Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence, 20321-20324 [2024-06126]

Download as PDF Federal Register / Vol. 89, No. 57 / Friday, March 22, 2024 / Rules and Regulations Issued at Washington, DC, under authority delegated at 49 CFR part 1.101. Great Lakes St. Lawrence Seaway Development Corporation. Carrie Lavigne, Chief Counsel. [FR Doc. 2024–06084 Filed 3–21–24; 8:45 am] BILLING CODE 4910–61–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 1 [Docket No. PTO–P–2023–0054] RIN 0651–AD73 Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence United States Patent and Trademark Office, Department of Commerce. ACTION: Final rule. AGENCY: The United States Patent and Trademark Office (USPTO or Office) is revising the rules of practice in patent cases to update the signature rule to provide for the broader permissibility of electronic signatures using third-party document-signing software, such as DocuSign® and Acrobat® Sign, and more closely align signature requirements with the rules of practice in trademark cases. The revised rules will provide additional flexibility and convenience to patent applicants and owners, practitioners, and other parties who sign patent-related correspondence, and promote consistency by establishing signature requirements which are common to both patent and trademark matters. DATES: This final rule is effective on March 22, 2024. FOR FURTHER INFORMATION CONTACT: Mark Polutta, Senior Legal Advisor, at 571–272–7709; or Terry J. Dey, Legal Administrative Specialist, at 571–272– 7730, both of the Office of Patent Legal Administration; or to PatentPractice@ uspto.gov. SUMMARY: SUPPLEMENTARY INFORMATION: ddrumheller on DSK120RN23PROD with RULES1 I. Background The regulation at 37 CFR 1.4(d) sets forth the signature requirements for patent correspondence. Section 1.4(d)(1) and (2) set forth the requirements for handwritten signatures and Ssignatures, respectively. An S-signature is a signature that is inserted between forward slash marks by the signer and is not a handwritten signature. An S- VerDate Sep<11>2014 17:20 Mar 21, 2024 Jkt 262001 signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the signer’s name must be printed or typed, preferably immediately below or adjacent to the Ssignature. Section 1.4(d)(3) provides for a graphic representation of a handwritten signature or an S-signature for correspondence submitted electronically via the USPTO patent electronic filing system. The USPTO has been accepting certain electronic signatures as graphic representations pursuant to § 1.4(d)(3), if the correspondence was submitted via the USPTO patent electronic filing system. The signer must personally make their own signature, regardless of what type of signature is used. Prior to the effective date of this final rule, the USPTO did not permit patent correspondence to be electronically signed by methods other than the electronic entry of S-signatures under § 1.4(d)(2) and the graphic representation method of § 1.4(d)(3). Furthermore, it only permitted the graphic representation method of § 1.4(d)(3) if the correspondence was being submitted via the USPTO patent electronic filing system. In recent years, however, other methods of electronic signature, such as methods using thirdparty software, have become more prevalent, reliable, and secure. For example, some software platforms include document-signing features with digital certificates or authenticity trails for the electronic signatures, resulting in the increased reliability and security of electronically generated signatures. To simplify and streamline the USPTO’s processes for patent applicants and owners, practitioners, and other parties who sign patent-related correspondence and to more closely align the signature requirements for patent and trademark correspondence, the USPTO is adding § 1.4(d)(4) as a new rule to provide an additional option for electronic signatures in patent correspondence. In addition, this new rule is aimed at addressing stakeholder input received, including during multilateral forums such as IP5 and Trilateral, and is directed towards increasing harmonization of practices and procedures amongst intellectual property offices globally. More information about the IP5 and Trilateral forums is available at www.uspto.gov/ippolicy/patent-policy/ip5 and www.uspto.gov/ip-policy/patent-policy/ patent-trilateral-activities. Under this new rule, ‘‘the person named as the signer’’ may sign patent correspondence electronically using any PO 00000 Frm 00019 Fmt 4700 Sfmt 4700 20321 form of electronic signature specified by the Director. Moreover, the electronic signature under newly added § 1.4(d)(4) may be used whether the correspondence is being submitted via the USPTO patent electronic filing system, mailed, faxed, or hand delivered. At this time, the electronic signatures specified by the Director in newly added § 1.4(d)(4) consist of electronic signatures generated via third-party document-signing software that meet the requirements outlined in section II of this preamble. Signatures created using other types of software, such as graphic editing software, are not acceptable under newly added § 1.4(d)(4). II. Requirements for Additional Electronic Signatures Subsection II(A) provides the requirements for third-party documentsigning software, and subsection II(B) provides the USPTO procedures for determining whether electronically signed patent correspondence complies with newly added § 1.4(d)(4). Taken together, the subsections set out when patent correspondence signed using third-party document-signing software may be accepted under newly added § 1.4(d)(4). The final rule does not change any other requirements for signatures on patent correspondence, including that a signature must be personally inserted or generated by the named signer. Another person may not use document-signing software to create or generate the electronic signature of the named signer. The final rule also does not change which USPTO personnel have the responsibility for reviewing signatures on patent correspondence. This final rule is effective on publication and supersedes any previous USPTO guidance on this topic to the extent there are any conflicts. A. Requirements for Third-Party Document-Signing Software Parties using third-party documentsigning software must ensure that the underlying software meets the following requirements: (1) 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. USPTO personnel may presume that the document-signing software preserves signature data for later inspection in the required form, unless the Office of the Deputy Commissioner for Patents (Legal) notifies USPTO personnel otherwise. E:\FR\FM\22MRR1.SGM 22MRR1 20322 Federal Register / Vol. 89, No. 57 / Friday, March 22, 2024 / Rules and Regulations ddrumheller on DSK120RN23PROD with RULES1 (2) 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 using document-signing software. The USPTO recommends that the software generate the date on which the signature was applied. While providing a date is not generally required in patent matters, the date is required for electronic signatures signed using document-signing software in trademark matters before the USPTO. Using software that generates the date will benefit practitioners that work in both patent and trademark matters, as the signatures will be acceptable in both patents and trademarks at the USPTO. Regardless of the date the correspondence was signed, the date of receipt will be based on §§ 1.6 through 1.10. B. USPTO Procedures When reviewing a signature on a document that was generated using document-signing software, USPTO personnel must first determine compliance with other signature requirements, such as whether it was signed by a proper person (e.g., § 1.33(b)). The Manual of Patent Examining Procedure (MPEP) (9th Edition, Rev. 07.2022, February 2023) provides more information on signatures by proper parties at section 714.01. Submissions must be personally signed by the individual identified in the signer name field. A person may not use document-signing software to enter or electronically generate someone else’s signature. See newly added § 1.4(d)(4), redesignated § 1.4(d)(5)(ii), and MPEP 502.02. The electronic signatures of newly added § 1.4(d)(4) do not require the forward slashes of § 1.4(d)(2). USPTO personnel must ensure that the signature block for a signature under newly added § 1.4(d)(4) meets the following requirements: (1) Name. The name of each person who signed the document must be presented in printed or typed form, preferably immediately below or adjacent to the signer’s adopted signature. The signer’s name must be reasonably specific enough so that the identity of the signer can be readily recognized. (2) Practitioner registration number. The registration number of each patent practitioner (§ 1.32(a)(1)) who signed the document pursuant to § 1.33(b)(1) or (2), must be supplied, either as part of the signature or immediately below or adjacent to the signature. The design patent practitioner status of each design VerDate Sep<11>2014 17:20 Mar 21, 2024 Jkt 262001 patent practitioner must be indicated by placing the word ‘‘design’’ (in any format) adjacent to the signature. (3) Acceptable software type. The software used by the signer must meet the requirements for third-party document-signing software listed in Section II(A). If the submission is signed by a proper party and all the elements listed above are satisfied, USPTO personnel may presume the signature meets the requirements of newly added § 1.4(d)(4) for an acceptable electronic signature, unless directed otherwise by the Office of the Deputy Commissioner for Patents (Legal). If one or more of these requirements are not met, the signature block is noncompliant. Notwithstanding the provisions above, USPTO personnel retain the discretion to inquire about the acceptability of a signature on a submission or require ratification, confirmation, or evidence of authenticity of such signature, where the USPTO has reasonable doubt as to the authenticity (veracity) of the signature. The MPEP will be updated in due course to incorporate these requirements. Discussion of Specific Rules The following is a discussion of the amendments to 37 CFR part 1. Section 1.4: The introductory text of § 1.4(d)(1) is revised to provide to a reference to redesignated § 1.4(d)(5) and delete a reference to § 1.4(e), which was reserved in a prior rulemaking. New § 1.4(d)(4) provides an additional option for electronic signatures in patent correspondence. The electronic signatures of newly added § 1.4(d)(4) must be of a form specified by the Director and personally entered by the person named as the signer on the correspondence being filed for a patent application, patent or other patent proceeding in the USPTO. Newly added § 1.4(d)(4)(i) requires a patent practitioner (§ 1.32(a)(1)), signing pursuant to § 1.33(b)(1) or (2), to supply their registration number either as part of the electronic signature or immediately below or adjacent to the electronic signature. Newly added § 1.4(d)(4)(i) also requires a design patent practitioner to additionally indicate their design patent practitioner status by placing the word ‘‘design’’ (in any format) adjacent to the electronic signature. Newly added § 1.4(d)(4)(ii)(A) requires the signer’s name to be presented in printed or typed form, preferably immediately below or adjacent to the electronic signature. Newly added § 1.4(d)(4)(ii)(B) requires PO 00000 Frm 00020 Fmt 4700 Sfmt 4700 the signer’s name to be reasonably specific enough so that the identity of the signer can be readily recognized. The provisions pertaining to certifications of prior § 1.4(d)(4) have been redesignated as § 1.4(d)(5). Redesignated § 1.4(d)(5)(ii) has been revised to include references to newly added § 1.4(d)(4) and gender specificity has been removed. The provisions pertaining to forms of prior § 1.4(d)(5) have been redesignated as § 1.4(d)(6). Rulemaking Considerations A. Administrative Procedure Act: The changes proposed by this rulemaking involve rules of agency practice and procedure, and/or interpretive rules, and do not require notice-and-comment rulemaking. See Perez v. Mortg. Bankers Ass’n, 575 U.S. 92, 97, 101 (2015) (explaining that interpretive rules ‘‘advise the public of the agency’s construction of the statutes and rules which it administers’’ and do not require notice and comment when issued or amended); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336–37 (Fed. Cir. 2008) (5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require noticeand-comment rulemaking for ‘‘interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice’’); and JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (explaining that rules are not legislative because they do not ‘‘foreclose effective opportunity to make one’s case on the merits’’). In addition, the Office finds good cause pursuant to authority at 5 U.S.C. 553(b)(B), to adopt the change to § 1.4 without prior notice and an opportunity for public comment, as such procedures would be unnecessary and contrary to the public interest. This final rule provides another means for patent applicants and owners, practitioners, and other parties who sign patentrelated correspondence to provide a signature. It merely involves rules of agency procedure or practice within the meaning of 5 U.S.C. 553(b)(A) and is a non-substantive change to the regulations. Accordingly, this final rule is adopted without prior notice and opportunity for public comment. Furthermore, the Office finds good cause to waive the 30-day delay in effectiveness period, as provided by 5 U.S.C. 553(d)(3), because this final rule would promote harmonization of signature requirements to reduce confusion and increase convenience for impacted parties as set forth here. B. Regulatory Flexibility Act: As prior notice and an opportunity for public E:\FR\FM\22MRR1.SGM 22MRR1 ddrumheller on DSK120RN23PROD with RULES1 Federal Register / Vol. 89, No. 57 / Friday, March 22, 2024 / Rules and Regulations comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither a Regulatory Flexibility Act analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C. 605(b). C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993), as amended by E.O. 14094 (April 6, 2023). D. Executive Order 13563 (Improving Regulation and Regulatory Review): The USPTO has complied with Executive Order 13563 (January 18, 2011). Specifically, and as discussed above, the USPTO has, to the extent feasible and applicable: (1) made a reasoned determination that the benefits justify the costs of the rule; (2) tailored the rule to impose the least burden on society consistent with obtaining the regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector, and the public as a whole, and provided online access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens and maintain flexibility and freedom of choice for the public; and (9) ensured the objectivity of scientific and technological information and processes. E. Executive Order 13132 (Federalism): This rulemaking pertains strictly to federal agency procedures and does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (August 4, 1999). F. Executive Order 13175 (Tribal Consultation): This rulemaking will not: (1) have substantial direct effects on one or more Indian tribes, (2) impose substantial direct compliance costs on Indian tribal governments, or (3) preempt tribal law. Therefore, a Tribal Summary Impact Statement is not required under Executive Order 13175 (November 6, 2000). G. Executive Order 13211 (Energy Effects): This rulemaking is not a significant energy action under Executive Order 13211 because this rulemaking is not likely to have a significant adverse effect on the supply, distribution, or use of energy. Therefore, VerDate Sep<11>2014 17:20 Mar 21, 2024 Jkt 262001 a Statement of Energy Effects is not required under Executive Order 13211 (May 18, 2001). H. Executive Order 12988 (Civil Justice Reform): This rulemaking meets applicable standards to minimize litigation, eliminate ambiguity, and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order 12988 (February 5, 1996). I. Executive Order 13045 (Protection of Children): This rulemaking does not concern an environmental risk to health or safety that may disproportionately affect children under Executive Order 13045 (April 21, 1997). J. Executive Order 12630 (Taking of Private Property): This rulemaking will not affect a taking of private property or otherwise have taking implications under Executive Order 12630 (March 15, 1988). K. Congressional Review Act: Under the Congressional Review Act provisions of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO will submit a report containing the rule and other required information to the United States Senate, the United States House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this rulemaking are not expected to result in an annual effect on the economy of $100 million or more, a major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-based enterprises to compete with foreign-based enterprises in domestic and export markets. Therefore, this rulemaking is not a ‘‘major rule’’ as defined in 5 U.S.C. 804(2). L. Unfunded Mandates Reform Act of 1995: The changes set forth in this rulemaking do not involve a Federal intergovernmental mandate that will result in the expenditure by state, local, and tribal governments, in the aggregate, of $100 million (as adjusted) or more in any one year, or a Federal private sector mandate that will result in the expenditure by the private sector of $100 million (as adjusted) or more in any one year, and will not significantly or uniquely affect small governments. Therefore, no actions are necessary under the provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq. M. National Environmental Policy Act of 1969: This rulemaking will not have any effect on the quality of the environment and is thus categorically excluded from review under the PO 00000 Frm 00021 Fmt 4700 Sfmt 4700 20323 National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq. N. National Technology Transfer and Advancement Act of 1995: The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does not contain provisions that involve the use of technical standards. O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501) requires that the USPTO consider the impact of paperwork and other information collection burdens imposed on the public. This rulemaking does not involve any new information collection requirements, or impact any existing information collection requirements, that are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). Notwithstanding any other provision of law, no person is required to respond to, nor shall any person be subject to a penalty for failure to comply with, a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information has a valid OMB control number. List of Subjects in 37 CFR Part 1 Administrative practice and procedure, Biologics, Courts, Freedom of information, Inventions and patents, Reporting and recordkeeping requirements, Small businesses. For the reasons set forth in the preamble, the USPTO amends 37 CFR part 1 as follows: PART 1—RULES OF PRACTICE IN PATENT CASES 1. The authority citation for 37 CFR part 1 continues to read as follows: ■ Authority: 35 U.S.C. 2(b)(2), unless otherwise noted. 2. Amend § 1.4 by: a. Revising paragraph (d)(1) introductory text; ■ b. Redesignating paragraphs (d)(4) and (5) as paragraphs (d)(5) and (6); ■ c. Adding new paragraph (d)(4); ■ d. Revising newly redesignated paragraph (d)(5)(ii); and ■ e. Removing the parenthetical authority citation at the end of the section. The revisions and addition read as follows: ■ ■ § 1.4 Nature of correspondence and signature requirements. * E:\FR\FM\22MRR1.SGM * * 22MRR1 * * ddrumheller on DSK120RN23PROD with RULES1 20324 Federal Register / Vol. 89, No. 57 / Friday, March 22, 2024 / Rules and Regulations (d)(1) Handwritten signature. A design patent practitioner must indicate their design patent practitioner status by placing the word ‘‘design’’ (in any format) adjacent to their handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2) through (5) and (f) of this section, filed in an application, patent file, or other proceeding in the Office that requires a person’s signature, must: * * * * * (4) Additional electronic signatures. Correspondence being filed in the USPTO for a patent application, patent, or other patent proceeding at the USPTO which requires a signature may be signed using an electronic signature that is personally entered by the person named as the signer and of a form specified by the Director. (i) A patent practitioner (§ 1.32(a)(1)), signing pursuant to § 1.33(b)(1) or (2), must supply their registration number either as part of the electronic signature or immediately below or adjacent to the electronic signature. A design patent practitioner must additionally indicate their design patent practitioner status by placing the word ‘‘design’’ (in any format) adjacent to the electronic signature. (ii) The signer’s name must be: (A) Presented in printed or typed form preferably immediately below or adjacent to the electronic signature; and (B) Reasonably specific enough so that the identity of the signer can be readily recognized. (5) * * * (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2), (3), or (4) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is the person’s own signature. A person submitting a document signed by another under paragraph (d)(2), (3), or (4) is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph (d)(5)(ii) may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter. * * * * * Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2024–06126 Filed 3–21–24; 8:45 am] BILLING CODE 3510–16–P VerDate Sep<11>2014 17:20 Mar 21, 2024 Jkt 262001 COMMITTEE FOR PURCHASE FROM PEOPLE WHO ARE BLIND OR SEVERELY DISABLED 41 CFR Parts 51–2, 51–3, and 51–5 RIN 3037–AA14 Supporting Competition in the AbilityOne Program Committee for Purchase From People Who Are Blind or Severely Disabled. ACTION: Final rule. AGENCY: The Committee for Purchase From People Who Are Blind or Severely Disabled (Committee), operating as the U.S. AbilityOne Commission (Commission), is publishing a final rule that clarifies the Commission’s authority to consider different pricing methodologies to establish the initial Fair Market Price (FMP) for Procurement List (PL) additions and changes to the FMP. The final rule also permits the central nonprofit agency (CNA) to distribute certain high-dollar services orders on a competitive basis to the authorized nonprofit agency (NPA) after considering price and non-price factors. Lastly, the final rule further clarifies the Commission’s authority to authorize and deauthorize NPAs as mandatory sources and require all NPAs to provide the right of first refusal of employment to the current employees of an incumbent NPA who are blind or have other significant disabilities for positions for which they are qualified. DATES: This final rule is effective April 22, 2024. FOR FURTHER INFORMATION CONTACT: Cassandra Assefa, Regulatory and Policy Attorney, Office of General Counsel, U.S. AbilityOne Commission, 355 E Street SW, Suite 325, Washington, DC 20024; telephone: (202) 430–9886; email: cassefa@abilityone.gov. If you are deaf, hard of hearing, or have a speech disability and wish to access telecommunications relay services, please dial 7–1–1. SUPPLEMENTARY INFORMATION: SUMMARY: I. Background A. The Javits-Wagner-O’Day (JWOD) Act and the Commission The JWOD Act, 41 U.S.C. 8501, et seq., leverages the purchasing power of the Federal Government to create employment opportunities through the AbilityOne Program for individuals who are blind or have significant disabilities. The Program is administered by the 15member, presidentially appointed Commission that, as an independent Federal agency, maintains a PL of PO 00000 Frm 00022 Fmt 4700 Sfmt 4700 products and services that Federal agencies must purchase from participating NPAs who employ individuals who are blind or have significant disabilities. See 41 U.S.C.8503 and 8504. CNAs are responsible for distributing orders to Commission-approved NPAs to provide products and services to Federal agencies. See 41 CFR parts 51–2.4(a)(3) & 51–3.4. NPAs must meet initial qualification requirements and maintain those qualifications throughout their participation in the AbilityOne Program. See 41 CFR parts 51–4.2 and 51–4.3. The Commission has five roles stated in the JWOD Act. First, the Commission decides on the addition or removal of products and services on the PL. See 41 U.S.C. 8503(a). Second, the Commission sets the FMP that the Federal Government will pay for the products or services. See 41 U.S.C. 8503(b). Third, the Commission designates nonprofit agencies to serve as CNAs, who are responsible for ‘‘facilitating the distribution of orders’’ for products or services among participating NPAs. See 41 U.S.C. 8503(c). Fourth, the Commission promulgates regulations ‘‘on other matters as necessary’’ to carry out the JWOD Act. See 41 U.S.C. 8503(d)(1). Fifth, the Commission engages in a ‘‘continuing study and evaluation of its activities’’ to ensure effective administration of the JWOD Act. See 41 U.S.C. 8503(e). At present, pursuant to the JWOD Act, the Commission has designated National Industries for the Blind (NIB) and SourceAmerica as the CNAs responsible for distributing orders to participating NPAs. See 41 CFR 51–1.3 (definition of CNA); see also 41 CFR 51– 3.2 (describing duties of a CNA). The CNAs provide information to the Commission as needed and otherwise assist the Commission in implementing the Commission’s regulations. NPAs associated with NIB primarily employ individuals who are blind or visually impaired; NPAs associated with SourceAmerica primarily employ individuals with other significant disabilities, including intellectual and developmental disabilities (IDD). As of September 30, 2023, NIB represents 58 NPAs participating in the AbilityOne Program, and SourceAmerica represents 355 NPAs. In making its determination on whether to add a product or service to the PL, the Commission assesses four suitability criteria. See 41 CFR 51–2.4. First, the Commission considers whether there is the potential for the NPA to employ enough individuals who are blind or have significant disabilities as needed to carry out the contract. E:\FR\FM\22MRR1.SGM 22MRR1

Agencies

[Federal Register Volume 89, Number 57 (Friday, March 22, 2024)]
[Rules and Regulations]
[Pages 20321-20324]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-06126]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2023-0054]
RIN 0651-AD73


Signature Requirements Related to Acceptance of Electronic 
Signatures for Patent Correspondence

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) is revising the rules of practice in patent cases to update the 
signature rule to provide for the broader permissibility of electronic 
signatures using third-party document-signing software, such as 
DocuSign[supreg] and Acrobat[supreg] Sign, and more closely align 
signature requirements with the rules of practice in trademark cases. 
The revised rules will provide additional flexibility and convenience 
to patent applicants and owners, practitioners, and other parties who 
sign patent-related correspondence, and promote consistency by 
establishing signature requirements which are common to both patent and 
trademark matters.

DATES: This final rule is effective on March 22, 2024.

FOR FURTHER INFORMATION CONTACT: Mark Polutta, Senior Legal Advisor, at 
571-272-7709; or Terry J. Dey, Legal Administrative Specialist, at 571-
272-7730, both of the Office of Patent Legal Administration; or to 
[email protected].

SUPPLEMENTARY INFORMATION: 

I. Background

    The regulation at 37 CFR 1.4(d) sets forth the signature 
requirements for patent correspondence. Section 1.4(d)(1) and (2) set 
forth the requirements for handwritten signatures and S-signatures, 
respectively. An S-signature is a signature that is inserted between 
forward slash marks by the signer and is not a handwritten signature. 
An S-signature must consist only of letters, or Arabic numerals, or 
both, with appropriate spaces and commas, periods, apostrophes, or 
hyphens for punctuation, and the signer's name must be printed or 
typed, preferably immediately below or adjacent to the S-signature. 
Section 1.4(d)(3) provides for a graphic representation of a 
handwritten signature or an S-signature for correspondence submitted 
electronically via the USPTO patent electronic filing system. The USPTO 
has been accepting certain electronic signatures as graphic 
representations pursuant to Sec.  1.4(d)(3), if the correspondence was 
submitted via the USPTO patent electronic filing system. The signer 
must personally make their own signature, regardless of what type of 
signature is used.
    Prior to the effective date of this final rule, the USPTO did not 
permit patent correspondence to be electronically signed by methods 
other than the electronic entry of S-signatures under Sec.  1.4(d)(2) 
and the graphic representation method of Sec.  1.4(d)(3). Furthermore, 
it only permitted the graphic representation method of Sec.  1.4(d)(3) 
if the correspondence was being submitted via the USPTO patent 
electronic filing system. In recent years, however, other methods of 
electronic signature, such as methods using third-party software, have 
become more prevalent, reliable, and secure. For example, some software 
platforms include document-signing features with digital certificates 
or authenticity trails for the electronic signatures, resulting in the 
increased reliability and security of electronically generated 
signatures.
    To simplify and streamline the USPTO's processes for patent 
applicants and owners, practitioners, and other parties who sign 
patent-related correspondence and to more closely align the signature 
requirements for patent and trademark correspondence, the USPTO is 
adding Sec.  1.4(d)(4) as a new rule to provide an additional option 
for electronic signatures in patent correspondence. In addition, this 
new rule is aimed at addressing stakeholder input received, including 
during multilateral forums such as IP5 and Trilateral, and is directed 
towards increasing harmonization of practices and procedures amongst 
intellectual property offices globally. More information about the IP5 
and Trilateral forums is available at www.uspto.gov/ip-policy/patent-policy/ip5 and www.uspto.gov/ip-policy/patent-policy/patent-trilateral-activities.
    Under this new rule, ``the person named as the signer'' may sign 
patent correspondence electronically using any form of electronic 
signature specified by the Director. Moreover, the electronic signature 
under newly added Sec.  1.4(d)(4) may be used whether the 
correspondence is being submitted via the USPTO patent electronic 
filing system, mailed, faxed, or hand delivered. At this time, the 
electronic signatures specified by the Director in newly added Sec.  
1.4(d)(4) consist of electronic signatures generated via third-party 
document-signing software that meet the requirements outlined in 
section II of this preamble. Signatures created using other types of 
software, such as graphic editing software, are not acceptable under 
newly added Sec.  1.4(d)(4).

II. Requirements for Additional Electronic Signatures

    Subsection II(A) provides the requirements for third-party 
document-signing software, and subsection II(B) provides the USPTO 
procedures for determining whether electronically signed patent 
correspondence complies with newly added Sec.  1.4(d)(4). Taken 
together, the subsections set out when patent correspondence signed 
using third-party document-signing software may be accepted under newly 
added Sec.  1.4(d)(4). The final rule does not change any other 
requirements for signatures on patent correspondence, including that a 
signature must be personally inserted or generated by the named signer. 
Another person may not use document-signing software to create or 
generate the electronic signature of the named signer. The final rule 
also does not change which USPTO personnel have the responsibility for 
reviewing signatures on patent correspondence. This final rule is 
effective on publication and supersedes any previous USPTO guidance on 
this topic to the extent there are any conflicts.

A. Requirements for Third-Party Document-Signing Software

    Parties using third-party document-signing software must ensure 
that the underlying software meets the following requirements:
    (1) 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. USPTO 
personnel may presume that the document-signing software preserves 
signature data for later inspection in the required form, unless the 
Office of the Deputy Commissioner for Patents (Legal) notifies USPTO 
personnel otherwise.

[[Page 20322]]

    (2) 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 using document-signing software.
    The USPTO recommends that the software generate the date on which 
the signature was applied. While providing a date is not generally 
required in patent matters, the date is required for electronic 
signatures signed using document-signing software in trademark matters 
before the USPTO. Using software that generates the date will benefit 
practitioners that work in both patent and trademark matters, as the 
signatures will be acceptable in both patents and trademarks at the 
USPTO. Regardless of the date the correspondence was signed, the date 
of receipt will be based on Sec. Sec.  1.6 through 1.10.

B. USPTO Procedures

    When reviewing a signature on a document that was generated using 
document-signing software, USPTO personnel must first determine 
compliance with other signature requirements, such as whether it was 
signed by a proper person (e.g., Sec.  1.33(b)). The Manual of Patent 
Examining Procedure (MPEP) (9th Edition, Rev. 07.2022, February 2023) 
provides more information on signatures by proper parties at section 
714.01. Submissions must be personally signed by the individual 
identified in the signer name field. A person may not use document-
signing software to enter or electronically generate someone else's 
signature. See newly added Sec.  1.4(d)(4), redesignated Sec.  
1.4(d)(5)(ii), and MPEP 502.02. The electronic signatures of newly 
added Sec.  1.4(d)(4) do not require the forward slashes of Sec.  
1.4(d)(2).
    USPTO personnel must ensure that the signature block for a 
signature under newly added Sec.  1.4(d)(4) meets the following 
requirements:
    (1) Name. The name of each person who signed the document must be 
presented in printed or typed form, preferably immediately below or 
adjacent to the signer's adopted signature. The signer's name must be 
reasonably specific enough so that the identity of the signer can be 
readily recognized.
    (2) Practitioner registration number. The registration number of 
each patent practitioner (Sec.  1.32(a)(1)) who signed the document 
pursuant to Sec.  1.33(b)(1) or (2), must be supplied, either as part 
of the signature or immediately below or adjacent to the signature. The 
design patent practitioner status of each design patent practitioner 
must be indicated by placing the word ``design'' (in any format) 
adjacent to the signature.
    (3) Acceptable software type. The software used by the signer must 
meet the requirements for third-party document-signing software listed 
in Section II(A).
    If the submission is signed by a proper party and all the elements 
listed above are satisfied, USPTO personnel may presume the signature 
meets the requirements of newly added Sec.  1.4(d)(4) for an acceptable 
electronic signature, unless directed otherwise by the Office of the 
Deputy Commissioner for Patents (Legal). If one or more of these 
requirements are not met, the signature block is noncompliant.
    Notwithstanding the provisions above, USPTO personnel retain the 
discretion to inquire about the acceptability of a signature on a 
submission or require ratification, confirmation, or evidence of 
authenticity of such signature, where the USPTO has reasonable doubt as 
to the authenticity (veracity) of the signature.
    The MPEP will be updated in due course to incorporate these 
requirements.

Discussion of Specific Rules

    The following is a discussion of the amendments to 37 CFR part 1.
    Section 1.4: The introductory text of Sec.  1.4(d)(1) is revised to 
provide to a reference to redesignated Sec.  1.4(d)(5) and delete a 
reference to Sec.  1.4(e), which was reserved in a prior rulemaking.
    New Sec.  1.4(d)(4) provides an additional option for electronic 
signatures in patent correspondence. The electronic signatures of newly 
added Sec.  1.4(d)(4) must be of a form specified by the Director and 
personally entered by the person named as the signer on the 
correspondence being filed for a patent application, patent or other 
patent proceeding in the USPTO. Newly added Sec.  1.4(d)(4)(i) requires 
a patent practitioner (Sec.  1.32(a)(1)), signing pursuant to Sec.  
1.33(b)(1) or (2), to supply their registration number either as part 
of the electronic signature or immediately below or adjacent to the 
electronic signature. Newly added Sec.  1.4(d)(4)(i) also requires a 
design patent practitioner to additionally indicate their design patent 
practitioner status by placing the word ``design'' (in any format) 
adjacent to the electronic signature. Newly added Sec.  
1.4(d)(4)(ii)(A) requires the signer's name to be presented in printed 
or typed form, preferably immediately below or adjacent to the 
electronic signature. Newly added Sec.  1.4(d)(4)(ii)(B) requires the 
signer's name to be reasonably specific enough so that the identity of 
the signer can be readily recognized.
    The provisions pertaining to certifications of prior Sec.  
1.4(d)(4) have been redesignated as Sec.  1.4(d)(5). Redesignated Sec.  
1.4(d)(5)(ii) has been revised to include references to newly added 
Sec.  1.4(d)(4) and gender specificity has been removed.
    The provisions pertaining to forms of prior Sec.  1.4(d)(5) have 
been redesignated as Sec.  1.4(d)(6).

Rulemaking Considerations

    A. Administrative Procedure Act: The changes proposed by this 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules, and do not require notice-and-comment rulemaking. 
See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) 
(explaining that interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers'' and do 
not require notice and comment when issued or amended); Cooper Techs. 
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (5 U.S.C. 553, 
and thus 35 U.S.C. 2(b)(2)(B), do not require notice-and-comment 
rulemaking for ``interpretative rules, general statements of policy, or 
rules of agency organization, procedure, or practice''); and JEM 
Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) 
(explaining that rules are not legislative because they do not 
``foreclose effective opportunity to make one's case on the merits'').
    In addition, the Office finds good cause pursuant to authority at 5 
U.S.C. 553(b)(B), to adopt the change to Sec.  1.4 without prior notice 
and an opportunity for public comment, as such procedures would be 
unnecessary and contrary to the public interest. This final rule 
provides another means for patent applicants and owners, practitioners, 
and other parties who sign patent-related correspondence to provide a 
signature. It merely involves rules of agency procedure or practice 
within the meaning of 5 U.S.C. 553(b)(A) and is a non-substantive 
change to the regulations. Accordingly, this final rule is adopted 
without prior notice and opportunity for public comment. Furthermore, 
the Office finds good cause to waive the 30-day delay in effectiveness 
period, as provided by 5 U.S.C. 553(d)(3), because this final rule 
would promote harmonization of signature requirements to reduce 
confusion and increase convenience for impacted parties as set forth 
here.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public

[[Page 20323]]

comment are not required pursuant to 5 U.S.C. 553 (or any other law), 
neither a Regulatory Flexibility Act analysis nor a certification under 
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 
5 U.S.C. 605(b).
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993), as amended by E.O. 14094 (April 
6, 2023).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The USPTO has complied with Executive Order 13563 (January 18, 
2011). Specifically, and as discussed above, the USPTO has, to the 
extent feasible and applicable: (1) made a reasoned determination that 
the benefits justify the costs of the rule; (2) tailored the rule to 
impose the least burden on society consistent with obtaining the 
regulatory objectives; (3) selected a regulatory approach that 
maximizes net benefits; (4) specified performance objectives; (5) 
identified and assessed available alternatives; (6) involved the public 
in an open exchange of information and perspectives among experts in 
relevant disciplines, affected stakeholders in the private sector, and 
the public as a whole, and provided online access to the rulemaking 
docket; (7) attempted to promote coordination, simplification, and 
harmonization across government agencies and identified goals designed 
to promote innovation; (8) considered approaches that reduce burdens 
and maintain flexibility and freedom of choice for the public; and (9) 
ensured the objectivity of scientific and technological information and 
processes.
    E. Executive Order 13132 (Federalism): This rulemaking pertains 
strictly to federal agency procedures and does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (August 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) have substantial direct effects on one or more Indian 
tribes, (2) impose substantial direct compliance costs on Indian tribal 
governments, or (3) preempt tribal law. Therefore, a Tribal Summary 
Impact Statement is not required under Executive Order 13175 (November 
6, 2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (February 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (April 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (March 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the rule and other required information 
to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this rulemaking are not expected 
to result in an annual effect on the economy of $100 million or more, a 
major increase in costs or prices, or significant adverse effects on 
competition, employment, investment, productivity, innovation, or the 
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this 
rulemaking is not a ``major rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this rulemaking do not involve a Federal intergovernmental mandate that 
will result in the expenditure by state, local, and tribal governments, 
in the aggregate, of $100 million (as adjusted) or more in any one 
year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of $100 million (as adjusted) or more 
in any one year, and will not significantly or uniquely affect small 
governments. Therefore, no actions are necessary under the provisions 
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    M. National Environmental Policy Act of 1969: This rulemaking will 
not have any effect on the quality of the environment and is thus 
categorically excluded from review under the National Environmental 
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act of 1995: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 
1995 (44 U.S.C. 3501) requires that the USPTO consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rulemaking does not involve any new information collection 
requirements, or impact any existing information collection 
requirements, that are subject to review by the Office of Management 
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 
3501 et seq.).
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act unless that collection of information 
has a valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

    For the reasons set forth in the preamble, the USPTO amends 37 CFR 
part 1 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Amend Sec.  1.4 by:
0
a. Revising paragraph (d)(1) introductory text;
0
b. Redesignating paragraphs (d)(4) and (5) as paragraphs (d)(5) and 
(6);
0
c. Adding new paragraph (d)(4);
0
d. Revising newly redesignated paragraph (d)(5)(ii); and
0
e. Removing the parenthetical authority citation at the end of the 
section.
    The revisions and addition read as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *

[[Page 20324]]

    (d)(1) Handwritten signature. A design patent practitioner must 
indicate their design patent practitioner status by placing the word 
``design'' (in any format) adjacent to their handwritten signature. 
Each piece of correspondence, except as provided in paragraphs (d)(2) 
through (5) and (f) of this section, filed in an application, patent 
file, or other proceeding in the Office that requires a person's 
signature, must:
* * * * *
    (4) Additional electronic signatures. Correspondence being filed in 
the USPTO for a patent application, patent, or other patent proceeding 
at the USPTO which requires a signature may be signed using an 
electronic signature that is personally entered by the person named as 
the signer and of a form specified by the Director.
    (i) A patent practitioner (Sec.  1.32(a)(1)), signing pursuant to 
Sec.  1.33(b)(1) or (2), must supply their registration number either 
as part of the electronic signature or immediately below or adjacent to 
the electronic signature. A design patent practitioner must 
additionally indicate their design patent practitioner status by 
placing the word ``design'' (in any format) adjacent to the electronic 
signature.
    (ii) The signer's name must be:
    (A) Presented in printed or typed form preferably immediately below 
or adjacent to the electronic signature; and
    (B) Reasonably specific enough so that the identity of the signer 
can be readily recognized.
    (5) * * *
    (ii) Certification as to the signature. The person inserting a 
signature under paragraph (d)(2), (3), or (4) of this section in a 
document submitted to the Office certifies that the inserted signature 
appearing in the document is the person's own signature. A person 
submitting a document signed by another under paragraph (d)(2), (3), or 
(4) is obligated to have a reasonable basis to believe that the person 
whose signature is present on the document was actually inserted by 
that person, and should retain evidence of authenticity of the 
signature. Violations of the certification as to the signature of 
another or a person's own signature as set forth in this paragraph 
(d)(5)(ii) may result in the imposition of sanctions under Sec.  
11.18(c) and (d) of this chapter.
* * * * *

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-06126 Filed 3-21-24; 8:45 am]
BILLING CODE 3510-16-P

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