Electronic signatures have soared in popularity as a result of social distancing measures related to COVID-19. While such signatures are generally accepted by the United States Patent and Trademark Office (USPTO), Wilson Sonsini urges clients to be wary when using these signatures. Most patents are eventually filed outside the United States, and the use of electronic signatures may create risks for these filings.
Papers Filed at the USPTO
The USPTO does accept DocuSign and equivalent electronic signatures, but only for papers submitted to the USPTO electronically.1 As an alternative to a "wet" handwritten signature, inventors and applicants can also use the USPTO "S-signature" option on any paper filed at the USPTO.2 An S-signature is a signature (name) inserted between forward slash marks, but not a handwritten signature. Please consult with our Wilson Sonsini patent team regarding any questions about the S-Signature format.
Assignments
The European Patent Office (EPO) and UK Intellectual Property Office (UK IPO) typically do not require the filing of assignment documents unless there is doubt in the issue, such as where the applicant of the priority applications differs from that listed in the EP or UK filing. In that case, the EPO and UK IPO may ask for evidence of the assignment, which should have been executed prior to the Convention filing (e.g., the PCT filing). This applies to U.S. provisional applications as well, particularly where inventors are listed on the provisional and the PCT is filed in the true applicant's name. In such a case, an assignment should be executed before filing the PCT.
The EPO will not accept electronic signatures on assignments.3 In the United Kingdom, at least one decision of the UK courts has indicated that an electronic signature may be given the same weight as a handwritten signature, but the law is unsettled and may vary from country to country. Further, if a UK or another national court were to decide the validity in the context of a patent derived from a European patent, there is a significant chance that it would adopt the EPO's stringent rejection of electronic signatures for non-procedural acts, which include assignments.
Numerous other countries and jurisdictions have rejected the use of electronic signatures for assignments. These include—but are not limited to—China, Japan, Korea, Taiwan, Mexico, Eurasia, Guatemala, El Salvador, Honduras, Nicaragua, Costa Rica, Panama, Columbia, Dominican Republic, Argentina, Chile, Peru, Malaysia, Indonesia, Philippines, Vietnam, and Thailand.
Guidance
Recognizing the importance of handwritten signatures for filings outside of the United States, Wilson Sonsini urges clients to obtain wet signatures for all assignments, at least where there is any chance of filing an application outside of the United States. In circumstances where this is not feasible, it may be wise to obtain electronic signatures and abstain from recording until wet signatures are attainable.
[1] 37 CFR § 1.4(d)(3).
[2] 37 CFR § 1.4(d)(2).
[3] cf. Rule 2(2) EPC; Article 10 of the Decision of the President of the EPO dated 9 May 2018 concerning electronic filing of documents (OJ EPO 2018, A45); Decision of the President dated 12 July 2007 concerning the electronic signatures, data carriers, and software to be used for the electronic filling of patent applications and electronic documents, Special Edition No. 3, OJ EPO 2007, A.5.
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