Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan, Notice of Proposed Rule Making, 68 FR 53815 (September 12, 2003); 1275 Off. Gaz. Pat. Office 23 (October 7, 2003) (Text Version)

A copy of the Federal Register notice appears at the Office's Internet Web site www.uspto.gov at the Federal Register notices web page, presently located at http://www.uspto.gov/web/menu/current.html#register

Prepared December 9, 2003 by:
Office of Patent Legal Administration (OPLA)
Robert J. Spar, Director
(703) 308-5107
Bob.Spar@USPTO.gov

Electronic Signatures - 37 CFR § 1.4

• An electronic signature (e-signature), personally typed by the signer on a computer, will be accepted when FINAL Rule making is implemented.
• As proposed, an e-signature would be permitted on certain correspondence filed in a patent application, patent, or reexamination proceeding when:

  A. The signer e-signs the correspondence on a computer; and
  B. The e-signed correspondence is:
  

  • Transmitted directly via facsimile from a computer to the Office; or
  • Printed on a paper and then transmitted via facsimile, mailed or hand-carried to the Office.

For example:

• Practitioner may create a document and e-sign it on a computer, and then transmit it via facsimile directly from the computer to the Office.

• An affidavit or a declaration may be e-signed by an applicant, and then electronically sent to the practitioner, e.g., via the Internet. The practitioner can transmit the e-signed document via facsimile directly from a computer to the Office or mail a paper copy of the e-signed document to the Office.

E-Signature advantages:

A. Permits applicants and third parties without access to scanners and facsimile machines to e-sign electronic documents (e.g., affidavits or declarations) and return them to a practitioner by e-mail.

B. Saves time by allowing facsimile transmission to the Office directly from a computer without first printing on paper and then faxing the paper version.

C. Permits practitioners to automate their records and electronically maintain signed documents.

Additional authentication burdens for E-Signature:

A. Software and hardware are constantly evolving, so that it may be difficult to access old electronic records (e.g., magnetic cards, 8.5 inch floppy discs). Similarly, replicating how the document appeared to the signer may be difficult because of track changes/notes embedded in the document, screen size, screen resolution, print driver and differences in software versions.

B. Chain of custody, non-alteration of document and (in case of repudiation) authentication of signature more difficult to document as many practitioners don't log the electronic movement of messages and their modification.

Requirements:

A. Correspondence containing an e-signature must be sent to the Office by approved means for that type of correspondence:

• Transmission via facsimile or the Office's Electronic Filing System (EFS) directly from a computer to the Office;
• Transmission via facsimile of a paper copy of the e-signed correspondence to the Office; or
• Mail or hand-carry a paper copy of the e-signed correspondence to the Office.

Note:

• E-mailing the correspondence directly to the Office still will not be permitted; and
• New applications still will not be accepted via facsimile.

B. The e-signature must be composed only of letters and/or numbers between two forward slashes (/.../), including punctuation marks, spaces and titles.

• A registration number that is part of the e-signature may contain the number character (#).
• For example: /Julie B. SMITH, Reg. #99999/

C. The family name must be entirely in capital letters when it is included in the actual name or registered name.

• Only the family name can be entirely in capital letters.
• For example: /Able Quincy INVENTOR/

  D. Practitioners signing pursuant to
  § 1.33(b)(1) (of record) and
  § 1.33(b)(2) (not of record but acting in representative capacity) must:

1. Use their complete registered name as the e-signature; and
2. Place their registration number either in the e-signature or adjacent to the e-signature. For example:

   /Julie B. SMITH, Reg. #99999/

   /Julie B. SMITH/ Reg. #99999

*This would be a new requirement for 37 CFR 1.33(b)(1).

E, For non-practitioner signers
(signatures other than under 37 CFR 1.33(b)(1) and (b)(2)),

1. The e-signature must be the signer's actual name (including given name, middle name and family name); or
   • For example: /Able Quincy INVENTOR/
2. If the actual name is not used as part of the e-signature,
   • The actual name must also be
     • provided immediately below the e-signature and
     • indicated to be the signer's actual name. For example:
       /Able Q. Inventor/
       Able Quincy INVENTOR - Signer's Actual Name

Ratification of an e-signature may be required where there is reasonable doubt as to the authenticity of the e-signature; for example:

A. Where there are variations in the e-signature from one document to another; or

B. Where a document contains the name of the signer in its text without some indication of the family name, such as by all capital letters.

13 Examples

Registered practitioners signing pursuant to 37 CFR 1.33(b)(1) or 1.33(b)(2)
See Examples 1 - 6 ONLY

Any other signature (e.g., on: declarations, affidavits, assignment statements, or any paper by a pro se applicant)
See Examples 7-13 ONLY

Electronic Signatures, 37 CFR § 1.4 Example 1

Option 1: /John T. PRACTITIONER, Reg. #123456/
Option 2: /John T. PRACTITIONER/ Reg. #123456

These are the required e-signature options for a registered practitioner who is signing pursuant to § 1.33(b)(1) or (b)(2).

Either option is a proper e-signature because:

1. It is between two forward slashes (/. . ./);
2. It is the registered name of the practitioner (note: this would be a new requirement for registered practitioners);
3. Only the family name is entirely in capital letters;
4. The e-signature is composed of letters, numbers, spaces, and punctuation marks; and
5. The registration number with a number character is part of the e-signature (Option 1) or adjacent to the e-signature (Option 2).
   

The word (number), the abbreviation (No.) or the number character (#) for the registration number is acceptable. See Ex. 2.

If the practitioner's registered name is "John Thomas Practitioner," then the e-signature must be either:

Correspondence with an e-signature of a registered practitioner as set forth in options 1, 2, 3 or 4, depending on the person's name, as registered, of Ex. 1 will be accepted.

Conversely, correspondence with an e-signature of a registered practitioner that does not follow the format of Ex. 1, or one of the acceptable variations in Ex. 2, 3, 4, and 6 will be treated as unsigned.

Electronic Signatures, 37 CFR § 1.4 Example 2

Situation: The practitioner's registered name including a hyphenated family name and a title (e.g., Ph.D.) is presented.

The e-signature on the correspondence is:

/Julie B. SMITH-JONES, Ph.D./ Reg. No. 99999

Is this a proper e-signature?

Answer: Yes

This is a proper e-signature because:

1. The signature is between two forward slashes (/.../);
2. The signature is composed only of letters, numbers, and punctuation marks (the hyphen in the name is acceptable);
3. The signature may include a title (e.g., Ph.D.) in addition to the registered name;
4. Only the family name is entirely in capital letters (both parts of the hyphenated family name must be capitalized); and
5. The practitioner's registration number is presented, but it does not have to be within the slash marks.

Correspondence with an e-signature as set forth in Ex. 2 will be accepted.

Electronic Signatures, 37 CFR § 1.4 Example 3A

Situation: Ex. 3A and 3B address the situation of a practitioner who has changed her name since she registered with the Office.

The practitioner's names are as follows:

The e-signature on the correspondence is:

Question: Is this a proper e-signature?

Answer: Yes

This is a proper e-signature because:

1. The practitioner signed her name, as registered.
   Note: This would be a mandatory requirement.
2. Below the e-signature:

   i. The person's actual name is presented; and

   ii. It is specifically identified by the words: " signer's actual name"

   Note: Either these exact words, or some equivalent, must be present!

See Ex. 2 for additional reasons why this is a proper e-signature.

Correspondence with an e-signature as set forth in Ex. 3A will be accepted.

Electronic Signatures, 37 CFR § 1.4 Example 3B

Situation: This is the same as in Ex. 3A except the attorney signs her current actual name instead of her registered name.

The e-signature on the correspondence is:

Question: Is this a proper e-signature?

Answer: No

This is an improper e-signature because:

1. The e-signature is not the practitioner's name, as registered.
   • A practitioner is required to sign her name, as registered.
   • The e-signature would have been accepted for a
     non-practitioner.
2. Supplying the registered name (i.e., Julie Smith) below the e-signature does not correct the defective e-signature.

Correspondence with an e-signature as set forth in Ex. 3B will be treated as unsigned; see Ex. 3A for a correct e-signature.

Electronic Signatures, 37 CFR § 1.4 Example 4A

Situation: Ex. 4A, 4B and 4C address the situation of a registered practitioner attempting to sign for another registered practitioner.

The e-signature on the correspondence is:

Question: Is this a proper e-signature?

Answer: No

This is an improper e-signature because:

1. It is not personally signed by Julie B. Smith; and
   • 37 CFR 10.18(a) requires that each piece of correspondence filed by a registered practitioner must bear a signature, personally signed by that practitioner.
2. No registration number was provided for John T. Practitioner, the practitioner who e-signed the correspondence.
   See Ex. 4B for an acceptable e-signature.

Correspondence with an e-signature as set forth in Ex. 4A will be treated as unsigned.

See Ex. 6 for a practitioner signing for an inventor.

Electronic Signatures, 37 CFR § 1.4 Example 4B

Ex. 4B is the same as Ex. 4A but the e-signer provided his registration number.

The e-signature on the correspondence is:

Question 1: Can the e-signature be accepted under § 1.33(b)(1) or (b)(2) despite the indication that it is being signed "for" another?

Question 2: If the answer to question 1 is yes, is this a proper e-signature?

Answer for Question 1: Yes

The e-signature can be accepted if it separately qualifies on the basis of John T. Practitioner signing for himself as a registered practitioner with a proper e-signature.

• The line below the e-signature does not cause the proper e-signature to become ineffective.

John T. Practitioner's signature for Julie B. Smith is acceptable.

• See the preamble to the rule change adopting 37 CFR 10.18 (50 FR 5161 (February 6, 1985)).
  
  

Answer for QUESTION 2: Yes

The e-signature is proper because:

1. John T. Practitioner e-signed with his registered name and registration number;
2. Only the e-signer's family name is entirely in capital letters;
3. The e-signature is between two forward slashes (/.../);
4. The e-signature is composed entirely of letters, numbers, spaces, punctuation marks and the number character (#) with a registration number.

Correspondence with an e-signature as set forth in Ex. 4B will be accepted.

Electronic Signatures, 37 CFR § 1.4 Example 4C

Ex. 4C is the same as Ex. 4B but the e-signer signs "by" instead of "for".

The e-signature on the correspondence is:

Question 1: Can the e-signature be accepted under §1.33(b)(1) or (b)(2) despite the indication that it is being signed "by" another?

Question 2: If the answer to question 1 is yes, is this a proper e-signature?

Answer for Question 1: Yes

The e-signature can be accepted if it separately qualifies on the basis of John T. Practitioner signing for himself as a registered practitioner with a proper e-signature.

• The line on top of the e-signature does not cause the proper e-signature to become ineffective.

John T. Practitioner's signature is acceptable as a signature for Julie B. Smith.

• See the preamble to the rule change adopting 37 CFR 10.18 (50 FR 5161 (February 6, 1985)).
• The X "by" Y format is equivalent to the Y "for" X format in Ex. 4B.
  

Answer for QUESTION 2: Yes

The e-signature is proper because:

1. John T. Practitioner e-signed with his registered name and registration number;
2. Only the signer's family name is entirely in capital letters;
3. The e-signature is between two forward slashes (/.../); and
4. The e-signature is composed entirely of letters, numbers, spaces, punctuation marks, and the number character (#) with a registration number.

Correspondence with an e-signature as set forth in Ex. 4C will be accepted

Electronic Signatures, 37 CFR § 1.4 Example 5

Situation: A customer number (CN) is used as the e-signature and the practitioners associated with the CN are of record in the application.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer: No

This is an improper e-signature because:

• Practitioners must use their names, as registered, as their signatures.
• Other defects:
  1. The e-signature is not an actual name;
  2. The the signer's actual name are not identified; and
  3. Names other than the family name of the signer are in all capital letters.

Correspondence with an e-signature as set forth in Ex. 5 will be treated as unsigned.

Electronic Signatures, 37 CFR § 1.4 Example 6A

Situation: The correspondence is expressly signed by an attorney of record on behalf of an inventor.

• Note that these provisions do not expand a patent practitioner's ability to sign on behalf of an inventor.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer: NO

This is an improper e-signature because:

• Two persons' names in a single e-signature will not be acceptable;
• An e-signature, like a regular signature, must be by a single person; and
• It is not personally signed by Able Inventor.

Evaluation of Ex. 6 on the basis of just the practitioner's name:

• Practitioners signing pursuant to § 1.33(b)(1) must use their registered names for their e-signatures;
• The inventor's name is clearly not a part of the practitioner's registered name; and
• The registration number was not provided within or adjacent to the e-signature as required.

Correspondence with an e-signature as set forth in Ex. 6 will be treated as unsigned.

See Ex. 4A, 4B and 4C for signing "by" or "for" another attorney.

Electronic Signatures, 37 CFR § 1.4 Example 6B

Ex. 6B is the same as Ex. 6A, except that the signing practitioner separates his signature from the name of the inventor.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer: Yes

This is a proper e-signature because:

1. John T. Practitioner e-signed with his registered name and registration number;
2. Only the signer's family name is entirely in capital letters;
3. The e-signature is between two forward slashes (/.../); and
4. The e-signature is composed entirely of letters, numbers, spaces, punctuation marks, and the number character (#) with a registration number.

Correspondence with an e-signature as set forth in Ex. 6B will be accepted.

See Ex. 4A, 4B and 4C for signing "by" or "for" another attorney.

Electronic Signatures, 37 CFR § 1.4 Example 6C

Ex. 6C is the same as Ex. 6B, except that the signing attorney signs for another patent attorney.

This is a combination of Ex. 6B and 4B.

QUESTION: Is this a proper e-signature?

Answer: Yes

This is a proper e-signature because:

1. John T. Practitioner e-signed with his registered name and registration number;
2. Only the signer's family name is entirely in capital letters;
3. The e-signature is between two forward slashes (/.../); and
4. The e-signature is composed entirely of letters, numbers, spaces, punctuation marks, and the number character (#) with a registration number.

Correspondence with an e-signature as set forth in Ex. 6C will be accepted.

See Ex. 4A, 4B and 4C for signing "by" or "for" another attorney.

Electronic Signatures, 37 CFR § 1.4 Example 7A (recommended)

/Able Quincy INVENTOR/

This is a preferred e-signature for someone who is not a registered practitioner.

It is a proper e-signature because:

1. It is between two forward slashes (/.../);
2. Where only the e-signature is provided and it includes a first, middle, and last name, it is assumed to be the signer's actual name;
3. The family name is entirely in capital letters; and
4. The e-signature is composed entirely of letters and spaces.

Below the signature: Nothing should be provided because anything that is provided is likely to cause confusion.

Correspondence with an e-signature as set forth in Ex. 7A will be accepted.

Electronic Signatures, 37 CFR § 1.4 Example 7B

Situation: The inventor signed with an abbreviated middle name.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer for Example 7B: Yes

It is a proper e-signature because:

1. It is between two forward slashes (/.../);
2. The e-signature is composed entirely of letters, punctuation marks and spaces; and
3. The actual name including the full middle name and only the family name in all capital letters is provided below the e-signature.

• As the e-signature is not the signer's actual name, the presence or absence of capitalization of letters in the e-signature is irrelevant. All of the following variations of the e-signature of Ex. 7B would be acceptable e-signatures:

  /ABLE Q. INVENTOR/ or /ABLE inventor/ or /able inventor/

Requirements for the actual name below the e-signature:

1. The signer's actual name must be presented immediately below the e-signature and specifically identified by the words: "signer's actual name".
   • Note: Either these exact words "signer's actual name," or some equivalent, must be present!
2. The family name (in the "signer's actual name") must be the only name entirely in capital letters.

Correspondence with an e-signature as set forth in Ex. 7B will be accepted.

Note 1: If a person has a single letter (which is an actual name and not an abbreviation) as part of their actual complete name, then an e-signature with the single letter (initial) as part of their name is acceptable and nothing has to be typed immediately below the e-signature.

Note 2: If the single letter is an abbreviation, then an e-signature with the initial (e.g., Q.) is not acceptable (as a complete name) unless a complete name, without abbreviation, is also supplied (as in Ex. 7B).

Electronic Signatures, 37 CFR § 1.4 Example 8

Situation: The e-signature includes script or italics.

The e-signature on the correspondence is:

Able Quincy Inventor Able Quincy INVENTOR [alternative text: signature is in a script font to imitate a pen and ink signature]

QUESTION: Is this a proper e-signature?

Answer: No

This is an improper e-signature because:

1. The e-signature is not placed between two forward slashes; and
2. Using a script font for the e-signature to imitate a pen and ink signature does not make this a proper e-signature.

If the script font e-signature were placed between 2 forward slashes, it might be acceptable.

A script font is not recommended because it could be construed as a wet ink signature or it may not be legible.

Correspondence with an e-signature as set forth in Ex. 8 will be treated as unsigned.

Electronic Signatures, 37 CFR § 1.4 Example 9

Situation: The family name is presented first.

The e-signature on the correspondence is:

QUESTION: Is any of the e-signatures in A or B above a proper inventor's e-signature?

Answer: Yes

They are both proper inventor's e-signatures because:

1. The e-signatures are between two forward slashes (/.../);
2. The e-signatures are the signer's actual name, even though the family name is presented first in each signature; and
3. The e-signature is composed entirely of letters, punctuation marks and spaces.

• The comma after the family name is acceptable (punctuation is permitted).
• The usage of the comma is optional - it depends upon the signer's preference.
• This e-signature is not acceptable for a registered practitioner because no registration number is given.
• Where only the e-signature is provided and it includes a first, middle, and last name, it is assumed to be the signer's actual name.

Correspondence with an e-signature as set forth in Ex. 9 will be accepted.

Electronic Signatures, 37 CFR § 1.4 Example 10

Situation: The e-signature includes symbols.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer: No

This is an improper e-signature because:

1. Graphic symbols (e.g., an airplane and a smiley face symbol) are not permitted; and
2. Providing the signer's actual name cannot overcome the failure to use letters and numbers in the e-signature itself.

Correspondence with an e-signature as set forth in Ex. 10 will be treated as unsigned.

Electronic Signatures, 37 CFR § 1.4 Example 11

Situation: A title (e.g., Professor) is presented after the e-signature.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer: Yes

This is a proper (but not recommended) e-signature because:

1. The e-signature is between two forward slashes (/.../);
2. The e-signature includes the actual name of the signer (B is assumed to be the signer's middle name and not an abbreviation);
3. The title appears after the e-signature does not contradict the name of the signer;
4. Only the signer's family name is entirely in capital letters; and
5. The e-signature is composed entirely of letters and spaces.

While adding a title after the e-signature is acceptable, it is not recommended as it could cause confusion if the title is inaccurate, inconsistent or misleading.
Correspondence with an e-signature as set forth in Ex. 11 will be accepted.

Note: Including a title (e.g., /Able B INVENTOR, Professor/), within the 2 forward slashes would also be acceptable, but is not recommended).

Electronic Signatures, 37 CFR § 1.4 Example 12

Situation: The e-signature is presented within multiple pairs of slashes.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer: No

This e-signature is improper because:

It has more than a single slash mark before, and after, the e-signature resulting in four forward slash marks.

• Only two forward slash marks would be required by §1.4(d)(1)(iv)(A); and
• Extra forward slashes are expressly prohibited as signature characters by PCT Annex F, section 3.3.2 and the proposed rule is intended to be consistent with the PCT.

Note: if Allen Inventor has a middle name, it must be provided.

Correspondence with an e-signature as set forth in Ex. 12 will be treated as unsigned.

Electronic Signatures, 37 CFR § 1.4 Example 13

Situation: Inventor obtains a customer number (CN) for his correspondence address in a pro se application.

The e-signature on the correspondence is:

QUESTION: Is this a proper e-signature?

Answer: Yes

This is a proper (but not recommended) e-signature for an inventor who is a pro se applicant because:

1. The e-signature is composed entirely of letters, spaces, numbers, and punctuation marks between two forward slashes (/.../);
2. Although the e-signature is not an actual name, the actual name is presented below the signature and clearly identified as such; and
3. The actual name is presented with the family name as the only name in all capital letters.
   

While an inventor can adopt an electronic signature that is something other than their name, such a signature is not recommended because it requires accurately identifying their complete actual name in the correspondence.

Note that patent practitioners must use their registered name as their e-signatures. See Examples 1 - 6.

Correspondence with an e-signature as set forth in Ex. 13 will be accepted.

Drawings May Be Submitted by Facsimile