USPTO and EPO update: both IPOs have recently broadened the types of electronic signatures allowed for correspondence .

This spring, both USPTO and EPO have changed their rules regarding the use of electronic signatures, with electronic signatures now being accepted for patent correspondence at the USPTO, and for specific contracts and declarations at the EPO. 

As of 22 March 2024, the United States Patent and Trademark Office (USPTO) have issued a final rule meaning that patent correspondence can be electronically signed using third-party document signing software, provided they follow issued specifications. This change means that the requirements for signatures for patent cases now more closely align to the signature requirements already established for trade mark cases.  

Previously, the USPTO did not permit any patent correspondence to be electronically signed by methods, other than by the entry of electronic S-signatures (a typed electronic signature, usually encased between forward slashes, that legally replaces a wet signature on a given document) or entry of a graphic representation (such as an electronic scan of a wet signature). Entry of a graphic representation was further only permitted when submitting via the USPTO patent electronic filing system.  

Following the change on 22 March 2024, there is now an additional option for electronic signatures in patent correspondence – electronic signatures using third-party document signing software. The requirements for the third-party document signing software are as follows1: 

  • 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; and 

  • 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 by the third-party document signing software. 

It is further recommended that the software should also generate the date on which the signature was applied, but this is not an absolute requirement. 

In similar news, in line with a Decision of the President of the EPO dated 9 February 2024 and as of 1 April 2024, the European Patent Office (EPO) has begun to accept digital signatures on contracts and declarations submitted as evidence to support2 

  • requests for the registration of a transfer of rights (under Rules 22 and 85 EPC); and  

  • requests for the registration or cancellation of licenses or other rights (under Rules 23 and 24 EPC) for European Patent (EP) and Unitary Patent (UP) procedures. 

Previously, handwritten signatures, facsimile signatures, and text string signatures were the only accepted forms of signatures in these matters.  

Following the change, digital signatures are now accepted provided that3 

  • they use Public Key Infrastructure (PKI) technology; or  

  • that do not use PKI technology, provided they are filed electronically, are not infected with a computer virus, and do not contain other malicious software. 

These changes should increase the ease with which correspondence can be conducted with the USPTO and EPO, providing greater options for signing important documents. 

 – Elly Meyers

Source: https://www.federalregister.gov/documents/2024/03/22/2024-06126/signature-requirements-related-to-acceptance-of-electronic-signatures-for-patent-correspondence

 

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