Using DocuSign at the USPTO: A practical guide for patent applicants and practitioners
Executive Summary: The USPTO permits DocuSign, Acrobat Sign, and comparable qualifying platforms for a broad range of patent documents, including inventor declarations, powers of attorney, prosecution papers, and evidentiary declarations. Under 37 C.F.R. § 1.4(d)(4), the signing process must satisfy the Office’s software and signature requirements, preserve authentication data, and provide for personal execution by the proper signer. Practitioners should confirm the required identifying information, retain the complete executed document and supporting records, and obtain renewed execution after substantive revisions. Each document also retains its substantive requirements: Rule 131 declarations principally concern pre-AIA practice and require appropriate declarants and evidence establishing the relevant historical facts, while Subject Matter Eligibility Declarations under Rule 132 require a sound factual foundation, a connection to the claimed invention, and timely submission. Electronic execution cannot supply disclosure that was required in the original application or establish the persuasiveness of technical testimony. Patent assignments require separate attention to the underlying transfer’s legal effect, and trademark submissions follow a distinct, narrower procedure. An effective workflow therefore coordinates qualifying software, proper signing authority, document-specific requirements, and timely USPTO filing.
Introduction
An inventor completing a patent declaration, a company appointing patent counsel, and an expert signing a technical declaration can ordinarily execute their documents through DocuSign, Acrobat Sign, or another qualifying document-signing platform. The USPTO expressly broadened its patent signature rules effective March 22, 2024. The resulting framework makes commercial electronic signatures available across ordinary patent correspondence while preserving the requirements governing the document and the individual who signs it. See Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence, 89 Fed. Reg. 20,321, 20,321–22 (Mar. 22, 2024).
The practical inquiry has several parts: whether the software and signature block satisfy the USPTO’s requirements, whether the individual has authority to execute that particular document, and whether the document contains the necessary statements. Declarations deserve special attention because the signer makes substantive representations about inventorship, facts, or technical evidence. The discussion below specifically addresses inventor declarations, Rule 131 declarations of prior invention, and Rule 132 Subject Matter Eligibility Declarations (SMEDs). This article addresses domestic patent practice and USPTO patent proceedings, with a separate discussion of the narrower procedures for trademark submissions.
I The rule authorizing commercial electronic signatures
Section 1.4(d)(4) permits correspondence requiring a signature in a patent application, patent, or other USPTO patent proceeding to bear an electronic signature personally entered by the named signer in a form specified by the Director. The 2024 final rule and accompanying memorandum identify qualifying third-party document-signing software, including DocuSign and Acrobat Sign, as an available means of execution. The rule establishes criteria that other platforms can also satisfy. See 37 C.F.R. § 1.4(d)(4); USPTO, Electronic Signatures 37 CFR 1.4(d)(4) (Mar. 22, 2024).
Signing and filing remain separate acts. A document executed electronically may be submitted through the patent electronic filing system or through another delivery method permitted for that particular document. Completing an electronic signing envelope does not itself file the document or establish its USPTO receipt date. The final rule also directs Office personnel to follow the new requirements where earlier guidance conflicts with them. Practitioners evaluating an older form or instruction should therefore read it together with the current rule. See 89 Fed. Reg. at 20,321–22.
II Requirements for the platform and signing process
The USPTO’s criteria address both the underlying software and the visible signature. The software must be specifically designed to generate electronic signatures and preserve signature data for later inspection through a digital certificate, token, or audit trail. The signature page or electronic submission form must indicate that document-signing software was used. A signature image inserted through ordinary graphics software does not, by itself, establish compliance with this route. See USPTO, Electronic Signatures 37 CFR 1.4(d)(4), at 1 (Mar. 22, 2024).
The signer’s name must appear in printed or typed form, preferably immediately below or adjacent to the signature, with enough specificity to identify the individual. A patent practitioner signing under § 1.33(b)(1) or (2) must supply the registration number as part of, immediately below, or adjacent to the signature. A design patent practitioner must additionally place the word “design” adjacent to the signature. The platform’s default signature field should therefore be reviewed against the required identifying information. See 37 C.F.R. § 1.4(d)(4)(i)–(ii).
Provide the named signer with the complete final document for review. That person must personally perform the signing action. Counsel and administrative staff may prepare the document and route the signing invitation, but cannot use the software to generate someone else’s signature. The filer of another person’s signed document must have a reasonable basis to believe that person actually signed. The USPTO may request ratification, confirmation, or supporting evidence if it reasonably doubts authenticity. See 37 C.F.R. § 1.4(d)(4)–(5), (h).
A separate completion certificate generally need not accompany every patent filing. The required indication of software use must still appear on the signature page or electronic submission form. As an office practice, retain the complete signed document, its identified attachments, and the associated completion certificate or audit record together. This preserves the executed version and evidence of authenticity. If substantive text changes after execution, obtain the signer’s review and execution of the revised document; the earlier signature does not show adoption of later additions. See 89 Fed. Reg. at 20,321–22; 37 C.F.R. § 1.4(d)(5)(ii), (h).
III Authority to sign
The signer’s authority depends on the document. A company representative who can execute a power of attorney does not thereby acquire authority to prosecute the company’s application. Conversely, a practitioner’s ordinary prosecution authority does not necessarily permit the practitioner to execute the company’s appointment of counsel. For a juristic applicant, MPEP § 402.02(a) requires authority to act on the entity’s behalf and explains that authority to practice before the Office alone is insufficient for signing its power of attorney. See 37 C.F.R. §§ 1.32(b)(4), 1.33(b); MPEP § 402.02(a).
Other documents have different rules. An ownership statement under § 3.73(c) may be signed by a practitioner of record or another person authorized to act for the assignee. Micro-entity certifications follow § 1.29(e) and the signers authorized by § 1.33(b). Disclaimers under § 1.321 require the appropriate applicant or patentee, or an attorney or agent of record; practitioners should not assume that authority to act in a representative capacity is sufficient for every document. See 37 C.F.R. §§ 3.73(d), 1.29(e), 1.321(a)(1), (b)(1).
IV Patent documents covered by the rule
The authorization applies generally to signed patent correspondence. Applying it to common filings produces the following practical reference. Section III explains the principal distinctions in signing authority; the governing rule must still be checked for the particular applicant, owner, and proceeding.
Document | Who executes it | Point to confirm |
Inventor declaration | The inventor whose declaration is required | Required statements and personal review of the application |
Substitute statement | An eligible applicant acting through a proper signer | Circumstances and authority under § 1.64 |
Power of attorney or revocation | The applicant or patent owner, through an authorized person where applicable | Authority to appoint or revoke representation |
Assignee statement under § 3.73(c) | A person authorized to act for the assignee | Ownership evidence and the signer’s authority |
Application data sheet and prosecution papers | A practitioner or other signer permitted by § 1.33(b) | Representation status and any document-specific rule |
Micro-entity certification | A person permitted by § 1.29(e) | Eligibility and the applicable basis for certification |
Terminal or statutory disclaimer | The proper applicant or patentee, or attorney or agent of record | The particular disclaimer and required ownership statements |
Expert or fact declaration | The individual providing the testimony | Final text, verification language, and any required date |
Rule 131(a) declaration | The proper declarant under § 1.131 and MPEP § 715.04 | Availability of Rule 131, historical facts, and supporting exhibits |
Subject Matter Eligibility Declaration (SMED) | The inventor, expert, or other person providing the evidence | Rule 132 formalities, factual foundation, and connection to the claims |
The prosecution category includes Office Action responses, amendments, information disclosure statements, requests for continued examination, petitions, and signed application transmittals. Nonpublication requests and other certifications also remain subject to their particular substantive requirements. For the relevant signing capacities, see 37 C.F.R. §§ 1.29(e), 1.32(b), 1.33(b), 1.321, and 3.73(c). Assignments, addressed separately in Section VI, additionally implicate the law governing the underlying transfer.
V Signing inventor and supporting declarations
Inventor declarations
Section 1.63 generally requires an oath or declaration from each inventor, subject to an applicable exception or a valid substitute statement. Each required inventor executes that inventor’s own document. See 37 C.F.R. § 1.63(a).
The declaration must identify the executing inventor and the application, include the required statements concerning inventorship and authorization of the application, and contain the prescribed acknowledgment concerning willful false statements. Certain identifying information may instead be supplied in an application data sheet. Separately, § 1.63(c) requires the signer to have reviewed and understood the application, including the claims, and to be aware of the duty of disclosure. Those are execution prerequisites even though the modern declaration need not expressly recite them. The signing invitation should give the inventor access to the application that the declaration identifies. See 37 C.F.R. § 1.63(a)–(c), (g); MPEP § 602.01(a).
A declaration containing the required acknowledgment can be executed without notarization. An inventor abroad can therefore personally complete an appropriate electronic signing process without obtaining a notary merely because of the inventor’s location. The declaration must still satisfy the applicable USPTO requirements. When an actual oath is used, the separate requirements concerning its administration continue to apply; ordinary document-signing software does not itself administer an oath. See 37 C.F.R. §§ 1.63(g), 1.66.
Multiple inventors and continuing applications
For multiple inventors, a signing platform can route a common document to separate signers, or counsel can use individual declaration forms. Individual forms can simplify administration when inventors sign at different times. The completed records should make clear which inventor executed each declaration and which application the declaration concerns. If a compliant application data sheet supplies the information required by § 1.63(b), an individual declaration may identify only the inventor executing it. Otherwise, each separate declaration must include the required information concerning all inventors. See 37 C.F.R. § 1.63(b).
A continuation does not invariably require a newly executed declaration. Section 1.63(d) permits reliance on a qualifying earlier declaration or substitute statement when its conditions are met, including submission of the required copy. A newly added joint inventor must provide the required declaration or be addressed through the applicable substitute-statement procedure. The decision to request a fresh signature should therefore begin with the continuing-application requirements and the existing record. See 37 C.F.R. § 1.63(d).
Substitute statements
Section 1.64 provides a separate procedure when an inventor is deceased, legally incapacitated, refuses to execute the declaration, or cannot be found or reached after diligent effort. An eligible applicant may execute a substitute statement identifying the circumstances and the relationship of the signer to the inventor. The statement also requires the prescribed substantive information and false-statement acknowledgment. The person executing it must satisfy the rule’s review and duty-of-disclosure prerequisites. See 37 C.F.R. § 1.64.
The substitute-statement signer acts in the signer’s own authorized capacity. A corporate representative therefore executes the statement using the representative’s own identity. An unanswered electronic signing invitation, standing alone, should not be treated as establishing refusal or diligent effort; the actual circumstances must support the selected ground. For a juristic applicant, a routine prosecution power of attorney does not by itself authorize the practitioner to execute the substitute statement for the entity. See MPEP § 604.
Verification for evidentiary declarations
Rule 131 declarations and declarations under § 1.132, including SMEDs, provide evidence under the signing framework in Section II. Their evidentiary value depends on the testimony and its foundation. A declaration under § 1.68 must contain the required truth statements and warning concerning willful false statements; it does not require notarization. For PTAB trials, § 42.2 recognizes declarations under § 1.68 and declarations under 28 U.S.C. § 1746 as permissible affidavit forms. See 37 C.F.R. §§ 1.68, 1.131, 1.132, 42.2.
Rule 131 declarations of prior invention
A declaration under § 1.131(a) may establish invention before the effective date of a reference or activity relied upon in a rejection. Its availability must be evaluated before obtaining signatures. The procedure principally concerns pre-AIA practice; the filing history and statutory basis of the rejection control. In applications subject to the AIA’s first-inventor-to-file provisions, § 1.131(e) preserves only a narrow use against a pre-AIA § 102(g) rejection where applicable. An earlier invention date generally cannot remove AIA prior art. Rule 131(a) also cannot overcome a statutory bar or the specified reference claiming interfering subject matter. See 37 C.F.R. § 1.131(a), (d)–(e); MPEP § 715.
The proper declarant depends on the application and the subject matter under rejection. MPEP § 715.04 recognizes the inventive entity responsible for that subject matter, a properly qualified applicant or other permitted party, and the owner of a patent under reexamination. When relying on inventors’ declarations, fewer than all named inventors may suffice if the required showing establishes that those inventors alone invented the rejected subject matter. Counsel should identify the applicable category and supporting circumstances before routing the document. See MPEP § 715.04.
The evidence must establish either reduction to practice before the reference’s effective date, or earlier conception coupled with the required diligence from before that date through later reduction to practice or filing. The relevant drawings or records, in original or copy form, must accompany and form part of the declaration unless their absence is satisfactorily explained. Identify the acts, dates, and supporting exhibits with enough detail to evaluate the showing. The platform’s execution timestamp documents when the declaration was signed; it does not establish when conception, diligence, or reduction to practice occurred. See 37 C.F.R. § 1.131(b); MPEP §§ 715.07–715.07(a).
Rule 131 also contains a distinct common-ownership procedure in § 1.131(c). In its specified pre-AIA obviousness circumstances, a declaration addressing current common ownership and prior inventorship operates together with a qualifying terminal disclaimer. MPEP § 718 permits execution by the inventor or inventors, the attorney or agent of record, or the assignee or assignees of the entire interest. The accompanying terminal disclaimer must separately satisfy its own signing and substantive requirements. Counsel should therefore distinguish a § 1.131(a) prior-invention submission from a § 1.131(c) submission when preparing the signing package. See 37 C.F.R. § 1.131(c); MPEP § 718.
Subject Matter Eligibility Declarations under Rule 132
A Subject Matter Eligibility Declaration, or SMED, is a voluntary evidentiary declaration under § 1.132 used to support eligibility under 35 U.S.C. § 101. Its purpose is to develop the factual record relevant to the eligibility analysis. See 37 C.F.R. § 1.132; USPTO, Subject Matter Eligibility Declarations (Dec. 4, 2025).
An inventor, coworker, independent expert, or other person with knowledge of the asserted facts may supply the evidence; an independent expert is not required. As a drafting practice, identify the declarant’s relevant experience, the materials reviewed, the basis for each factual assertion, and any relationship to the applicant. An inventor’s interest in the application does not by itself disqualify the declaration, although evidence from a disinterested person can be more persuasive. See USPTO, Subject Matter Eligibility Declarations, at 2 (Dec. 4, 2025); MPEP § 716.01(c); USPTO, SMED Flowchart for Analysis and Best Practices, at 3–4 (Sept. 29, 2026).
A useful SMED connects particular claim limitations to objective facts: for example, what a skilled person would understand from the filed specification, how the claimed operation improves a technology, or why an operation cannot practically be performed mentally. The declaration may explain facts existing at filing, but cannot supply information that the original disclosure was required to contain. An improvement need not have been expressly labeled as such if the filed disclosure makes it apparent to a skilled person and the claims reflect it. A bare opinion that a claim is legally eligible carries no weight as a legal conclusion; the supporting facts are what matter. See USPTO, Subject Matter Eligibility Declarations, at 3 (Dec. 4, 2025); USPTO, SMED Flowchart for Analysis and Best Practices, at 4 (Sept. 29, 2026).
The USPTO’s September 29, 2026 memorandum supplements its April 30, 2026 practitioner guidance and leaves the December 4, 2025 examiner memorandum in place. Its recommendations include identifying the specific eligibility issue addressed and, where useful, filing a separate SMED. A single Rule 132 declaration addressing several statutory grounds remains permissible. When filing a separate SMED through Patent Center, the recommended document code is “AF/D.SMED,” with the description “Subject Matter Eligibility Declaration.” See USPTO, SMED Flowchart for Analysis and Best Practices, at 2–4 (Sept. 29, 2026).
Timeliness remains important. The September guidance encourages early submission, potentially before the first action on the merits. After final rejection or other closure of prosecution, entry depends on satisfying the applicable procedural conditions. A timely, formally compliant SMED must be considered on its merits, but its submission does not assure withdrawal of a § 101 rejection. The examiner must weigh the evidence in the record. See MPEP § 716.01; USPTO, Subject Matter Eligibility Declarations, at 3–4 (Dec. 4, 2025); USPTO, SMED Flowchart for Analysis and Best Practices, at 3 (Sept. 29, 2026).
Declaration dates
Dates require attention at the document level. The USPTO’s general patent signature guidance recommends a date, and an omitted date does not itself invalidate an ordinary inventor declaration. A declaration made under § 1746, however, must be dated. That statute also specifies different language for execution within and outside the United States. A platform timestamp is useful evidence, but the document should clearly contain the execution date and the appropriate verification when the governing authority requires them. See MPEP § 602.03; 28 U.S.C. § 1746.
VI Patent assignments and combined declarations
Patent assignments may be electronically executed and submitted for recordation, but their legal effect requires a separate analysis. Section 261 requires an instrument in writing for an assignment of patent rights. For transactions in or affecting interstate or foreign commerce, the E-SIGN Act generally prevents an electronic signature or contract from being denied legal effect solely because of its electronic form. It preserves substantive legal requirements and requires a qualifying electronic record to be retainable and accurately reproducible where a writing requirement applies. See 35 U.S.C. § 261; 15 U.S.C. § 7001(a), (b)(1), (e).
Accordingly, the assignment still needs effective conveyance language, an adequately identified interest, and execution by a person with authority to transfer that interest. The parties must also satisfy applicable contract and assignment law. The USPTO’s 2024 patent signature rule does not independently decide those questions or establish the enforceability of a private agreement.
For recordation, § 3.24 permits a copy or extract of the original instrument. Section 3.54 expressly provides that recording does not determine the document’s validity or effect on title. The executed assignment and the recordation submission should therefore be treated as related records serving different purposes. When the assignee also seeks to take action in a pending application, the applicable ownership and applicant requirements must be satisfied. See 37 C.F.R. §§ 3.24, 3.54; MPEP §§ 317.03, 325.
An assignment may also perform the function of an inventor declaration if it contains the necessary statements and satisfies the governing conditions. Section 1.63(e) requires the applicable information and statements and recordation of a copy under Part 3; the execution requirements of § 1.63(g) also apply. This can reduce the number of documents routed to an inventor, but an ordinary assignment does not become a declaration merely because it identifies the inventor or transfers the invention. See 35 U.S.C. § 115(e); 37 C.F.R. § 1.63(e), (g).
VII Appeals and post grant proceedings
The broad patent correspondence rule also reaches signed papers in ex parte appeals, reexamination, and supplemental examination, subject to the requirements governing each submission. It therefore supports use of qualifying commercial electronic signatures on appeal briefs, appropriate requests, petitions, and responses. The signature method does not change who may act in the proceeding or the document’s filing and service requirements. See 37 C.F.R. § 1.4(d)(4).
For PTAB trials, § 42.6(a)(4) directs that documents be signed in accordance with §§ 1.33 and 11.18(a). Section 11.18(a), in turn, incorporates § 1.4(d) for patent signatures. Read together, those provisions support qualifying electronic execution of IPR and PGR petitions, patent owner papers, motions, and replies. The witness personally executes a supporting declaration, while counsel signs the papers for which counsel is the proper signer. Section 42.2 separately addresses the acceptable declaration forms. See 37 C.F.R. §§ 42.6(a)(4), 11.18(a), 42.2.
VIII The separate trademark signing procedure
Trademark practice requires a separate workflow under § 2.193 and TMEP § 611.01(c)(ii). The current guidance permits the commercial document-signing process for declarations or verifications and for the Change Address or Representation form. Those workflows provide the USPTO-generated PDF signature page needed to satisfy the Office’s requirements. The page must retain the USPTO timestamp showing when the signature page was created within the electronic form. That timestamp is distinct from the date on which the individual subsequently signs.
The software must preserve signature data, indicate that document-signing software was used, and be specifically designed for electronic signatures. The signing date must be supplied by the software or entered by the signer. The signature block must identify the signer’s first and last name and title or position. The USPTO-generated signature page is then attached through the prescribed filing workflow. The current guidance limits this process to the specified signature types; practitioners should not treat it as general permission to replace every trademark submission signature with a commercial-platform signature.
The same TMEP discussion distinguishes documents requiring signatures under § 2.193(e) from third-party agreements submitted as part of the prosecution record. It states that these signature-page requirements do not apply to agreements such as a consent agreement with the owner of a cited mark or a consent to register an individual’s name. The document’s role in the filing therefore matters. See TMEP § 611.01(c)(ii).
IX A practical execution and filing workflow
Consider a domestic nonprovisional application naming two inventors and a corporate applicant. Counsel prepares separate § 1.63 declarations identifying the application, with a compliant application data sheet supplying the additional inventor information. Each inventor receives the application, including its claims, and the corresponding declaration. The power of attorney is routed separately to the person authorized to act for the corporate applicant. Ownership of the invention does not itself authorize the corporate officer to execute the inventors’ declarations.
Before submission, counsel reviews the returned package against the process requirements in Section II, the signing capacities in Sections III–IV, and the declaration requirements in Section V. Any unanswered inventor invitation is addressed under the substitute-statement analysis above. An assignment included in the package receives the separate conveyance and recordation review discussed in Section VI.
Counsel then selects the appropriate document descriptions and submits the documents through the permitted USPTO filing process, addressing any applicable filing deadline or service requirement. The USPTO receipt completes the filing record. Tracking that receipt separately from the platform’s signing event confirms when the Office received the submission.
