[Patentpractice] e-signatures using document-signing software

Wed Jan 1 21:17:36 UTC 2025

Hi David (and anyone else interested in opining),

Happy new year! Following up on my initial inquiry, there is a quirk with Adobe Sign.

Adobe Sign only uses a signature envelope--which consists of a line and a small printed stamp beneath the signature with the name of the signatory, date, and time--when a signature is created within Adobe. There is no signature envelope when a signature is uploaded instead.

Under 37 C.F.R. § 1.4(d)(4), the document-signing software “must result in the signature page or electronic submission form bearing an indication that the page or form was generated or electronically signed using document-signing software.” Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence, 89 Fed. Reg. 20321 (March 22, 2024). When uploading an image of a signature, Adobe Sign does not do this.

However, an uploaded image of a signature would likely be a “graphic representation of a handwritten signature” that is permitted under 37 C.F.R. § 1.4(d)(3).

I am probably overthinking this, but it doesn’t seem clear to me whether it is necessary to satisfy the requirements of Rule 1.4(d)(4) when document-signing software is used to generate a signature that otherwise satisfies Rule 1.4(d)(3).

Thanks in advance for your input!

Best,
Umair

-----
Umair A. Qadeer
Registered Patent Attorney
Qadeer LLC
312.248.3020
umair at qadeerip.com
www.qadeerip.com

CONFIDENTIALITY NOTICE: This e-mail, and any attachments thereto, is intended only for the designated recipient. It may contain legally privileged or confidential information and may be subject to the attorney-client privilege or other privilege. If you have received this e-mail in error, please immediately return it to the sender, delete it, and destroy any copies. If you have any questions, please contact the sender, Umair A. Qadeer, by e-mail at umair at qadeerip.com or by telephone at (312) 248-3020.

Sent from my T-Mobile 5G Device

-------- Original message --------
From: "Umair A. Qadeer" <umair at qadeerip.com>
Date: 1/1/25 11:11 AM (GMT-06:00)
To: patentpractice at oppedahl-lists.com
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: RE: [Patentpractice] e-signatures using document-signing software

Hi David,

Thanks for your reply, and happy new year! I appreciate the confirmation. I will be saving the validations, of course.

With respect to assignments, I do get them notarized as a practice default, but some clients are uninterested or unwilling to go through the extra step. If the non-notarized assignment relates to a U.S. only filing, I warn them of the risks and then proceed.

Best,
Umair

-----
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>

CONFIDENTIALITY NOTICE: This e-mail, and any attachments thereto, is intended only for the designated recipient. It may contain legally privileged or confidential information and may be subject to the attorney-client privilege or other privilege. If you have received this e-mail in error, please immediately return it to the sender, delete it, and destroy any copies. If you have any questions, please contact the sender, Umair A. Qadeer, by e-mail at umair at qadeerip.com<mailto:umair at qadeerip.com> or by telephone at (312) 248-3020.

From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Tuesday, December 31, 2024 8:25 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Umair A. Qadeer <umair at qadeerip.com>
Subject: Re: [Patentpractice] e-signatures using document-signing software

Yup, the rule and comments mean what they say.  For oath/declaration and for Rule 131/132 declarations, "reasonable basis to believe" between your ears is good enough for PTO purposes.   If the affiant might repudiate sometime in the future, be sure to save the validation somewhere.

ASSIGNMENTS are a whole different thing.  Please get your assignments notarized.  Docusign doesn't cut it.

On Tue, Dec 31, 2024, 6:43 PM Umair A. Qadeer via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
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

-----
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>

CONFIDENTIALITY NOTICE: This e-mail, and any attachments thereto, is intended only for the designated recipient. It may contain legally privileged or confidential information and may be subject to the attorney-client privilege or other privilege. If you have received this e-mail in error, please immediately return it to the sender, delete it, and destroy any copies. If you have any questions, please contact the sender, Umair A. Qadeer, by e-mail at umair at qadeerip.com<mailto:umair at qadeerip.com> or by telephone at (312) 248-3020.

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250101/f30e2b32/attachment.html>