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Unsigned, Sealed, Delivered: PTO Eliminates Handwritten Signatures for Certain OED Correspondence and Credit Card Payments

The US Patent & Trademark Office (PTO) eliminated the requirement for original handwritten signatures on certain correspondence with the Office of Enrollment and Discipline (OED) and on certain payments made to the PTO by credit card. The handwritten signature requirements of 37 CFR § 1.4(e) were deleted effective July 2, 2021.

37 CFR § 1.4(e)(1) previously required correspondence related to registration to practice before the PTO in patent cases, enrollment and disciplinary investigations, and disciplinary proceedings to be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent. 37 CFR § 1.4(e)(2) required the same for payments by credit cards where the payment was not made via the electronic filing system. Elimination of the entirety of § 1.4(e) allows the use of facsimile transmissions and S-signatures in enrollment and disciplinary matters before the OED, and for payments by credit card.




Don’t Let Prophetic Examples Work Against You

On July 1, 2021, the US Patent & Trademark Office (PTO) issued a notice reminding patent applicants that when their applications contain both prophetic and working examples, they must make a clear distinction between the two.

Prophetic examples illustrate reasonably expected results or anticipated results. They stem from experiments that have not been actually performed and are instead hypothetical simulations. In contrast, working examples result from experiments that were actually performed. In order to aid in distinguishing between the two example types within a patent application, prophetic examples should be written only in the future or present tense—not in the past tense. Prophetic examples cannot be used to meet the written description and enablement requirements for a patent application.

The PTO’s recent notice underscores the importance of the applicant’s duty to clearly distinguish between prophetic and working examples: “[k]nowingly asserting in a patent application that a certain result ‘was run’ or an experiment ‘was conducted’ when, in fact, the experiment was not conducted or the result was not obtained is fraud.”




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