I 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.
Violations 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.”
It 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.