Allowing Someone Else To Type In Your S-Signature On USPTO Documents Is Unethical

Michael E. McCabe, Jr.IP Ethics, Office of Enrollment and Discipline, Patent Attorney Disciplinary Matters, USPTO OED4 Comments

SignatureI still remember vividly today the very first time I signed a paper, as an attorney at law, for filing in court.  It was 22 years ago.  I remember being nervous. I practiced my signature on a scratch pad, wanting to get it just right, before finally putting ball point to paper.  The paper was of heavy bond, the way papers filed in court were supposed to be.  The ink was blue. I could smell the ink as it melted into the fibers, becoming one with the document.  I loved that smell.

A lawyer’s signature on a document filed in the USPTO is a solemn act.  It represents his word, his certification, and his promise.  By signing a document for filing in the USPTO, the attorney certifies the truthfulness of its contents.  The signature also represents that, to the best of the signor’s knowledge, formed after a reasonable inquiry,  the paper is not being presented for an improper purpose; the claims and other legal contentions are warranted by law; the allegations of fact have evidentiary support; and the denials of factual contentions are warranted based on the evidence.  See 37 C.F.R. Section 10.18 (pre-May 3, 2013) and 37 C.F.R. Section 11.18 (post-May 3, 2013)

Section 11.18(a) of the current USPTO regulations confirms that “all documents filed in the Office in patent, trademark, and other non-patent matters” by a practitioner “must bear a signature, personally signed or inserted by such practitioner . . . .”  The Office of Enrollment and Discipline likewise confirms that: (1) There is no circumstance under which a secretary, paralegal, legal assistant, or the like (i.e., a non-practitioner), may sign a practitioner’s name to any document filed in the USPTO; and (2) A practitioner may not authorize a non-practitioner to sign the practitioner’s name on a document to be filed in the USPTO.

USPTO sealViolations of these certifications may jeopardize clients’ intellectual property rights.  Furthermore, such violations may subject the practitioner to professional discipline. Indeed, as we previously discussed (click here),  allowing a non-practitioner to “ghost sign” your name on papers filed with the USPTO can result in discipline.

For example, Tracy Druce, a former named partner of a large IP boutique firm, was disciplined for routinely allowing a non-attorney assistant to sign his name on documents filed with the Office. In re Druce, No. D2014-13 (USPTO Dir. Sept. 5, 2014).

The USPTO makes no distinction between electronic /S/ signatures and a handwritten “ink” signatures.  The Office defines an “S-signature” as a signature inserted between forward slash marks.  An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature.

For handwritten signatures, pursuant to 37 C.F.R. Section 1.4(d)(1), each piece of correspondence which requires a person’s signature must be “personally signed, in permanent dark ink or its equivalent, by that person.”  Likewise, for /S/ signatures, Rule 1.4 makes clear that the person signing the correspondence “must insert his or her own S-signature.”

One finger typeIt is unclear how the USPTO can effectively monitor the personal S-signature requirement since one person’s /S/ looks the same as everyone else’s /S/.   The USPTO’s 21st Century Strategic Plan Questions and Answers further indicates that it is the USPTO’s belief that “a party placing a typed name on a form without the slash marks does not indicate an intent to sign the form, and the addition of slash marks by another around the typed name would not be proper as it would be changing the intent of the appearance of the typed name on the form.”

One could argue that the personal S-signature requirement is outdated and unnecessary.  To be sure, as long as the USPTO practitioner reviews and approves the contents of the correspondence before it is filed with the Office, what difference does it make if someone else actually physically types in the practitioner’s name between two slash marks?

That, however, is not the rule.  And while the S-signature requirement may seem trivial, it is treated seriously by the OED.  Therefore, unless and until the USPTO changes this rule, it is unethical for a practitioner to allow someone else to type in his or her name between the slashes.  Even if that other person actually prepared the document, the practitioner must personally type in his or her own S-signature in  correspondence and documents filed with the USPTO.

 

 

4 Comments on “Allowing Someone Else To Type In Your S-Signature On USPTO Documents Is Unethical”

  1. In addition to the clear ethical issues, allowing my secretary, for example, to place my S-signature on a document filed in the USPTO potentially exposes my secretary and me to liability should a forged document or draft document not ready for filing bearing “my” S-signature ever be submitted. Because every document that I submit, or authorize to be submitted, to the USPTO bears my signature and not an S-signature, my secretary never can be falsely accused of affixing my S-signature on any document, there always is a final document review by me, and any document filed in the USPTO bearing my alleged S-signature is a forgery.

    Thanks for addressing this pet peeve of mine and promoting this best practice.

    1. Mark: Thank you for your comment. I agree with you as well that your practice also protects your non-lawyer assistants. Moreover by having the final document for you to review before signing, you reduce the likelihood of error. Unfortunately some practitioners delegate too much responsibility to non-lawyers. Or they believe that only “important” filings require review and signature. No such distinction is drawn in the USPTO’s regulations.

  2. What about in non-lawyer situations? Can the owner of a company have his or her secretary file and sign a trademark application? Or does the actual owner need to sign?

    1. Richard: Excellent question. The actual owner needs to sign; the rule is not just limited to attorneys and patent agents. 37 CFR 1.4 explains that the person s-signing must themselves sign. The rule is buried in the details of 1.4(d) as follows with respect to both “wet” signatures and /s/ signatures:

      (d) (1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must: (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or
      (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.

      (2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by § 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by a handwritten signature of § 1.4(d)(1). Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4), for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows. (i) The 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 person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and
      (ii) A patent practitioner (§ 1.32(a)(1)), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
      (iii) The signer’s name must be: (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
      (B) Reasonably specific enough so that the identity of the signer can be readily recognized.

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