Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence
| Published date | 22 March 2024 |
| Record Number | 2024-06126 |
| Citation | 89 FR 20321 |
| Court | Patent And Trademark Office |
| Section | Rules and Regulations |
Federal Register, Volume 89 Issue 57 (Friday, March 22, 2024)
[Federal Register Volume 89, Number 57 (Friday, March 22, 2024)]
[Rules and Regulations]
[Pages 20321-20324]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-06126]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2023-0054]
RIN 0651-AD73
Signature Requirements Related to Acceptance of Electronic
Signatures for Patent Correspondence
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is revising the rules of practice in patent cases to update the
signature rule to provide for the broader permissibility of electronic
signatures using third-party document-signing software, such as
DocuSign[supreg] and Acrobat[supreg] Sign, and more closely align
signature requirements with the rules of practice in trademark cases.
The revised rules will provide additional flexibility and convenience
to patent applicants and owners, practitioners, and other parties who
sign patent-related correspondence, and promote consistency by
establishing signature requirements which are common to both patent and
trademark matters.
DATES: This final rule is effective on March 22, 2024.
FOR FURTHER INFORMATION CONTACT: Mark Polutta, Senior Legal Advisor, at
571-272-7709; or Terry J. Dey, Legal Administrative Specialist, at 571-
272-7730, both of the Office of Patent Legal Administration; or to
[email protected].
SUPPLEMENTARY INFORMATION:
I. Background
The regulation at 37 CFR 1.4(d) sets forth the signature
requirements for patent correspondence. Section 1.4(d)(1) and (2) set
forth the requirements for handwritten signatures and S-signatures,
respectively. An S-signature is a signature that is inserted between
forward slash marks by the signer and is not a handwritten signature.
An S-signature must consist only of letters, or Arabic numerals, or
both, with appropriate spaces and commas, periods, apostrophes, or
hyphens for punctuation, and the signer's name must be printed or
typed, preferably immediately below or adjacent to the S-signature.
Section 1.4(d)(3) provides for a graphic representation of a
handwritten signature or an S-signature for correspondence submitted
electronically via the USPTO patent electronic filing system. The USPTO
has been accepting certain electronic signatures as graphic
representations pursuant to Sec. 1.4(d)(3), if the correspondence was
submitted via the USPTO patent electronic filing system. The signer
must personally make their own signature, regardless of what type of
signature is used.
Prior to the effective date of this final rule, the USPTO did not
permit patent correspondence to be electronically signed by methods
other than the electronic entry of S-signatures under Sec. 1.4(d)(2)
and the graphic representation method of Sec. 1.4(d)(3). Furthermore,
it only permitted the graphic representation method of Sec. 1.4(d)(3)
if the correspondence was being submitted via the USPTO patent
electronic filing system. In recent years, however, other methods of
electronic signature, such as methods using third-party software, have
become more prevalent, reliable, and secure. For example, some software
platforms include document-signing features with digital certificates
or authenticity trails for the electronic signatures, resulting in the
increased reliability and security of electronically generated
signatures.
To simplify and streamline the USPTO's processes for patent
applicants and owners, practitioners, and other parties who sign
patent-related correspondence and to more closely align the signature
requirements for patent and trademark correspondence, the USPTO is
adding Sec. 1.4(d)(4) as a new rule to provide an additional option
for electronic signatures in patent correspondence. In addition, this
new rule is aimed at addressing stakeholder input received, including
during multilateral forums such as IP5 and Trilateral, and is directed
towards increasing harmonization of practices and procedures amongst
intellectual property offices globally. More information about the IP5
and Trilateral forums is available at www.uspto.gov/ip-policy/patent-policy/ip5 and www.uspto.gov/ip-policy/patent-policy/patent-trilateral-activities.
Under this new rule, ``the person named as the signer'' may sign
patent correspondence electronically using any form of electronic
signature specified by the Director. Moreover, the electronic signature
under newly added Sec. 1.4(d)(4) may be used whether the
correspondence is being submitted via the USPTO patent electronic
filing system, mailed, faxed, or hand delivered. At this time, the
electronic signatures specified by the Director in newly added Sec.
1.4(d)(4) consist of electronic signatures generated via third-party
document-signing software that meet the requirements outlined in
section II of this preamble. Signatures created using other types of
software, such as graphic editing software, are not acceptable under
newly added Sec. 1.4(d)(4).
II. Requirements for Additional Electronic Signatures
Subsection II(A) provides the requirements for third-party
document-signing software, and subsection II(B) provides the USPTO
procedures for determining whether electronically signed patent
correspondence complies with newly added Sec. 1.4(d)(4). Taken
together, the subsections set out when patent correspondence signed
using third-party document-signing software may be accepted under newly
added Sec. 1.4(d)(4). The final rule does not change any other
requirements for signatures on patent correspondence, including that a
signature must be personally inserted or generated by the named signer.
Another person may not use document-signing software to create or
generate the electronic signature of the named signer. The final rule
also does not change which USPTO personnel have the responsibility for
reviewing signatures on patent correspondence. This final rule is
effective on publication and supersedes any previous USPTO guidance on
this topic to the extent there are any conflicts.
A. Requirements for Third-Party Document-Signing Software
Parties using third-party document-signing software must ensure
that the underlying software meets the following requirements:
(1) The software must be specifically designed to generate an
electronic signature and preserve signature data for later inspection
in the form of a digital certificate, token, or audit trail. USPTO
personnel may presume that the document-signing software preserves
signature data for later inspection in the required form, unless the
Office of the Deputy Commissioner for Patents (Legal) notifies USPTO
personnel otherwise.
[[Page 20322]]
(2) The 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.
The USPTO recommends that the software generate the date on which
the signature was applied. While providing a date is not generally
required in patent matters, the date is required for electronic
signatures signed using document-signing software in trademark matters
before the USPTO. Using software that generates the date will benefit
practitioners that work in both patent and trademark matters, as the
signatures will be acceptable in both patents and trademarks at the
USPTO. Regardless of the date the correspondence was signed, the date
of receipt will be based on Sec. Sec. 1.6 through 1.10.
B. USPTO Procedures
When reviewing a signature on a document that was generated using
document-signing software, USPTO personnel must first determine
compliance with other signature requirements, such as whether it was
signed by a proper person (e.g., Sec. 1.33(b)). The Manual of Patent
Examining Procedure (MPEP) (9th Edition, Rev. 07.2022, February 2023)
provides more information on signatures by proper parties at section
714.01. Submissions must be personally signed by the individual
identified in the signer name field. A person may not use document-
signing software to enter or electronically generate someone else's
signature. See newly added Sec. 1.4(d)(4), redesignated Sec.
1.4(d)(5)(ii), and MPEP 502.02. The electronic signatures of newly
added Sec. 1.4(d)(4) do not require the forward slashes of Sec.
1.4(d)(2).
USPTO personnel must ensure that the signature block for a
signature under newly added Sec. 1.4(d)(4) meets the following
requirements:
(1) Name. The name of each person who signed the document must be
presented in printed or typed form, preferably immediately below or
adjacent to the signer's adopted signature. The signer's name must be
reasonably specific enough so that the identity of the signer can be
readily recognized.
(2) Practitioner registration number. The registration number of
each patent practitioner (Sec. 1.32(a)(1)) who signed the document
pursuant to Sec. 1.33(b)(1) or (2), must be supplied, either as part
of the signature or immediately below or adjacent to the signature. The
design patent practitioner status of each design patent practitioner
must be indicated by placing the word ``design'' (in any format)
adjacent to the signature.
(3) Acceptable software type. The software used by the signer must
meet the requirements for third-party document-signing software listed
in Section II(A).
If the submission is signed by a proper party and all the elements
listed above are satisfied, USPTO personnel may presume the signature
meets the requirements of newly added Sec. 1.4(d)(4) for an acceptable
electronic signature, unless directed otherwise by the Office of the
Deputy Commissioner for Patents (Legal). If one or more of these
requirements are not met, the signature block is noncompliant.
Notwithstanding the provisions above, 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.
The MPEP will be updated in due course to incorporate these
requirements.
Discussion of Specific Rules
The following is a discussion of the amendments to 37 CFR part 1.
Section 1.4: The introductory text of Sec. 1.4(d)(1) is revised to
provide to a reference to redesignated Sec. 1.4(d)(5) and delete a
reference to Sec. 1.4(e), which was reserved in a prior rulemaking.
New Sec. 1.4(d)(4) provides an additional option for electronic
signatures in patent correspondence. The electronic signatures of newly
added Sec. 1.4(d)(4) must be of a form specified by the Director and
personally entered by the person named as the signer on the
correspondence being filed for a patent application, patent or other
patent proceeding in the USPTO. Newly added Sec. 1.4(d)(4)(i) requires
a patent practitioner (Sec. 1.32(a)(1)), signing pursuant to Sec.
1.33(b)(1) or (2), to supply their registration number either as part
of the electronic signature or immediately below or adjacent to the
electronic signature. Newly added Sec. 1.4(d)(4)(i) also requires a
design patent practitioner to additionally indicate their design patent
practitioner status by placing the word ``design'' (in any format)
adjacent to the electronic signature. Newly added Sec.
1.4(d)(4)(ii)(A) requires the signer's name to be presented in printed
or typed form, preferably immediately below or adjacent to the
electronic signature. Newly added Sec. 1.4(d)(4)(ii)(B) requires the
signer's name to be reasonably specific enough so that the identity of
the signer can be readily recognized.
The provisions pertaining to certifications of prior Sec.
1.4(d)(4) have been redesignated as Sec. 1.4(d)(5). Redesignated Sec.
1.4(d)(5)(ii) has been revised to include references to newly added
Sec. 1.4(d)(4) and gender specificity has been removed.
The provisions pertaining to forms of prior Sec. 1.4(d)(5) have
been redesignated as Sec. 1.4(d)(6).
Rulemaking Considerations
A. Administrative Procedure Act: The changes proposed by this
rulemaking involve rules of agency practice and procedure, and/or
interpretive rules, and do not require notice-and-comment rulemaking.
See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015)
(explaining that interpretive rules ``advise the public of the agency's
construction of the statutes and rules which it administers'' and do
not require notice and comment when issued or amended); Cooper Techs.
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (5 U.S.C. 553,
and thus 35 U.S.C. 2(b)(2)(B), do not require notice-and-comment
rulemaking for ``interpretative rules, general statements of policy, or
rules of agency organization, procedure, or practice''); and JEM
Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994)
(explaining that rules are not legislative because they do not
``foreclose effective opportunity to make one's case on the merits'').
In addition, the Office finds good cause pursuant to authority at 5
U.S.C. 553(b)(B), to adopt the change to Sec. 1.4 without prior notice
and an opportunity for public comment, as such procedures would be
unnecessary and contrary to the public interest. This final rule
provides another means for patent applicants and owners, practitioners,
and other parties who sign patent-related correspondence to provide a
signature. It merely involves rules of agency procedure or practice
within the meaning of 5 U.S.C. 553(b)(A) and is a non-substantive
change to the regulations. Accordingly, this final rule is adopted
without prior notice and opportunity for public comment. Furthermore,
the Office finds good cause to waive the 30-day delay in effectiveness
period, as provided by 5 U.S.C. 553(d)(3), because this final rule
would promote harmonization of signature requirements to reduce
confusion and increase convenience for impacted parties as set forth
here.
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public
[[Page 20323]]
comment are not required pursuant to 5 U.S.C. 553 (or any other law),
neither a Regulatory Flexibility Act analysis nor a certification under
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See
5 U.S.C. 605(b).
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993), as amended by E.O. 14094 (April
6, 2023).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The USPTO has complied with Executive Order 13563 (January 18,
2011). Specifically, and as discussed above, the USPTO has, to the
extent feasible and applicable: (1) made a reasoned determination that
the benefits justify the costs of the rule; (2) tailored the rule to
impose the least burden on society consistent with obtaining the
regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public
in an open exchange of information and perspectives among experts in
relevant disciplines, affected stakeholders in the private sector, and
the public as a whole, and provided online access to the rulemaking
docket; (7) attempted to promote coordination, simplification, and
harmonization across government agencies and identified goals designed
to promote innovation; (8) considered approaches that reduce burdens
and maintain flexibility and freedom of choice for the public; and (9)
ensured the objectivity of scientific and technological information and
processes.
E. Executive Order 13132 (Federalism): This rulemaking pertains
strictly to federal agency procedures and does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 44, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) have substantial direct effects on one or more Indian
tribes, (2) impose substantial direct compliance costs on Indian tribal
governments, or (3) preempt tribal law. Therefore, a Tribal Summary
Impact Statement is not required under Executive Order 13175 (November
6, 2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (February 55, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (April
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (March 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO
will submit a report containing the rule and other required information
to the United States Senate, the United States House of
Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this rulemaking are not expected
to result in an annual effect on the economy of $100 million or more, a
major increase in costs or prices, or significant adverse effects on
competition, employment, investment, productivity, innovation, or the
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this
rulemaking is not a ``major rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking do not involve a Federal intergovernmental mandate that
will result in the expenditure by state, local, and tribal governments,
in the aggregate, of $100 million (as adjusted) or more in any one
year, or a Federal private sector mandate that will result in the
expenditure by the private sector of $100 million (as adjusted) or more
in any one year, and will not significantly or uniquely affect small
governments. Therefore, no actions are necessary under the provisions
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act of 1969: This rulemaking will
not have any effect on the quality of the environment and is thus
categorically excluded from review under the National Environmental
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act of 1995: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions that involve the use of
technical standards.
O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of
1995 (44 U.S.C. 3501) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. This rulemaking does not involve any new information collection
requirements, or impact any existing information collection
requirements, that are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.).
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
has a valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, the USPTO amends 37 CFR
part 1 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. Amend Sec. 1.4 by:
0
a. Revising paragraph (d)(1) introductory text;
0
b. Redesignating paragraphs (d)(4) and (5) as paragraphs (d)(5) and
(6);
0
c. Adding new paragraph (d)(4);
0
d. Revising newly redesignated paragraph (d)(5)(ii); and
0
e. Removing the parenthetical authority citation at the end of the
section.
The revisions and addition read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
[[Page 20324]]
(d)(1) Handwritten signature. A design patent practitioner must
indicate their design patent practitioner status by placing the word
``design'' (in any format) adjacent to their handwritten signature.
Each piece of correspondence, except as provided in paragraphs (d)(2)
through (5) and (f) of this section, filed in an application, patent
file, or other proceeding in the Office that requires a person's
signature, must:
* * * * *
(4) Additional electronic signatures. Correspondence being filed in
the USPTO for a patent application, patent, or other patent proceeding
at the USPTO which requires a signature may be signed using an
electronic signature that is personally entered by the person named as
the signer and of a form specified by the Director.
(i) A patent practitioner (Sec. 1.32(a)(1)), signing pursuant to
Sec. 1.33(b)(1) or (2), must supply their registration number either
as part of the electronic signature or immediately below or adjacent to
the electronic signature. A design patent practitioner must
additionally indicate their design patent practitioner status by
placing the word ``design'' (in any format) adjacent to the electronic
signature.
(ii) The signer's name must be:
(A) Presented in printed or typed form preferably immediately below
or adjacent to the electronic signature; and
(B) Reasonably specific enough so that the identity of the signer
can be readily recognized.
(5) * * *
(ii) Certification as to the signature. The person inserting a
signature under paragraph (d)(2), (3), or (4) of this section in a
document submitted to the Office certifies that the inserted signature
appearing in the document is the person's own signature. 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. Violations of the certification as to the signature of
another or a person's own signature as set forth in this paragraph
(d)(5)(ii) may result in the imposition of sanctions under Sec.
11.18(c) and (d) of this chapter.
* * * * *
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2024-06126 Filed 3-21-24; 8:45 am]
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