APAA e-Newsletter (Issue No. 30, August 2022)

Sign of the Times: Electronic Signatures in the Patent System

Adam Pepper, Phillips Ormonde Fitzpatrick (Australia)

Late last year the European Patent Office (EPO) began accepting Qualified Electronic Signatures (QES) attached to electronically filed documents submitted as evidence to support requests for registration of a transfer of rights. The disruptions from COVID-19 showed many of our European clients that they can successfully use qualified signatures as a contactless and secure way for executing documents they put before the EPO.

Recently, the USPTO also quietly revised its signature guidance document to list several more permitted electronic signature formats. The USPTO now permits the use of systems such as DocuSign® or AdobeSign™ for signing of documents put before the USPTO. However, in the US, it appears that the office is choosing to simply ignore any signature ID information or graphics in addition to the simple electronic virgule signature generated by DocuSign®, for example.

A qualified electronic signature differs from a simple electronic signature in that it is made with a qualified certificate for identifying the signer. The certificate is designed to ensure the authenticity and data integrity of the signature, and its accompanying document and/or attached data. The certificate is issued by a qualified trust service provider and its creation data is stored on a qualified signature creation device, which is often a cloud-based trust service (for example, DocuSign® or AdobeSign™).

We have been asked a number of times if qualified signatures are accepted by the Australian Patent Office. The short answer is, yes, simple digital or electronic signatures are an acceptable means of signing documents before the Australian Patent Office and have been for some time. Electronic signatures are legally recognized in Australia and are provided for by s 10 of the Electronic Transactions Act 1999. However, much like the USPTO, qualified electronic signatures will not necessarily be validated through the qualified certificate for identifying the signer. That is, in most instances any signature IDs or graphics will be ignored.

In any event, under Australian patent legislation there are only a few provisions that explicitly require a signature. Declarations made under the Patents Act 1990, or other relevant legislation, always require a signature. Documents relevant to examination that require a signature include the following:
• Certificate of verification statements;
• Deposit receipts under the Budapest Treaty;
• Patent assignment forms (s 14); and
• Notice of withdrawal of a patent application (s 141).

It is also worth bearing in mind that Australian Patent Office works under the assumption that the applicant and attorney filing the application have the necessary authorisation to do so. Accordingly, we do not require a signed Power of Attorney.

Where the requirement for a signature arises solely from a prescribed form, the typed name of the person completing the form, or the typed name of the person who is their agent may be used in place of a signature. In this context, the person who has applied their name, or approved someone else to apply their name, is taken to have approved the content of the form.

Examples of prescribed forms include the patent request. It is also appropriate to apply this principle to other correspondence, e.g. responses to examination reports.