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Recent weeks have witnessed some new developments at the US Patent and Trademark Office, from the adoption of e signatures to the clarification of some ambiguities. We've pulled together a few insights to help you make sense of these changes. Starting March 22, 2024, patent correspondence may be electronically signed using DocuSign Acrobat sign and similar third party e signature software.
The new rule from the US Patent and Trademark Office is aimed at making patent correspondence more convenient for users, as well as to reduce barriers of access and to better synchronize the USPTO's processes with other patent offices. In a statement, USPTO director Cathy Vidal said the change will provide additional flexibility and convenience to patent applicants and owners, practitioners, and other parties who sign patent related correspondence and promote consistency by establishing signature requirements, which are common to both patent and trademark matters.
The rule addresses stakeholder input received, including during multilateral forums such as IP five and trilateral, and will enhance harmonization of practices and procedures amongst intellectual property offices globally. The new rule requires that electronic signatures preserve signature data, including a UH, digital certificate, token, or audit trail that can be reviewed.
In addition, the rule requires the signature to have an indication that it was electronically signed. Both of these requirements improve the veracity of signatures currently required by the USPTO. For example, the current? S signature includes no authentication, leaving them open to a variety of challenges to authenticity. Further, even a UH wet signature requires authentication if challenged.
Thus, using an electronic signature may improve the veracity of signatures provided to the USPTO without the need for witnesses or notaries. Next up, clarifying a few ambiguities United States patent and Trademark Office officials recently reiterated to all patent examiners that they must provide clear, consistent analysis regarding means plus function and step plus function limitations.
The goal of this memorandum is to provide applicants and courts with clarity on the USPTO's position with respect to claim interpretation under 35 U. S. C. 112. In addition, the memo directs examiners to training opportunities and educational resources to help them interpret means plus function and step function issues in a more consistent and clear manner.
Consistent with this memo, specifically, the USPTO wants examiners to state more consistently whether a UH claim limitation invokes 35 USC 112 and provide a more detailed evaluation of the adequacy of the supporting disclosure. USPTO director Cathy Vital said in a statement, this guidance is part of our continued work to create more robust and reliable intellectual property rights on which patent applicants, investors, and the public can rely and use to build a stronger economy.
This guidance builds on our 101 guidance and recently issued 103 guidance to ensure the USPTO is using consistent interpretations of the law across the agency. According to the USPTO, drafting claims with limitations that comply can be beneficial to applicants by allowing them to recite a function in a claim and rely on the specification for the corresponding structure, material, or acts that perform the function and equivalents to the disclosed structure, material, or acts.
This technique permits the claim drafter to avoid specific identification of the means or step for performing a claimed function in the claim itself by offering a shorthand that can point to a more robust description of the means or step in the specification. Interested parties may submit written comments on these proposed updated examiner guidelines to the USPTO by June 18.
More information on both developments is available in the show notes.
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