Maiorana Patent Law, PA

What is an Electronic Signature?

Chris: Instead of using a pen to sign a physical piece of paper, we can send a PDF that is in an editable form. Then you can type in your signature using the keypad. The U.S. Patent Office has criteria for slash symbols. So a slash, then your name, then a slash (e.g. /signmyname/) on a PDF is sufficient for an electronic signature.

That seems a lot easier. Do you recommend it?

Chris: Sometimes we do. If an old-school pen and ink signature is available, we prefer that.

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Why?

Chris: Well, there's a lot of red tape with the electronic signature on the record keeping side. If you were going to electronically sign, say, a declaration for a patent application, you would put your e-signature on there and then you would save the document. Then you would email it to me. The U.S. Patent Office says the email has to come directly from you, not from a helper, or a secretary, or an admin, or anyone like that. [1] It has to come directly from you to me. If I have any question on the validity of it, I'm not supposed to accept it. So old-school, say Bill Gates had a thousand things to sign, he literally would have to send a thousand different emails to get those signed, where old-school he could have his secretary have a big conference room full of documents that he signs, and then she takes them away and takes care of them. You learn this as a Patent Lawyer in an Intellectual Property Law Firm. [2] [3]

A procedure to potentially save time might actually take more time, huh?

Chris: Yeah, that's right. It does seem weird. We did a seminar last month about big data and how companies are keeping track of things like your search criteria, things like that. We discovered folks are spending more time on things that used to be easy. Electronics and technology does move forward on a lot of things, but you have to make sure you're getting back what you need.

There's also an interesting concept on distribution of work that humans are pretty good at it. You do this part, I do that part, and then it works better for everybody. You've probably seen where if you have a helper, sometimes you can go more than twice as fast. With this electronic signature it kind of goes backwards. Each person has to do basic tasks and they're not allowed to distribute that work.

Have you ever seen a signature get challenged?

Chris: Not directly. But the new themes at the US patent office are they're not going to check a lot of things in your file. They let it go through, and it could be raised in litigation later. There are a lot of different things that happened and the electronic signatures are one of those things. You could have a potential time bomb on your hands.

That brings up another question. Less things get resolved by the patent office?

Chris: Yeah. When they revised the rules after the America Invents Act they took away a lot of the things that they used to check, and sometimes send back and say, "This isn't good enough. We need you to do a little more work." Now what happens is, you don't know. In a Patent Interference that we won, we made arguments about the declaration in the file that the other side used to get past the inventor declaration. To get past where an inventor doesn't sign, you normally have to make a showing that says, "We made our best efforts to find the inventor. He refused to sign, so we're moving forward as the assignee."

With the new rules, you don't have to make that showing. They trust that you did it. If you didn’t do the showing, and it comes up later, it could be a problem. In the case I was talking about, the patent board looked at the fact that there was a petition, and someone rubber stamped it. Down the road, at potentially a lot more expensive stage in the game, you might have to deal with pretty basic issues.

Does that help or hurt a Boutique IP Law Firm like Maiorana, P.C.?

Chris: I think it helps us because we go out of our way to do things by the book. We’re very particular. We don't need to cut corners on procedures, especially procedures that are required. If that's what the patent office wants, that's what we're going to do. If we always do things the right way then, if we're in a deposition down the road, and some hostile attorney is questioning minor things, we can say, "We always do it by the book." I have seen other places cutting corners on certain things, especially someone else emailing the signatures over on an e-signature, or a secretary signing for an attorney. We never do that. We always do it the way the rules say to do it.

What about the application data sheet (ADS)? Do you electronically sign those?

Chris: The application data sheet is the form we file along with a new patent application. The e-signature is from the patent attorney filing the application. That's a form an admin will prepare ahead of time with no signature. Part of our final procedure is, I'll get the file before we go to file in PAIR, or one of my associates will. We open the PDF; we (the Patent Lawyer responsible for the filing) will electronically sign the document, so we know the patent attorney actually signed it. We are stuck with the electronic signature provision for the application data sheet, so the patent office can upload that into their system, and pull the inventors' names and information directly from that form. There's no re-typing. With complicated names, it's easy to mistype a letter or two. This way the ADS has it. We proof everything thoroughly. The patent office gets what we send with no transcription errors.

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