[Patentpractice] e-signatures using document-signing software

[Umair A. Qadeer]

Hi all,

I hope everyone had a joyous and restful holiday. I am hoping to tap into the wisdom of the hive mind regarding e-signatures.

I will be submitting several Rule 132 declarations with an Office Action response. These declarations are from third parties, and I'm trying to be respectful of their time. I've had issues in the past with S-signatures not appearing correctly on documents or individuals forgetting to include one or both forward slashes, which has required getting signatures multiple times. Thus I am getting e-signatures via Adobe Sign instead of S-signatures.

New Rule 1.4(d)(4) allows the use of electronic signatures obtained via third-party document-signing software for patent submissions to the USPTO. See 37 C.F.R. § 1.4(d)(4). Rule 1.4(d)(5)(ii) requires retaining evidence of authenticity: "[a] person submitting a document signed by another under paragraph (d)(2), (3), or (4) is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature." 37 C.F.R. § 1.4(d)(5)(ii).

The Federal Register notice explains that the software must "preserve signature data for later inspection in the form of a digital certificate, token, or audit trail" and meet the other signature requirements. Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence, 89 Fed. Reg. 20321 (March 22, 2024), https://www.federalregister.gov/documents/2024/03/22/2024-06126/signature-requirements-related-to-acceptance-of-electronic-signatures-for-patent-correspondence. The notice further states that "USPTO personnel retain the discretion to inquire about the acceptability of a signature on a submission or require ratification, confirmation, or evidence of authenticity of such signature, where the USPTO has reasonable doubt as to the authenticity (veracity) of the signature." Id.

Adobe Sign generates a verification page that includes the e-mail address of the signatory. Based on the above, it seems that it is unnecessary to actually submit the verification page, and a printed PDF of the document sans verification page will suffice. However, this isn't clearly stated in the rule or the notice, so I thought I'd inquire to see if anyone understands the requirement differently or otherwise submits the verification page for e-signed documents.

Happy new year to all!

Best,
Umair

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Umair A. Qadeer
Registered Patent Attorney
Qadeer LLC
312.248.3020
umair at qadeerip.com<mailto:umair at qadeerip.com>
www.qadeerip.com<http://www.qadeerip.com>


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