Which documents don’t need a signature; the options included, an appeal brief, and an assertion claiming small entity status
Q) Documents Requiring Signatures
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An appeal brief does require a signature:
“§ 41.67 Appellant’s brief
(a)(2) The brief must be signed by the appellant, or the appellant’s duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2).”
If the appeal brief is not signed, the relevant form paragraph states:
Ҧ 12.112 Brief Defective РUnsigned
The appeal brief filed on [1] is defective because it is unsigned. 37 CFR 1.33. A ratification properly signed is required. To avoid dismissal of the appeal, appellant must ratify the appeal brief within ONE MONTH or THIRTY DAYS from the mailing of this communication, whichever is longer. Extensions of time may be granted under 37 CFR 1.136.”
Also note that a notice of appeal does not require a signature, but MPEP 1204 does state:
“… failure to sign the notice of appeal may have unintended adverse consequences; for example, if an unsigned notice of appeal contains an (unsigned) authorization to charge the notice of appeal fee to a deposit account, the notice of appeal will be unacceptable because the notice of appeal fee is lacking.”
While an assertion claiming small entity status by paying the exact small entity basic filing or basic national fee does not require a signature, a written assertion of small entity status does require a signature by:
“37 CFR § 1.27(c)(2) Parties who can sign and file the written assertion.
The written assertion can be signed by:
(i) One of the parties identified in §1.33(b) (e.g., an attorney or agent registered with the
Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;
(ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or
(iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.”
Also note that loss of entitlement of small entity status DOES require a signature by a party identified in § 1.33(b) (assertion by payment of other than small entity fee not sufficient).
“37 CFR § 1.27 (g)(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.”
Notice of Appeal does not require signature.
I guess we can cross those two off the list as wrong answers. From the forum another choice may have been re: signature rights of partial assignees.
There is another question from the Forum regarding signatures. – question regarding signature in box IX of of the IA filing (who can sign and what authorization is required)
Signature requirement of an attorney or assigned or inventor (Box No. IA) — I looked this up and found some guidance in 1800 but it was extremely time consuming
Searching for “box no. IX” instead of “box IX” will help …
This takes you to MPEP 1820 Signature of the applicant.
PCT Art. 14 will let you know that the RO will check for the presence of a signature.
Rule 4 informs you that generally all applicants need to sign (and all inventors if the relevant Member Country so desires, such as the US).
However, things have changed for IA filed from Jan 1, 2004, and Rule 26.2bis tells you that actually the signature of just one applicant will do afterall.
Further, the request may be signed by an agent instead (with pre-2004 IA requiring appointment via a separate Power of Attorney that again does have to be signed by applicants).
Explained in more detail under the heading “Signature of Applicant or Agent” under 1820.
That is correct upto a point.
Signature of one applicant, when there are more than one – will suffice for the purposes of article 14 of PCT, meaning it is not a defect and will be given a filing date.
However:
1820 does claify that the national laws can require confirmation of all applicants.
Also note: An agent can sign the application post 2004 also.
A separate POA is not required by the US RO (unlike the national applications)
The international application can be filed without applicant’s signature on the request. The lack of any required signature on the request is a correctable defect under PCT Article 14(1)(a)(i) and (b), and can be remedied by filing a copy of the request (or, where the request has been signed by an agent, of a power of attorney) duly signed by the applicant within the time limit fixed by the receiving Office for the correction of this defect.
37 CFR 10.18. Signature and certificate for correspondence
filed in the Patent and Trademark Office.
(a)
**>For all documents filed in the Office in patent, trademark,
and other non-patent matters, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Patent and Trademark
Office must bear a signature by such practitioner complying with the provisions of § 1.4(d), § 1.4(e), or § 2.193(c)(1) of this chapter.<
37 CFR 1.27(c)(3)
(3)
Assertion by payment of the small entity basic filing or basic national fee. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error.
I think that the answer is “assertion of small entity status.” If a party pays the exact amount required for the small entity basic filing fee or small entity basic national fee, the PTO treats the payment as a written assertion of entitlement to small entity status. Therefore, no signature from anybody is required in this case.
I agree. That was the first thing that came to my mind. That’s my best guess at least.
Remember that written assertion via payment only OK when application filed. If later, must have a formal written assertion as per rule 1.27 (c)(3)(ii).
I disagree with the posters above, a written assertion is a written assertion, payment by paying the small entity fee is NOT a written assertion. Hence the writteen assertion (MPEP 510) requires a signature
When you file an appeal, you need not sign.
I agree…. See 41.31(b)
(b) The signature requirement of § 1.33 of this title does not
apply to a notice of appeal filed under this section.
I took the exam on September 7th and passed. First computerized exam I ever took. Here is some advice. First, reviewing outlines of the MPEP is fine. However, I recommend getting very familiar with the MPEP itself. Practice the old exams, but when reviewing the answers, actually look up the corresponding MPEP section and/or rules and read it/them. As patent agents or attorneys, we are going to need to be very familiar with the MPEP anyway. I would also recommend purchasing the home study course by David Meeks. It breaks the MPEP down into manageable sections for planning a study schedule. Each section is accompanied by a detailed explanation as to concepts within the corresponding MPEP section. The materials do not include a simplified outline, but actually “force” one to read portions of salient MPEP sections. So I feel I not only passed the test, but have a thorough background on the MPEP. Good luck! I also want to thank the editors of this website. Reading comments/discussions over various old questions was very helpful.
just got this question, options included authorization to file fees, amendment and something else
authorization to charge fees that is
couldn’t find the answer anywhere, don’t remember what i picked…
notice of appeal need not be signed
I can’t find the question from the old exams but if you have Patware: Question ID: is 245
one of the correct answers said “A unsigned notice of appeal…”
Question cited MPEP 1205
1204Notice of Appeal [R-8]
I.APPEAL BY PATENT APPLICANT
Although the rules do not require that the notice of appeal identify the rejected claim(s) appealed, or be signed, applicants may file notices of appeal which identify the appealed claims and are signed. It should be noted that the elimination of the requirement to sign a notice of appeal does not affect the requirements for other papers (such as an amendment under 37 CFR 1.116) submitted with the notice, or for other actions contained within the notice, e.g., an authorization to charge fees to a deposit account or to a credit card, to be signed. See MPEP § 509. Thus, failure to sign the notice of appeal may have unintended adverse consequences; for example, if an unsigned notice of appeal contains an (unsigned) authorization to charge the notice of appeal fee to a deposit account, the notice of appeal will be unacceptable because the notice of appeal fee is lacking.
Got a question today about which document if not signed will not be entered. Among answers there was “notice of appeal”. I think I mentally blocked this question because I couldn’t find the answer anywhere… arrgghhh….
I also had a question (maybe the same as above?: Again, mentally blocked) where I eliminated all the answers and was left with:
1) Amendment signed by attorney not of record
2) Amendment signed by one inventor (there were multiple) without POA.
The answer asked which was wrong, so I picked 2 (b) because the attorney may act in a “representative capacity”
I think Ve is right on this. 1.33(b)(4) requires the signature of ALL the applicants. In 2), only one inventor signs while there are multiple of them and thus the amendment will not be entered.
Ve,
I think I saw that question. I went to review my exam to DC (missed on my 1st try – got a 66% – somehow I only had 25 questions wrong)
I am trying to remmeber that question. It went something like in which situation would the “inclusion or omission of an ink signature” make the document invalid. Or something.
The choices were
1. Amendment (?) by atty not of record – (which is fine, in accordance with 37 CFR 1.34, a paper filed by a registered patent attorney or agent in an application in which he or she is not of record must include his or her name and registration number with his or her signature.)
2. Something about one inventor without a Power of Attorney. I think I remember this is the right choice. If inventor is given POA by the rest, he can.
Has anyone seen this question? Do you remember the rest? I’m retaking soon!
It’s impossible to only have 25 questions wrong and not pass. Even if you got 10 outta 10 on the Beta Questions. You’d still have to score less than a 73 to fail (63/90). I would look into that…
I got this question 5/16/2011.
I got a variant asking which documents can be submitted with a copy of the signature. I think the choices were oath/dec, credit card charge, amendment.
Got this question today 5/18/11, and the one Becker mentioned above.
What can be send with a copy of the signature?
I) Declaration
II) Authorization to charge credit card
III) Amendment
I chose e) I, II, and III
This was HARD to look up. I found the credit card one, and I was pretty sure already the other 2 could be copies.
got this on June 2nd….all was the anwer
i also had the question on what can be send with a copy of signature. however although i do not remember the choices, Answer E was not there so it has to be just one answer. are you sure you can send a copy of the declaration and amendment?
or maybe it was the other way… which document will NOT be entered if send with a copy of signature. I know small entity was there but did not pick that, amendment was also an answer choice. i can’t remember what i picked. it was teh first question on my exam
Yes you can submit a copy of the oath or declaration.
i found something on mpep. a photocopy or facsimile transmission of an original of an amendment, declaration, petition, issue fee transmittal form, authorization to charge a deposit account or credit card may be submitted in a patent application.
I am sure that on my exam the question was which document will not be entered if a copy of signature was submitted. I do not remember the answer choices
Zao:
What section of the MPEP are you citing here?
502.02 under I.Handwritten signature
This is where PTO and MPEP fails. While it requires ribbon attached to an oath like it was a classified document in the 16th century and make people swear only in front of authorized US diplomats overseas, copy of declaration is Ok? Huh, what gives?
I guess a declaration is ok to be a copy, but an oath is not. Copy of the oath is ok for continuations and divisionals, but not the original.
Also I imagine all the things that need certifications cannot be copies.
37 CFR 1.4 under sanctions:
(f)When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
Bigbad is correct here. All others where copies of handwritten signatures are correct was properly called out above by Zao. Only the Oath cannot be submitted as a copy.
Curiouser and curiouser. Looks like the cite below is leading to an original oath being ok for submission by fax or photocopy. MPEP 602:
VII.COPIES OF OATHS OR DECLARATIONS ARE ENCOURAGED
A copy, such as a photocopy or facsimile transmission, of an originally executed oath or declaration is encouraged to be filed (see MPEP § 502.01), especially since applications are maintained in electronic form, not paper. The original should be retained by applicant, or his or her representative as evidence of authenticity. If a question of authenticity arises, the U.S. Patent and Trademark Office may require submission of the original. See 37 CFR 1.4(d)(1)(ii).
Q: Which documents cannot be submitted with a copy of the signature -answers oath, dec, credit card charge, amendment.
Can we submit auth with copy of signiture?
Got maggie’s today 9.22.11
As far as the question of which document cannot be submitted with a COPY of an original signature, my reasoning is that if a SET of documents are NOT permitted to be faxed per the MPEP, then a SUBSET of those will also not be allowed to be submitted with a copy of an original signature, i.e., if you need an original signature, then you definitely CANNOT fax it. Since, “The situations where transmissions by facsimile are prohibited are identified in 37 CFR 1.6(d)(1)-(9)” (502.01), i’m thinking it MUST be these documents which are not allowed to be submitted without original signature. I copy pasted the rule below….any thoughts?
CFR 1.6(d)
….Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
(1)Correspondence as specified in § 1.4(e), requiring an original signature;
(2)Certified documents as specified in § 1.4(f);
(3)Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
(4)Color drawings submitted under §§ 1.81,1.83 through 1.85, 1.152, 1.165, 1.173, or 1.437;
(5)A request for reexamination under § 1.510 or § 1.913;
(6)Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1through 5.5 of this chapter and directly related to the secrecy order content of the application;
(7)[Reserved]
(8)[Reserved]
(9)In contested cases before the Board of Patent Appeals and Interferences except as the Board may expressly authorize.
So, I think the answer is they ALL can be copy. Rules state handwritten signature can be original or a copy of original.
1.4(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.
Even this says they accept the equivalent of a handwritten signature
(e) Correspondence requiring a person’s signature and relating to registration practice and disciplinary investigations, or disciplinary proceedings must be submitted with an original hand written signature personally signed in permanent dark ink or its equivalent by that person.
Hey Maggie,
As you correctly noted, 1.4(d) states handwritten signature can be original or a copy of original, however, as it goes on to state, this does NOT apply to “(d)(2), (d)(3), (e) and (f)”
1.4(d)(2) says that you can file an “S” signature anywhere you are allowed to electronically file or fax per 1.6(d).
1.4(d)(3) says don’t mess with PTO forms, don’t rearrange the structure, however if you do, take all PTO identification off of it because your on your own.
The last two survivors on the island… 1.4(e) and 1.4(f),
In 1.4(e): -No need to re-post because you provided it above-
I do not believe you are allowed to submit a copy of a signature because it requires an “original hand signature”. When it goes on to state “dark ink or its equivalent”, the word “equivalent” is referring to “dark ink”, i.e., you may submit the original hand signature in black or blue ink (dark ink).
In 1.4(f): “When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.” Clearly no copies, requires originals, and consequently, original hand signatures.
A quick glance at 1.6(d), and we can confirm that 1.6(d) agrees with 1.4(e)/(f) in asmuch as,
1.6(d) states that faxes aren’t allowed in the following situations and starts with these two:
(1)Correspondence as specified in § 1.4(e), requiring an original signature;
(2)Certified documents as specified in § 1.4(f);
No fax = original hand signature (atleast in this situation)
After all that, I still cannot answer your question in post #34, all I can say is that any correspondence involving enrollment, discipline, and certified docs/info has to be submitted with original hand signatures. Oaths, decs, credit card charges, amendments, as far as I know, can all be submitted in fax with copy of signature. …(thud, thud, thud) that’s the sound of my forehead slamming on my desk.
Thank you! I was not clear in 1.4(e) about the word “equivalent”. “OR its equivalent” suggested to me a non-handwritten S-signature suggested later on”. But, if the MPEP means “dark ink or its equivalent”, the word “equivalent” is referring to “dark ink”, i.e., you may submit the original hand signature in black or blue ink (dark ink). Then yes that is the answer. Q: Where did you find the clarification on the definition?
Handwritten signature in dark ink are required for:
(1) Registration practice 1.4 (e)
(2) Disciplinary papers/proceedings 1.4 (e)
(3) Any Certified paper 1.4 (f)
There is no clarification provided in the MPEP, it’s just another example of obtusely worded regulatory law. The tax code is written in similar fashion.
So, as you neatly provided, atleast we have these 3 choices. When you get a chance, can you take a look at my comment on Q) Board of Appeals Remanding case to the Examiner (4.03.25a). I cannot find a definitive answer.
I got this question on 10/29/2011.
The question asked which of the following does not require a signature:
(1) a notice of appeal
(2) an assertion of small entity status
(3) an oath/declaration
(4) an authorization to pay by credit card
(5) an amendment
I chose option (1).
Thx
Confused, but I will still assume Appeal Brief requires signature
“§ 41.67 Appellant’s brief
(a)(2) The brief must be signed by the appellant, or the appellant’s duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2).”
****This is true, but it is not talking about Appeal Brief in regular prosecution but inter parte reexam
If the appeal brief is not signed, the relevant form paragraph states:
Ҧ 12.112 Brief Defective РUnsigned
The appeal brief filed on [1] is defective because it is unsigned. 37 CFR 1.33. A ratification properly signed is required. To avoid dismissal of the appeal, appellant must ratify the appeal brief within ONE MONTH or THIRTY DAYS from the mailing of this communication, whichever is longer. Extensions of time may be granted under 37 CFR 1.136.”
****This paragraph in 1200 is gone. I could not find it.
I agree with SoBe for the most part, but I think SoBe overinterpret the following
“In 1.4(f): “When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.” Clearly no copies, requires originals, and consequently, original hand signatures.”
Consequently, orginal sinagtures, which can be d(1) hand written or d(2) S-signature, as long as they are orginal.
S-signature can be original, for instance, personal name stamps used in Asian countries.
Be noted, a copy of a S-signature is NEVER acceptable. d(1) hand written permits a copy as stated in d(1)(ii). But no similar language in d(2) S-signature.
Got something about signature 5/22/12. PTO won’t accept amendment not signed by ALL applicants.
Passed!
Where in MPEP is this? Can’t an attorney or agent of record still sign without all applicants signing?
I’m thinking 1.33(b)(4).
(b)Amendments and other papers. Amendments
and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
(1)A patent practitioner of record appointed in compliance with § 1.32(b);
(2)A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
(3)An assignee as provided for under § 3.71(b) of this chapter; or
(4)All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
Got this one today.
This should put a final end to the following questions:
1.) What document does NOT require a signature?
Answer: a Notice of Appeal (NOA) (but there might be others)
2.) What documents CAN use a PHOTOCOPY of a signature?
Answer: Read 502.02 and read under heading “I. HANDWRITTEN SIGNATURE”. This will answer the question.
Hope this helps.