All About the Signatures – Requirements for Filings Made with the USPTO
In the past few years, signatures have become a hot button issue with OED, spawning dozens of investigations into patent and trademark practitioners regarding their practices. While we recently covered some best practices related to signatures, the present COVID-19 pandemic has ushered in a new set of difficulties in complying with signature rules, potentially deserving of a refresher of the rules. For example, many clients may not have access to a printer or scanner at home, and during a shelter-in-place order, they may not have access to their office or other facility to scan a document. Additionally, clients may be more likely to request that something be “taken care of” while they deal with more pressing issues related to keeping their business afloat. Nevertheless, whether it is a client or attorney signature, the USPTO is watching—it must be signed by the name signatory.
The USPTO’s regulations provide that documents requiring a person’s signature must be an original or graphic of a signature, whether handwritten or an “S-signature,” with certain exceptions. See 37 CFR § 1.4(d). The regulations further explain that such a signature must be personally signed or entered. Id. When stopping there, many competent attorneys recognize that The Electronic Signatures in Global and National Commerce Act specifically preempts many laws and emphasizes the validity of signatures. They also study agency law and surmise that an attorney has authority to act on behalf of the principal (i.e., sign on their behalf). See Restat 3d of Agency, § 2.01.
States, similarly, appear to allow a variation of signatures, including those that come in electronic form. Moreover, jurisdictions have authorized the placement of attorney signatures on documents by others. See, e.g., FL. Bar Ethics Op. 87-11 (Reconsidered Jun. 27, 2014) (“…the committee is of the opinion regarding electronic signatures alone that a lawyer may permit a nonlawyer employee to affix the lawyer’s electronic signature…”); NC. Bar Ethics Op. 13 (2006) (“…if exigent circumstances require the signing of a pleading in the lawyer's absence, a lawyer may delegate this task to a paralegal or other nonlawyer staff only if 1) the signing of a lawyer's signature by an agent of the lawyer does not violate any law, court order, local rule, or rule of civil procedure, 2) the responsible lawyer has provided the appropriate level of supervision under the circumstances, and 3) the signature clearly discloses that another has signed on the lawyer's behalf.”).
Nevertheless, the substantive trademark regulations provide further details—such as who is the proper person to sign in a trademark application, and further parameters regarding electronic signatures. See 37 CFR § 2.193. The Trademark Manual of Examining Procedure (“TMEP”) further describes that “[i]It is unacceptable for a person to sign another person’s name to a verification pursuant to a general power of attorney.” See TMEP Ch. 804.04 (Oct. 2018) (internal citations omitted). Moreover, “[t]he rules do not provide authority for an attorney to sign another person's declaration.” Id. The TMEP elsewhere explains that: “[a]nother person (e.g., paralegal, legal assistant, secretary) may not sign the name of an attorney or other authorized signatory.” Id at Ch. 611.01(b) (internal citations omitted). Similarly, the Manual of Patent Examining Procedure (“MPEP”) provides similar guidance for patent matters. See MPEP 9th Ed. Ch. 502.02 (Jan. 2018).
While in years past, many practitioners could argue that they were unaware of the signature requirements, the USPTO has begun to publicize the issue. For example, unwitting practitioners have been disciplined for signing the names of others. See In re Shia, Proceeding No. D2014-31 (practitioner disciplined for inter alia signing the names of trademark applicants). More recently, practitioners have been investigated for unwittingly allowing non-practitioners to sign the names of clients. See In re Crabtree, Proceeding Nos. D2018-31 and D2018-47 (trademark practitioner excluded on consent for allegations related to failing to supervise non-practitioners who cut and pasted signatures on trademark applications); see also In re Sweeney, Proceeding No. D2019-33 (trademark practitioner reprimanded for allowing trademark applications to be signed through a “workflow”). Notably, the signature violations in most OED investigations involve the use of e-signatures or s-signatures, but occasionally may include handwritten and other signatures. See In re Druce, Proceeding No. D2014-13 (patent practitioner disciplined for, inter alia, actions of his non-practitioner assistant that included signing the practitioner’s signature to patent filings made with the USPTO). Published OED cases indicate that OED may be monitoring internet protocol (IP) addresses to discern the location from where filings are submitted, which may place a practitioner at risk for an OED investigation.
Therefore, practitioners should undoubtedly review and audit their operations to ensure all signatures comport with the rules. That means: (1) only the named signatory should enter their own s-signature; and (2) if the attorney believes he or she is authorized to sign a document to verify facts on behalf of a client, not only should they do it personally, but they should do so only after a verification of the facts. Thus, whether we are working remotely through COVID-19, or safely back in an office environment, practitioners should be mindful of the USPTO regulations, as well as the guidance provided by the TMEP and MPEP, and ensure that their conduct comports with it.
For additional information related to understanding how best to respond and protect yourself during an OED investigation regarding signature issues, contact Carr Butterfield, LLC at 503-635-5244.
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