[Patentpractice] Who can sign assignment submissions?

[Rick Neifeld]

Judi -

1.  "can non-attorneys sign the submissions?" - To avoid doubt, your 
question is directed to signing an assignment cover sheet, not an 
assignment.  I am chagrined that my initial assumption to answering your 
question was misplaced. I thought that ***anyone*** can sign an 
assignment cover sheet.  That may be true as a matter of PTO informal 
practice, but I do not see that being authorized by the PTO rules and 
guidance relating to signing an assignment cover sheet.

37 CFR 3.31 ("Cover sheet content"), subsection (a)(7) (sheet must 
include "signature of the _party_ submitting the document"); and MPEP 
302.07 ("Assignment Document Must Be Accompanied by a Cover Sheet") 
states in part "For an assignment document filed electronically, the 
signature of the person who signs the cover sheet must comply with*37 
CFR 3.31(a)(7) 
<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#aia_d0e336415>* 
or *37 CFR 1.4(d)(2) 
<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e313174>*."  
So (a)(7) requires the document be signed by a "party," which I 
understand refers to an authorized representative of either an assignor 
or an assignee.  As a general matter of law, an attorney recognized as 
representing a party can generally sign for their party, thereby binding 
the party to whatever was signed.  But the literal terms of the PTO rule 
do not spell that issue out.  MPEP 302.07 states that a signature on an 
electronically filed cover sheet (which is the subject we are focusing 
on here) can comply with *37 CFR 1.4(d)(2) 
<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e313174>* 
instead of being a "party." 1.7(d)92) is the rule authorizing 
S-signatures. That does not provide clarification on who can sign.   I 
have not doubt that an attorney or record is authorized to sign an 
assignment cover sheet.  I have not thoroughly reviewed all possible 
sections of the rules and MPEP and guidance.  I suspect somewhere there 
is further guidance, but that is all the time I am willing to spend 
now.  Hopefully, others will fill in the gaps I have left on this issue.

2. "send prepared submissions to the attorney for signature, we’re 
trying to figure out how to submit assignments for recordation" - To 
avoid doubt, I assume your question relates to the duty an attorney has 
to review factual assertions for propriety before signing any document, 
and therefore you want to know how, technically, an attorney can review 
your factual entries, and upon confirming they are accurate, sign the 
assignment cover sheet. So that requires providing the attorney access 
at "step 8", the "Review" step, in the Assignment center's cover sheet 
transmittal generation process. /See/ slide 52, Assignment Center Patent 
Training Guide 
<https://assignmentcenter.uspto.gov/assets/documents/patent_training_ac.pdf> 
(PDF)
One way to do that is to provide the attorney of record control over 
your computer, either physically accessing the GUI and data entry 
elements or virtually controlling the GUI and data entry elements, such 
as by a remote terminal session, or use of some service such as Zoom or 
Teams, to review, correct as needed, and then submit, before turning 
control back over to you.

Best regards, Rick Neifeld, Ph.D., Patent Attorney

Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rneifeld at neifeld.com
and richardneifeld at gmail.com
Web: https://neifeld.com/
This is a confidential communication of counsel. If you are not the 
intended recipient, delete this email and notify the sender that you did so.

On 2/5/2024 12:19 PM, Goldberg, Judi via Patentpractice wrote:
>
> Since this lovely new assignment system won’t let us send prepared 
> submissions to the attorney for signature, we’re trying to figure out 
> how to submit assignments for recordation.The new system auto-fills 
> the completer’s name etc., but can non-attorneys sign the 
> submissions?It would make life easier…..
>
> Thanks in advance,
>
> Judi
>
> cid:image001.jpg at 01D52DCA.ACA5FA20
>
> 	
>
> Judith L. Goldberg | Patent Paralegal
>
> *Leydig, Voit & Mayer, Ltd. *
>
> Two Prudential Plaza, Suite 4900 | Chicago, IL 60601-6745
>
> P: (312) 552-3491 | F: (312) 616-5700
>
> jgoldberg at leydig.com <mailto:jgoldberg at leydig.com> | www.leydig.com 
> <http://www.leydig.com/>
>
> The information contained in this communication is confidential and 
> may contain information that is privileged and/or exempt from 
> disclosure under applicable law.  If you have received this 
> communication in error, please notify me immediately and delete the 
> original and all copies of this communication.  Thank you.
>
>
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