RESOLVED, that the American Intellectual Property Law Association (AIPLA) supports efforts to encourage IP offices around the world to accept and recognize e-signatures by all parties for office correspondence, declarations, powers of attorney, assignments, and any other documents that require signing, where prevailing laws permit.  AIPLA encourages the IP offices to allow the use of e-signatures to help alleviate burdens associated with both hand-written signatures and in-person authentication.  AIPLA supports efforts of the USPTO to work with the IP5 group to establish consistent rules and guidelines regarding the requirements of IP offices around the world for the acceptance of electronic signatures on documents utilized in intellectual property prosecution and for assignment of intellectual property rights.

Past Actions

None known in AIPLA.  IPO just passed a similar resolution.

Discussion

The need for world-wide acceptance of electronic signatures has become increasingly important due to the challenges that COVID-19 has created relating to obtaining and authenticating signatures.  Electronic signatures have been a topic of interest to AIPLA members for many years, and numerous members have been using electronic signatures for USPTO documents. However, additional members, particularly those operating and/or filing patents internationally, have not found a way to effectively use electronic signatures as a standard practice; even though some of those members, including large companies, have moved to near-exclusive use of electronic signatures on documents outside of intellectual property. 

As with many other business practices, the global pandemic has highlighted cumbersome or inefficient business operations. High among those is obtaining original "wet" signatures on patents/IP-related documents, sometimes in the presence of a notary, and mailing or couriering the signed documents — operations that were manageable when most employees were in shared offices but became tedious (and in the case of notarization – complex, time consuming, and risky from a health perspective) with many employees working from home. As a result, numerous companies have expressed interest in understanding, and hopefully resolving the barriers to broadly adopting electronic signatures for patent documents.

Patent filers face two primary issues: (1) whether all necessary entities (primarily IP offices) will accept electronic signatures; (2) the electronic signature characteristics, and verifiability, of the signatures that will be accepted (with a related issue regarding proof of identity through notarization). The USPTO is a leader on the first issue, in allowing S-signatures by inventors and other parties; while many (perhaps most) other IP offices limit electronic signatures to licensed practitioners.

Even in the U.S., other types of documents, such as assignments, present additional challenges, as effectiveness of the assignment contract is influenced by individual state laws regarding such contracts. While a basic S-signature (signature between slashes) is broadly permitted by federal statute, individual states impose different standards, such as differing presumptions of the validity of electronic signatures on contracts based upon digital properties of the signature, such as digital tamper-sealing of the signature, association with a third party identification, etc. Many examples of advanced digital signatures that will assure signature validity include additional images and/or alphanumeric characters not currently accepted under USPTO guidelines. Bias for more advanced digital signatures exists in other countries. As an example, also accompanying this letter is an announcement of interim procedures of KIPO in accepting electronic signatures on powers of attorney and for electronic notarization of the powers, which identifies two categories of electronic signatures accepted). 

These different tiers of electronic signatures are relied upon in many other countries, including the other members of the IP5. Each of the other member countries and the EU have multitiered standards for accepting electronic signatures for most types of commercial documents-- but transfers of intellectual property are excluded. The US is the only member of the IP5 to expressly accept electronic signatures on patent assignments. Though, anecdotally, KIPO may now also be accepting electronic signatures on assignments, though outside the scope of the attached notice.

Given the current lack of international acceptance of electronic signatures on patent assignments, it appears likely that initial progress toward international adoption would likely be tied to relatively advanced digital signatures providing enhanced verification and audit trails. We also note there may be uncertainty under the Paris Convention surrounding use of electronic signatures on documents transferring the right of priority, since sometimes, IP offices do not necessarily defer to the law of another (“home”) jurisdiction as to such transfers. It may be difficult to resolve such questions broadly under the Paris Convention, but perhaps it would be possible to achieve resolution at least for PCT filings?

It is also noted that requirements for notarization of patent assignments could be problematic. Even in the U.S., few states allow for online notarization and for those that do, the standards are state-specific. Early in the pandemic, New York temporarily allowed online notarization such as through video conference, to avoid in-person appearances (though that order has expired). Texas has issued orders allowing notaries to receive an additional certification for performing notarization by videoconference but restrict use of online notarization to limited categories of documents, not including IP assignments. A strong case can be made that an advanced digital signature providing authentication of the signer can be at least as reliable, if not more so, than personal appearance before a notary (or equivalent).

The following resolution was adopted by IPO [date/month]: “Resolved, that IPO advocates, where the national laws permit, that IP offices accept and recognize simple e-signatures for office correspondence, declarations, powers of attorney, assignments, and any other e-signatures. IPO encourages the IP offices to allow IP owners the option to use advanced e-signatures to help alleviate burdens associated with in-person authentication.”


Conclusion

The shift to remote work, expedited by the COVID-19 worldwide pandemic, has highlighted the need for universal acceptance of electronic signatures.  AIPLA support of the effort to encourage patent offices to accept electronic signatures is appropriate.