. Patent and Trademark Office (USPTO) already accepts S-signatures for many documents that could also be signed by hand. However, because the USPTO considers the effects of the COVID-19 outbreak to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146(a)(5), the Office has waived its only previous requirements for original handwritten, ink signatures and, until further notice, will accept copies of handwritten signatures as well as S-signatures for correspondence relating to (1) registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings (37 CFR 1.4(e)(1)), and (2) payments by credit cards where the payment is not being made via the Office’s electronic filing systems (37 CFR 1.4(e)(2)). The USPTO’s waiver of these sections is subject to change and for evidentiary reasons handwritten signatures are still preferred where possible.

For more information, please contact Tom Daly at tdaly@lewisroca.com or Oliver Bajracharya at obajracharya@lewisroca.com.