April 23, 2020
Signing while Social Distancing, Part 2: Assignments
Problems with assignments are likely to occur many years in the future when the assignor may be unavailable or uncooperative. Therefore, you (the person advising on or determining the process for obtaining signatures) should determine the signature method most likely to have evidentiary value and recognition across your jurisdictions of interest while falling below a threshold of inconvenience to the signer. For example, an inventor clicking a link in an email and typing their name into electronic signature software is a very low burden. On the other hand, an inventor may balk at participating in a notarization videoconference that requires answering personal questions that are as invasive as those asked when accessing their annual credit report.
- A notarized signature is the most likely to have international recognition.
- Handwritten, in-person notarization may receive the widest international recognition, but is not feasible now.
- Remote notarization comes in a close second.
- Electronic signature software (for example, DocuSign) is the most convenient for the signer and offers greater authenticity guarantees than simply modifying a PDF. Use this when international recognition is less critical.
- For any type of signature, recording a video of the signature process is powerful evidence of the authenticity of the signature.
- If your normal practice is notarization, consider temporary usage of electronic signature software; then, when in-person notarization is once again feasible, obtain notarized confirmatory assignments.
Understanding the considerations for signing inventor declarations (discussed here) is difficult enough, and declarations only need to satisfy one entity: the USPTO. Meanwhile, patent assignments may need to have worldwide effect. If you are familiar with the law of one of the 153 Patent Cooperation Treaty (PCT) contracting states, that leaves only 152 jurisdictions for you to consult competent counsel in. And don’t forget the countries (like Taiwan and Argentina) that are not PCT contracting states. Further, in the U.S., there is not a single body of contract law governing patent assignments, so you’ll want to consider all 50 states (and perhaps the District of Columbia). We haven’t vetted the below thoughts with every country in the world, but general principles should be applicable to the vast majority.
The goals to be satisfied by an assignment signature are:
- Create a document that can be recorded with the USPTO to demonstrate a clear chain of title to the patent holder
- Create evidence for purposes of U.S. enforcement that the assignment was an authentic act by the assignor
- Demonstrate chain of title to non-U.S. governments and patent offices — including, importantly, the right of an assignee to claim priority to an earlier application
- Create evidence for purposes of non-U.S. enforcement that the assignment was an authentic act by the assignor
- Bind the assignor to promises of further cooperation laid out in the assignment
Goal #1 will be met by any of the signature methods described below, so will only be mentioned once more. Goal #2 is satisfied to greater or lesser extents by the signature methods, as described below. Goals #3 and #4 may not be relevant to an applicant/patentee interested in only U.S. protection, in which case the related considerations can be ignored.
Achievement of goal #5 should be closely related to goal #2, with the caveat that contractual consideration may be a more important factor for goal #5. Consideration for an inventor-assignor may include payment of a patent-related bonus; continued employment may also serve as consideration.
Goals #2–4 may have less importance if the assignment is primarily to confirm the prior operation of law or agreement. This is generally most relevant for an inventor assigning to a company. For example, an employment agreement with “hereby assign” language may have already operated to assign the invention from the inventor to the company. For additional information on employment agreement language, see this blog post. In another example, national law (such as the Employee Inventions Act in Germany) may have operated to assign the rights in an invention to the employer from the employee. In such cases, you may want to choose a signature method that is less demanding of the signer’s time and privacy.
Signature methods may be divided into three groups:
- Bare signature (not witnessed or notarized)
- live in-person
- live remote
- later attestation
- handwritten with in-person notary
- electronic with remote notary
Goal #2 – U.S. Enforcement
For U.S. enforcement of patent rights, a notarized signature has statutory benefits. Specifically, 35 U.S.C. § 261 states that a notarization “shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent.” In other words, a notarized signature shifts the burden to the challenger to prove that the signature is not authentic.
If a signature is witnessed by one or more (though usually it is one or two) other people, those people can be called at trial to offer evidence of the signature’s authenticity. There is, however, no statutory benefit afforded to witnessed signatures. And ten years from now in litigation (TYFNIL), a witness may not be available, or their memory of witnessing a particular signature may not be very clear.
A bare signature offers none of the evidentiary benefits of notarization or witnessing. However, a handwritten signature may be authenticated by an expert. Meanwhile, authenticating an electronic signature may require documentary evidence of the signature process for that particular signature. This may obligate the assignee to retain evidence of the correspondence related to the signature. As an improvement, signature software (for example, DocuSign) adds authenticity and anti-tampering features to an electronic signature and may retain records related to the authenticity of the signature.
For any of these three types of signatures, video evidence of the signature being applied may prove very useful TYNFIL. Specifically, the video should show the person applying the signature, some evidence of their identity (such as a government issued identification), and the act of applying the signature. While a notarization provides prima facie evidence of execution, the video recording would provide actual evidence that would be difficult to dispute. Similarly, if a recording were made of the witness observing the signature — either in person or over a video link — the recording may eliminate the need to find the witness or refresh their recollection. While less likely to be used in the case of a bare signature, the signer or a third party could make a video recording of the signor applying their signature to the document.
Goals #3 and #4 – Non-U.S. Considerations
Many countries have electronic signature laws and they are not all consistent. It would be difficult to stay up to date with the electronic signature laws in 150 or more countries. If you have interest in patent protection in any particular countries or regions, you should consult with competent counsel in those jurisdictions.
Generally, you would expect a notarized signature to carry more weight in a foreign country than would a signature not legalized in any way. It stands to reason that a handwritten signature with a physical notary stamp would be the most familiar to countries around the world, and the least likely to run afoul of jurisdiction-specific electronic signature requirements. However, the realities of quarantine may require taking the risk of non-U.S. disapproval of an electronic notarization.
It is not clear that the presence of witnesses has any impact on formal requirements of non-U.S. governments. For both witnessed and bare signatures, handwritten signatures are most likely to be familiar to countries around the world. However, electronic signatures collected with the assistance of electronic signature software may have sufficient authenticity factors to satisfy the requirements in some countries. In fact, software-assisted signatures may even qualify as “advanced” signatures in Europe, in contrast to “simple” electronic signatures that have no authenticity features.
For patents and patent applications, does the location of notarization matter? In other words, if you are trying to enforce a patent in the District Court of Delaware, does it matter whether an assignment was notarized in New Jersey? What if the notarization process doesn’t satisfy Delaware notarial rules? What if the New Jersey notary would not qualify as a notary in Delaware?
These are questions that have arisen historically. At the present time, it appears that a notarization properly performed according to the rules of one state will generally be recognized in other states. See Enduring Benefits of Interstate Recognition of Notarial Act Laws, a statement from the National Notary Association. According to this 2017 statement, the one exception appears to be Iowa, which does not recognize remote notarizations done by Iowa notaries or notaries of other states. A remote notarization is when the notary is located in a different location from the signer and they are only virtually connected, such as by a videoconference. It appears that Iowa has passed legislation effective July 1, 2020 to allow remote notarization and temporarily waived the prohibition in advance of that effective date.
In short, remote notarization appears to be nearly universally recognized throughout the U.S. The governors of a number of states, including Michigan and Missouri, have signed executive orders expanding the use of online notarizations, making it easier for notaries to conduct remote notarizations. In Michigan, the Secretary of State has approved certain vendors for remote notarization, including NotaryCam and Notarize.
For approximately $25, a remote notarization vendor verifies the identity of a signer, connects the signer with a notary via videoconference, allows the signer to apply a signature and the notary to apply an electronic notary stamp, records the videoconference, and distributes the signed documents. The expertise of a vendor may be preferable to law firms or companies training existing notaries who may only be familiar with handwritten notarial procedures.
Because the remove notarization vendor does not personally know the signer, the verification process may seem intrusive to the signer. Using the training materials of one vendor as an example, the signer must take pictures of the front and back of a government-issued ID and provide the last 4 digits of their social security number. Then, the vendor generates 5 challenge questions to be answered in 2 minutes. These questions are similar to what you might need to answer in order to pull your annual credit report, so they are very personal.
While it is hard to know whether all jurisdictions around the world will be comfortable with a remote notarization, the practice appears to be satisfactory throughout the U.S. Further, the video recording provides excellent evidence of the authenticity of the signature for U.S. enforcement.
Witnesses may be able to provide evidence that a signature is authentic, though it is not clear that they will solve any concerns of non-U.S. patent offices regarding the formalities of the signature. In any case, witnesses should not hurt the effectiveness of the assignment. As a note, try to avoid the witness being related to the signer as a family member, significant other, etc.
When social distancing prevents in-person witnessing, a videoconference will allow one or more witnesses to observe the signer applying their signature. If the signature is handwritten, a webcam could be directed toward the paper. If the signature is applied by editing a PDF, screen-sharing functionality of the videoconference can allow the signature to be witnessed.
A video recording of the signature process (of course, with the informed consent of all the parties being recorded) will provide excellent evidence of the authenticity of the signature. The identity of the signer should be verified within the recording, such as by directing a webcam at the signer’s face, having the signer state their name, and perhaps display a government-issued identification. In fact, a video recording of a signature may be more probative for purposes of U.S. enforcement than a handwritten notarization not captured by video.
One additional approach to witnessing is offered by signature software. Using DocuSign as an example, a document is sent to the signer for signature with an indication that one or more witnesses are required. The signer applies their signature and then specifies the name, email address, and a custom message for each witness. DocuSign then sends the signed document to the specified witness(es) for them to apply their signature. Because the witnesses in this situation did not physically watch the signature occur, this might be referred to as later attestation. This may allow the witnesses to be called to give evidence of the signature’s authenticity TYFNIL. Since the signature software already enforces that the signature is entered by someone having control of the signer’s email address, it is not clear how witnesses receiving attestation requests from that email address provides much practical additional authenticity.
The USPTO rules for S-signatures (slash signatures) are irrelevant for assignment signatures, though using slashes do not hurt. In fact, if you are using electronic signatures for the inventor declaration (see the prior declaration signature blog post for more details), consistency and simplicity may suggest that you instruct that the inventor use an S‑signature on both the declaration and the assignment.
Because contract law in the U.S. differs from state to state, you may question what requirements an electronic signature would have to meet to be enforceable in all 50 states. As it turns out, the requirements have become fairly uniform due to the federal passage of the Electronic Signatures in Global and National Commerce Act (ESIGN) and the adoption by most states of the Uniform Electronic Transactions Act (UETA). For more information, see this 2017 law review article from Emory Law School.
The UETA defines an electronic signature as “an electronic sound, symbol, or process attached to or logically associated with a record and executed or adopted by a person with the intent to sign the record.” Therefore, there appears to be no problem — with respect to U.S. recognition — if the signer does any of the following:
- pastes an image of a handwritten ink signature into a PDF (either manually or via signature software)
- freehand draws — using a mouse, trackpad, stylus, touchscreen, etc. — a signature directly onto a PDF or pasting such a freehand drawing into the PDF (either manually or via signature software)
- inserts text of a signature into the PDF (either manually or via signature software)
- types text of a signature directly onto the PDF
For international recognition and for U.S. evidentiary purposes, there may be a benefit to a handwritten signature over a simple electronic signature not applied using signature software. This is because a handwritten signature should be more difficult to forge than typed characters rendered on a PDF form, and is susceptible to later analysis by a handwriting expert.
Signature software — such as DocuSign from DocuSign, Inc. or Sign (formerly, EchoSign) from Adobe Inc. — has substantially more authenticity value than simply editing a PDF, generally recording indicia of the signer’s activity, including specific times of signing and email and IP addresses. Further, the signature software may generate a cryptographic signature to allow verification that the document has not been modified post signature. Some European law recognizes simple and advanced signatures, and these features of signature software may satisfy the requirements of an advanced signature.
In a typical signature software workflow, the administrator responsible for obtaining signatures uploads the unsigned assignment PDF to the signature software, designates the location of the required signatures and dates within the PDF, and specifies the signer’s email address. The signature software then sends a link to the signer’s email address. The patent application should be sent to the signer either through the signature software or over a side channel (such as in a direct email), especially if the application has not yet been filed.
The signer clicks the link, reviews the assignment, and applies a signature. The signature software automatically fills in the date field and then informs the administrator of execution of the assignment and provides a copy of, or a link to, an executed PDF. The signature software may implement automated reminders to signers who have not yet signed a document after a set number of days. Meanwhile, the signature software logs the email address of the signer, when the assignment was opened, and when the assignment was signed. This information may be hashed and stamped on the executed PDF or stored elsewhere to detect tampering. The signature software process ensures that the signature was applied by the signer or, at the very least, by someone having control of the signer’s email address.
The signer can follow the traditional handwritten signature process of printing the PDF file to paper, hand-signing the paper with permanent dark ink (blue or black is best), scanning the paper back in, and sending back an email with the scanned document. Then, the signer should send the ink-signed original paper back to the in-house counsel or outside counsel.
If the signer is working from home and doesn’t have a printer available, handwritten signatures are not practical (though mailing paper by courier remains a possibility). Most signers will have a smartphone or a digital camera, which can create a scanned image. Unfortunately, the scan may be skewed, blurry, and/or discolored. For example, the yellow color from warm home lighting may cause the entire document to have an off-white background. These scanning issues can result in readability issues, especially after USPTO processing. We have seen the USPTO’s assignment branch refuse recordation of an assignment due to the scan quality — one of the few ways to fail to achieve goal #1. Hopefully, the assignment preparer has software that can perform image processing to improve poor scans. The author has used ABBYY FineScanner Pro for this purpose, but does not endorse any particular product.
If possible, the signer should use a scanning app on their phone. On an iPhone, the built-in Notes app works just fine, and can apply a black-and-white filter to remove a yellow tinge or a shadow. See here for brief instructions. If the signer doesn’t mind installing a useful app, the Wirecutter site recommends Adobe Scan, which is available for free on both the Android and iOS operating systems.
For all company to company assignments, the assignor and assignee should both sign. This is especially important if protection outside the U.S. (and especially Europe) is of interest. Regarding inventor to company assignments for inventions you are confident will be restricted to the U.S., obtaining the company’s signature is not a requirement.
Ideally, the signature by the assignee would be performed in the same manner as that of the assignor. However, as a practical matter, it is more likely for the signature of the assignor to be challenged. Therefore, if the person authorized to sign on behalf of the assignee is busy, it may be possible to use a simple electronic signature for the assignee even if the signature for the assignor is notarized.
Inventor to Company Assignments
If an inventor to company assignment is prepared prior to an application being filed, the assignment should list all the inventors. See 37 CFR 1.63: “if an assignment of a patent application… is executed… before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention….”
If an assignment is prepared after the application has been filed, a separate assignment can be prepared for each inventor. This may make tracking signatures simpler: each document for signature will correspond one-to-one with a returned executed document.
Two Bites at the Apple
For companies that usually require witnesses or notarization on assignment documents, online notarization or remote witnessing with video recording are options, as described above. Another option is to temporarily use electronic signature software. Then, when in-person notarization or witnessing is once again feasible, obtain confirmatory assignments. For inventor to company assignments, delaying an assignment creates a substantial risk of the inventor being unavailable to sign the assignment when the company is ready.
As a reminder, an assignment should be recorded with the USPTO within 3 months of execution to be valid against a bona fide purchaser. 35 USC § 261. Therefore, to avoid exceeding that 3-month timeframe, record the first assignment with the USPTO. Once the later (notarized or witnessed) assignment is obtained, it is not necessary to record it as well. However, recording the later assignment may provide a useful backup in the event of a loss of the original.