eSignature Legality for Assignment of Intellectual Property in India

How to eSign a document: e-signature legality for Assignment of intellectual property in India

hello and welcome to the slw Institute webinar electronic and digital signatures obtaining signatures when attorneys and inventors are working from home our speakers today are Andre Moreau a caterer a phony and Michael Lynch in light of current events that we wanted to take this opportunity to share some thoughts on this pertinent topic please submit any questions using the Q&A feature in the zoom menu our speakers will address questions at end of the presentation thank you very much for attending the webinar today and with that I'll turn things over it Audrey okay great thanks thanks Michelle so let me just get control of the slides your quickly so hopefully I have that and we're gonna advance to the next slide okay just one second here if you can hang with me okay Bri maybe you could just advance that I think it'll be easier to to twist to slide three yeah so you know good morning everyone just wanted to you know extend a hearty welcome thank you for joining us and so by way of you know introduction today we're gonna try tackle the the why how and what of electronic and digital signatures you know to quite quote simon Sinek always good to start with you why and we're going to be doing this with particular reference to the patent procurement process what we're gonna be showing today is you know based largely on our experiences with digital signatures over the past few years we've had a number of clients ask us to to use digital signatures or approved that we reuse them where possible and really where it makes sense and and we found this kind of varies greatly from you know client to client some have you know higher risk tolerance for some of the potential risks and challenges or have procedures in place to deal with that but we you know we can assure some of our learning with you today but I think the overall trend really is that we're seeing you know agencies and laws evolving too towards their much broader acceptance of electronic signatures and we anticipate that this is going to accelerate particularly given the the current pandemic where people are not proximate to to the usual support systems so just you know at a very high level you know the why of electronic signatures I think the primary driver we seen from most of our clients is that it's a great experience for their inventors and you know particularly as people are working remotely now and don't have access to printers and and and that type of thing we're seeing a greater a much greater interest in that but Wells also further advantages are really administrative advantages and Peter's gonna dive a little bit that into that but I think I think what we have seen and what we hear from our paralegals is that generally we're able to file a lot quicker or more quickly than we were or four cases where we are looking to get wet signatures using digital signatures so really can cut down the the time to to filing in certain cases with respect to the how and the water I think what you're going to hear today is really the key word is perhaps flexibility and you know you need to be flexible based on you know a few things here you know number one risk tolerance but also who the inventory is you know if the inventor is the CEO it may not be you know good to send him or her an electronic signature request but also you know where they're located and that type of thing so I think I think that's that a high level next slide please so with respect to the who and what what as well just to tee things up I think we wanted to look there there Hugh no differences here that with respect to documents and with respect to agencies and how these agencies deal with with electronic signatures so what this table over here is really trying to show is that there are a number of different types of documents are going to be discussing the the the the might of micro the magnifying glasses indicate we were going to dig a little deeper so there you'll see the types of documents that we will be looking at primarily our patent office transmittals and but then also IP transfer agreements and then looking at how patent offices in different countries view those and also you know with respect to legality and enforceability are our different court systems may view those so examples of patent office forms may be transmittals and declarations examples of IP transfer agreements may be assignments licenses and security agreements and we're not going to do a deep dive into powers of attorney today but Mike might give some you know comment on that later Bri could be of the next slide please yeah so at a very high level who you gonna be hearing from today is Peter who's gonna be giving very quickly with the USPTO requirements and then also you know electronic signature setup and workflows and our experiences with some electronic signature software and then Mike and I are going to do a little bit of a deeper dive into you know the law of electronic and digital signatures and and agreements and and and and dealing particularly on cases where there may be some challenges and you know just pointing out some of the risks and challenges that we have encountered over the years and then we'll hopefully have some time for a Q&A at the end of that yep so with with with that I'm gonna basically hand things over to Peter who's gonna start the discussion of PTO requirements Peter Thank You Andre and thank you everyone joining us from their home offices apologies in advance if you hear a sound of loud children coming from the background of my home office so the first place we have to start here is what are the PTO requirements for electronic signatures most of the people joining us today are probably familiar with the S signature it's good to go over the basics so an S signature at its core is any signature made by electronic or mechanical means it requires that forward slashes be present both before and after that signature and it also must consist of only letters or Arabic numerals commas periods apostrophes etc no emojis please next slide please so in addition to that you know one thing to consider about s signatures it needs to be reasonably safe it's specific enough so that the identity designer can be readily recognized there there is some leeway there but essentially the signature present should be recognizable and as the person signing additionally there's an additional requirement for patent practitioners signing documents that their registration number is either present below or adjacent there s signature next slide please so the USPTO did a great job many years ago they put a page up of proper and improper s signature examples I highlight a few here and we can quickly go over what is comprar per and what is improper so in the left column the standard s signature is a typed s signature bracketed by slashes with the name present below the signature line you can see in the second marsha a inventor is more of a stylized font also similarly bracketed by slashes which is also proper and the last example on the lower left is one of a patent practitioners signing Joe Q attorney which includes his registration number adjacent his name below the signature line you can also in that space use the number symbol it's acceptable as examples of improper s signatures the first example I have is of a digital design signature this will likely be considered improper by the Patent Office for a couple of reasons we're obviously missing the slashes that need to bracket the signature we are missing an identification of the person John Doe below where he is signed and we have some extraneous characters that may get bounced the second example is although cute Marsha a inventor has put in a little smiley face that's going to be bounced as non-arabic characters and then finally one that we often see our double slashes for joke you attorney another example of improper signature next slide please and Peter I just interject over there so that those signatures are we're not talked about the different types of documents at the beginning you know those are particularly with respect to you know transmittals to on PTO correspondence you know and this wouldn't apply for example to assignments necessarily it doesn't the PTO has requirements with respect to documents that are addressed to them that they'll review as opposed to you know as opposed to other documents who may file like assignments at the Patent Office and that's a great point that Andre just made is yes signature are for documents being filed electronically through the EFS system that the PTO currently uses the e-pass system for assignments and will be have different requirements and they there's more leniency as far as what kinds of signatures be accepted next slide please so as andre touched on earlier patent office correspondence is permitted when filing electronically and with the office of electronic filing system currently the EFS system future future system would be the patent center that's in beta testing now the historically the only handwritten signatures that were required to be filed were certain correspondence with the OED and and certain payments by credit card however in March 2020 the USPTO indicated that it considered the coded epidemic or pandemic to be an extraordinary situation and they waived the requirements for those handwritten situations signature situations before the OED and regarding credit cards next slide please so want to show a couple examples as we're all displaced to our home offices of a in office signature workflow that all of you may be familiar with and a working from home signature workflow in the past we have it would be a typical situation where a law firm generates formal documents for signatures to send to an end house contact at a corporation who would then send those out to inventors and and either had the inventors print scan and mailed those back to the law firm or send those back through the in-house contact now with all of our so many people displace working from home a situation where the law from inventors can quickly obtain those signatures and return those signatures for filing is a more useful workflow next slide please so one of the some of the reasons why the traditional scanning or printing scanning signing and Retraining to law firms first filing is not conducive to the working from home environment and I'm sure a lot of you are realizing this as you get up and running with your home offices hardware a lack of printer scanner fax for retrieving those software issues PDF programs vary widely and a lot of people if they're not used to working in and PDF may just only have a reader where they can't apply a stamp or other signature or type signature mail both access to supplies and access to postal services is currently fairly limited for people sheltering in place it's even more difficult to reach inventors and signers these days because of everyone juggling so many responsibilities additionally errors in signed documents now more than ever can lead to lengthy cycles of getting corrected documents and finally with first-to-file before the Patent Office under delays in obtaining signatures can lead to delays in filing so it's even more critical now to shorten that cycle and get signatures back and on file as soon as possible next second or next slide please so and the subject of this this webinar one tool to use is electronic signature software for shortening that cycle and creating that workflow between a law firm and inventors some of the advantages are obviously signing is easy all you need typically for someone to sign is a web browser and they can sign on their phone with a stylus or their finger they can stop they can sign by typing in a web browser from home so signing becomes much easier when an inventor or an attorney signing simply needs access to a web browser additionally there's multiple ways to sign you can draw your signature you can insert a stamp representation of just a signature you can type or do a stylize type of your signature and store those for reuse electronic software will typically include a built-in workflow this is particularly advantageous when you have people that need to be able to limit errors in what is sent back to them and their ability to follow up with people regarding issues is limited one question often comes up is an in-house contacts be built into that workflow and and that's absolutely true is true for some of our clients that will have in-house contacts still using electronic software that we have seats to but will use them as a document coordinator and send to the people who have traditionally printed and obtain signatures in person can be part of the the workflow obviously speed from start to finish is is of the essence we found at our firm that when we first went to electronic signatures that we cut approximately five days off the average return and five days off the average filing time for patent applications some additional notes Auto reports certificates of completion it's a great verification tool that you can see you can share signature access with additional people at your firm or company this is particularly helpful if people may be hard to reach within your organization you may have an unexpected absence in light of the issues with kovat so to be able to share their jobs and find out what documents are out for signature or what documents have been returned to the law firm for signature profiling is especially helpful from electronic signature software and as I mentioned before you need not have necessarily companies need not have seats of a electronic signature software like or Adobe sign to be part of that workflow if they're not preparing documents and they're just coordinating the setting for signatures they can be part of that workflow without having to you know purchase an Enterprise subscription my next slide please so when you're evaluating electronic signature software if you've gotten this far with me some of the things that we looked at when we were evaluating and we've used both adobe sign and in our firm and have been using electronic signature software for the last seven years obviously database security document security is paramount one thing to look very closely at is document output what comes back from the signers this is you know particularly important with regards to people who are then taking those documents and filing them in electronic filing system whether it's EFS or you pass or the patent Center in the future make sure those documents that come back can be readily uploaded that they're not they don't contain embedded fonts that they can be combined with other PDFs for a filing package so that is a really important consideration for the patent practitioners the ability of generate audit trails and certificates of completion this is great for showing back up information about when documents were sent for signature when they reviewed what email address receive them what IP address who returned them all those and even people you know who did not return them for no backup documentation should you need to file say a substitute statement when you can't receive or you can't get back a declaration from an inventor integration with existing software this is really important for our firm to be able to take the the workflow and the offerings of the electronic signature software and build it into software we're already utilizing for us it would be outlook would be a great example where you can plug it add-in to easily pull documents from an email straight into sending to an inventor or attorney for signature ease of use obviously you're looking both at the prepare and signer side and as I mentioned before the ability to sign on a mobile phone is important ease of configuration that doesn't need to be configured you know how much internal resources might you need to get yourselves up and running using that software and some next point would be you know compliance with applicable rules and regulations which Andre and Mike will touch on after I'm done here pricing models you know how many number of users within your organization will need access and versus how many transactions do you anticipate there's different pricing models with most electronic signature software provide knowing how many documents you'll likely want signed and how many users whether this you spread broadly with or within a couple power users is important consideration and then finally what kind of customer support are you likely to receive is it in person support is it you know email chat with support elsewhere so those are all important considerations when you are evaluating software options next slide please so you move to the setup stage and I just wanted to touch on a few things that you know have come up with us that are important to setup before you roll out your electronic signature software document security and password protection at a basic level making sure that you have set in place for your clients some level of security that meets their their prerequisites for password security for documents the you know does the software have the ability to edit the documents and essentially open them up to combining with other documents when you get them back or is it locked down so you know administrator would like to be able to put those in place and have them ready to go before those documents start coming back from signers obviously configuration with those those related softwares whether that's outlook sharepoint onedrive something for pulling documents into an electronic software or for archival purposes a lot of these will back up sign documents to a provider like box to keep a record of everything that was signed in audit logs that were received back or certificates of completion additionally as I mentioned before one of the huge benefits of electronic signature software is shared access should someone be unexpectedly unavailable to access an account so when documents come back who else is able to retrieve those documents and get those on file or and is that an administrator or is it a backup and then finally all the electronic signature softwares are going to have some level of template creation available you know we leverage document text tags pretty heavily with building those into our existing dynamic forms so if you're a company that uses merges say for a declaration or an assignment document and you can insert standard text tags that when uploaded into the software recognize a signature field a date field and initial field digital signature field so to be able to create those templates or to incorporate templates functionality into your existing documents is something you'll want to do in advance of rolling this out to users and then finally you know branding and creating you know client specific wording that's going to accompany the jobs that you send out to your clients next slide please um next up would be you know after you've put in place all your administrator setup what steps should you be taking before rolling up to users or to roll out to users you know first and foremost test test test you know be able to see both what the preparer is seen and in different ways in which documents can be wrongly prepared and sent and then what the signer is seen as well is it a is it a clear what is being asked of them is the document easy to sign in return what types of issues do you need to troubleshoot early additionally users gonna wonder as you roll out new software how is this changing the workflow that I currently have and it's good to be able to answer to them early what how do we go about adjusting your workflow to seamlessly integrate this new software pre-loading of signatures for signers is great for if you have a large group of attorneys that I'm assign things to be able to populate their centers prior to them becoming users and then creating extensive training materials for your new users and for potential signers it is a must to know what types of things that they're going to be seen remind them of how how these documents are produced and then how do you take the documents that are produced and move them to a patent office filing situation and finally what what things have you put in place to archive documents either manually or automatically so that you have copies of everything that was signed and audit logs to show the signature details next slide please so I've got one final slide that you know in our experience with our software what are the subjective truths that we've learned that at my firm first one is invariably when inventor signature is urgently needed suddenly if they can't find a pen aren't you your computer in cartridges just ran dry and they can't get to a post office this is true of so many situations that it's great to be able to point to electronic software organization say I that's fine I get it as long as you have access to a smartphone I can I can get you documents for a signature next subducted echo truth attorneys always want their electronic signature to look exactly like their handwritten signature this is unfortunately and always true and all the attorneys on on here know that that they would like their handwritten signature and electronic signature to look similar I've tried long a hard to draw my signature with my finger and John Hancock would be embarrassed for what I put down uh next one document signers have a remarkable and uncanny ability to creatively execute documents whether this is dating the document for last year signing the date field and dating the sign field or you know deciding now is the best time to introduce your avatar as your signature you know the workflow is built into electronic signature software prevent some of the creativity from being free-flowing and can lock down to make sure the documents you get back are documents you can use and last one nobody wants familiar with this software and how to use it will wax nostalgic for the days of printing signing scanning or mailing signature pages back once you've taken the leap the efficiencies are remarkable and although it near Edison's that people may have initially about jumping in are quickly just by the no return on investment and with that I will turn over to Andre you can touch on some of the issues with electronics in trans versus digital signatures thank you yeah thanks Peter I appreciate that I see you actually have three questions that Peter maybe a related a bit more to your the subject matter you've been through and I'm thinking it may be a good idea to just quickly hit those now so I'll probably just read them to you Peter if that's okay and you can you can speak to this so the first one was a any thoughts on whether you know the doc doc e-sign frame would be problematic if they were slashes around John Doe so that the example you had there if the signer just put a slash before and after his or her name would that be problematic it's from the Patent Office perspective so I know we have some representative the Patent Office on the call who maybe I'll confirm at later on here but I think the issue with John Doe and slashes is that we've had that bounced back from the Patent Office as non-compliant in the past because of the additional characters and non-arabic items that may be inserted additionally and I think in the example we use the name is not present below the line as well to identify what who the signature is for mm-hmm I think I think that's correct Peter appear the Nexen was you know for a charity please confirm if the USPTO accepts s signatures for declarations and then also how about inventor assignment documents you know I think my understanding is that yes for declarations his signatures are acceptable as far as assignment documents the PTO does not conduct any assessment of that and would really accept what is what is sent in right absolutely right I think the assignment documents would have to be readily accepted even unless other tech forms of electronic signature will likely be accepted on assignment documents yeah are we gonna be done it diving into assignment documents in the next bar because that's that's kind of really a key issue and I think that it can answer the next question as well you know what it is if what are the PTO requirements for assignment documents we're gonna be tackling that in the next few slides and then kind of pointing out when you got some of the challenges there because I think you know what the people at the Patent Office accepts and what is gonna stand up in a court of law maybe may be different and then we've also got all the international jurisdictions we were dealing with assignments and what is accepted by various patent offices worldwide and also what you know what would be most legally enforceable worldwide but thanks I think that gives me a good you know a good intro to this next slide here and really what I'm hoping to do here is T things up for Mike who's gonna be really giving a more in-depth discussion regarding some of the challenges of digital signatures particularly with application to IP transfer agreements and contracts like assignments so very broadly you know just to just to get some clarity around terminology over here you know the term electronic signatures electronic signature can take many forms and covers many things you know including you know typing a an s between slashes in front of the person's name to indicate that it's a conformed digital signature you know a click through on a click-through agreement just you know clicking upset accept or a similar attestation on an electronic agreement emailing a scan signature faxing a signature or even sending an email saying I agree would all be kind of covered by the brought of electronic signatures if we'd have to put into the u.s. situation you'll see two broad terms use the one is electronic signatures and this is really an umbrella term that encompasses any electronic process that indicates acceptance of an agreement or a record and you know I gave some examples of those on the other hand you know a digital signature generally tends to refer to a subspecies of a signature that is you know certificate base that uses a certificate based digital ID which is typically issued from a certificate authority and that is unique to each signer and is used to demonstrate you know proof proof of of signing so most of the electronic signature platforms that Peter alluded to you know Adobe and a bunch of others support you know these signatures generally but can also be set up to support digital signatures and it may be then a certain circumstances you got a package that you want to invent it a sign which has a combination of ie signatures and digital signatures you may want to you know have certain signatures have a higher degree of you know authentication but we'll get into that in the following slides next slide please yeah so if we kind of jump to you know international we see a number of international jurisdictions and countries as opposed to you know referencing electronic signatures and digital signatures reference these tiers of electronic signature so you know Tier one being a simple electronic signature and this really just covers any data that is attached to or associated with other electronic data you know with some level of authentication regarding the identity of the person doing the attaching or The Associated next step up is you know this tier two which is termed an advanced electronic signature or AES and and this one differs from the simple one that it provides some degree of tamper proofing or a tempest seal making it this normally requires you're an extra step by the the person signing so makes it a little less easy to use but still not overly burdensome and then we have tier 3 which are qualified electronic signatures of qes and and and this is you know the one that requires the most hoops to jump through probably a little the least easy from a user perspective and and you know differentiates from the other two and that it has a third-party verification or or and I just like to do yeah if you advance to the next slide please I just I'd like to touch on some of the considerations for the the legal validity of signatures you know particularly in the in the u.s. these considerations may be taken into account when measuring or assessing the strength of the validity of an electronic signature yeah and that should be you know separate from the validity of the agreement itself this is just looking at the the validity of the electronic signature I would also point out the most of the electronic signature platforms that Peter's discussed do allow for customization of processes you know you know that you can basically turn the dials on any of these these considerations so you can you know put things in place and I'll touch on some of those now so basically you know the first one is intent and this is really just a demonstration that the signer had a definite intent to sign so one way you can build you can you know increase the the bar on this is to build in you know a clear option not to sign into your workflow so it's like you prefer not to sign this you know go here a second one is consent and this is really a little of proof that the signer consented to conduct their business electronically so this might be an express requirement that the users provide before before signing you could also provide them with the option to complete the form on paper and but we would point out that consent can typically be a greater issue in consumer contracts you know for example insurance contracts than the type of documents were discussing here an important one is attribution which is the third one here and this is really the context and circumstances that you know should clearly and you know attribute the signature to a particular user so you know the information is typically used for attribution is a detailed audit trail and again Peter touched on you can you can kind of customize how much audit trail you want and but but this is one of the big advantages of you know electronic signature systems and particularly using a reputable electronic signature platform is that it does create automatically a lot of the time this detailed audit trail for you which which gives a high level of attribution some providers also have a two-step identification system for signers which can again increase attribution and the final one here really is Association and that really you know how strongly are you associating the signature with a document and there are a temper seal is is a good way of doing that anyway with that background I'm gonna hand over to to Mike who's going to give a deeper dive into into some of the requirements of some of the agencies and laws around the world and and and you know if you're considering using electronic signatures you know what are some of these the things you should be aware of as you embark on that process so with it Mike I you ready to roll thanks very much Andre those requirements that that Andre I just identified come up in the US by virtue of a kind of odd wing construct where we have a parallel national act II sign and a uniform electronics act with the states that came about essentially simultaneously just very briefly the a few states had enacted electronic signatures acts that were inconsistent with one another which spurred generally speaking some push for a uniform act and for a national act what's particularly unusual in this situation is that the two acts specifically are intended to work in tandem the the e-sign act is very broad in high level which extent the you eta is also but they each have their own specific provisions that they bring bring to the table both of them are permissive in that they don't really instruct what will be done they just provide that electronic signatures in a wide variety of situations not subject to some exceptions suffice in place of a a written signature and do not provide and babies for a basis for invalidating a contract or other transaction so with that a next slide please so these sign is very broad if you see it what constitutes a signature electronic sound symbol or a process attached or largely associated with a record of some type and adopted with intent so almost anything can qualify as an electronic signature within that definition including perhaps a check mark and that sort of thing very very broad be the act as I said is permissive stating that transactions or contracts may not be denied we go effect the oddity because it's an electronic form or has an electronic signature so that oh when I was a lot of latitude UTPA builds on that somewhat by providing a little bit bit of meaning for consent which is in some ways mostly associated with the intent consent in some parts relates to electronic communications in general there are some provisions in assigned relative to certain types of consumer contracts that and additional meat on to that but in general consent just can be determined from the interactions of the parties and the other agreements and and their actions themselves and as andre was talking about attribution is an important part you at some point if you need to enforce or prove the efficacy of the contract you may have to prove that the act is one of the person who signed you ETA is very open as to how that might be done some form of audit trail is probably the most natural and reasonable way of doing that and is andrey alluded to different forms of electronic signature have different degrees of audit trails that are available to a person that wants to defend the the contract once again the the attribution is determined from the circumstances or agreement between the parties so it's a pretty broad circumstance one thing to note with this parallel construct is that so long as a state has adopted adopted you ETA in its proposed model form then there is no preemption by e-sign and they are fully consonant in that regard only if a state has varied and adopted a different version of you ETA is there a risk of preemption and that is only to the extent it is inconsistent with a requirement of the sign so for example east east sign has a very broad statement of electronic signature if a state adopted if very restrictive rule as to what could constitute an electronic signature then that would probably be preempted by a sign or as if they just offered as some states do additional benefits or attributes to some form of electronic signature that's perfectly consistent and is not subject to a preemption argument I just want to note it could we have some people on here that would be involved with software licenses and the like software licenses various agreements for development of computer programs and the like are probably subject to control by the uniform computer information transactions Act so probably outside the scope of of this framework depending upon other exceptions that are present regarding a signing you ETA but for purposes our talk today I'm just thinking in terms of patent assignment and repeats one other thing to note is that both bodies of law authorize new toriel acts to be electronic also so again that's permissive and whether that's permitted and and the manner in which it's permitted is a matter of state law for example last month new New York issued a directive that for 30 days which expired I think last Sunday there could be virtual notarization through use of videoconference an electronic communication of documents with some certain prerequisites so they expressly authorized a virtual notarization for that time period okay next slide please I'm going to address various considerations that you may want to think about in terms of whether to adopt electronic signatures or how to do them I'm looking at this primarily in the context of the u.s. assignment at this point we'll get into other considerations so it is pretty well-established enforceability of an assignment is generally a matter of state law except when the Federal Circuit decides that it has Authority that governs how certain transfers are supposed to be interpreted there's there's no limitation on persons being in the UMS you know just as with signatures on when assignments the concern that could exist however is if you had someone resident in another country could there be a conflict of law issue if you had a resident of the other country providing an electronic signature for transmittal here I think one consideration in that is going back to the state law aspect does the person have sufficient contacts with the US and with the state for state law to reasonably have jurisdiction for example if you have a u.s. resident who happens to be traveling to Europe and there are points an electronic signature I may not see a particular concern in that circumstance at all if on the other hand you had a let's say Singapore inventor who works for a Singapore subsidiary assigning a patent to the US parent a question could arise as to whether or not that person had sufficient contacts for a a US state law to be the clue so as I know a sign and UTA are generally uniform though as I said some exceptions do exist apparently without preemption some states apply multiple levels of standards for different security mechanisms they also can apply different standards as to what constitutes consent retribution and attribution as undream is coming as closely allied with security it's how are you able to establish that link to the person so there are variations that exist there generally speaking I don't think they're particularly significant except as to the availability in some states of an additional tier of security for example in Illinois a simple electronic signature serves as a a valid contract in the absence of any proof a higher level digital security signature has a presumption of validity so there are advantages to it when it's available another consideration is to have a strategy for maintaining the documentation of the audit trail in effect that is a part of the assignment if you have to enforce that assignment you are going to have to show that attribution as discussed a minute ago so you need to have access to that do you even want that to reside exclusively with your outside counsel do you want to specify how they maintain it maybe you would be preferable for you to have a record that you kept with your copy of the assignment as you would other assignment documents finally the last a a very simple signature certainly suffices under a sign and ute a as an adequate signature for a assignment that's going to be applied at least in the US but is that the best circumstance for your company would you like to have the more secure technology that has a more complete audit trail to ease those proofs to the extent you need to rely on that in the future next slide please this slide is really just to identify there's a wide variety of laws out there that he they have significant differences though there are some general categorizations that can be made the US and other common law states generally have what we described earlier they might be characterized as a fairly minimalist approach they're permissive they just make electronic signatures broadly equivalent but do not relate to a specific technology the next level up would be two-tier jurisdictions Europe follows that much of Asia Latin America where it is a simple signature is valid but made more more easily be challenged than a higher tier more secure digital signal and then finally the last one would be an example is India statutes that specify certain technologies that have to be implemented there's two options in India one of them requires certification by a certifying authority that the last time I looked was a local authority so perhaps not available easily to the rest of the world okay next slide please the transfer of rights to priority under the Paris Convention has been a pre hot topic for about the past six years by virtue of the cook case in the UK and the more recent crisper decisions in any Pio and that's governed by parents convention article for a-1 which provides for that right of priority and the possibility of it being transferred to a successor in title one thing that's odd though is the Paris Convention is completely silent as to the governing law about perfection of that transfer so the there is no way to resolve that conflict another jurisdictions don't always defer to the law regarding the initial transfer you know for example nunc pro tunc assignments are accepted in the u.s. they have been soundly rejected as appropriate by EPO the EPO has failed to recognize other provisions as we'll get to they even have rejected the digital signatures authorized in the EU what other examples in China doesn't recognize transfers by virtue of an employment agreement okay so I'm getting short on time so let's go to the next slide so just briefly addressing Europe and the UK they have the multiple tier verification standards notwithstanding that in Europe the EPO will not accept an electronic signature on an assignment though it will accept a a signed copy of a an ink signature and there was a recent decision where the EPO Legal Division expressly considered that the EPO requirement constituted autonomous law which superseded the EU ah so at least until something changes in that respect there's probably not going to be a lot more flexibility from the EU in the UK electronic signatures are pretty easily accepted but a surprising note is that a power of attorney is considered equivalent to a deed and it has to be signed by a notary in the same room as the signer so at least in that circumstance for the UK electronic signatures while generally permitted and useful for not a perfect solution next slide please China has an electronic signature law it's been in place since 2005 but it does not apply to patent applicants and inventors so they will not accept an electronic signature one workaround though is that for many circumstances as long as there is a prior assignment even with the electronic signatures that has been recorded in the USPTO a certified copy would be accepted next why finally India as I noted as two different forms of digital signatures the first version may be one that's readily a relatively easy to comply with the second one likely is going to make much more difficult for non-indian signing parties so with all that let's go to the next slide in assessing uncertainty in the first case it's the u.s. application you've got us best inventors there seems to be a little question about applicability and the woody of the contract you're really only considering what sort of audit trail do I need and or what if you start filing that u.s. application in another country consider or or seek advice regarding any any implications that that may exist from the countries that are an interest if your direct filing an application that's going to raise some red flags as to you know for example if you were filing in China you would know that that would definitely be a problem in any application having non us-based inventors is the least worthy of considering it may not be an issue but you at least need to give some thought to that or a thought to that and then finally if you've got jurisdictions that expressly reject the signatures that's that's gonna be any harder decision next slide please so looking forward what signatures are still the gold standard but certainly right now they're less convenient than at other times you know you'll be able to use them everywhere but in your circumstance or at least a specific property do you have to use them everywhere although electronic signatures are increasingly accepted some of the major patent offices seem to be wagging the trend and there's always going to be an issue with non-uniformity international requirements just as there are some extent in ink science signatures about with some countries requiring acknowledgment by the assignation others not requiring already talked about the sufficiency for us filings the only other point I'd like to say now given some of the difficulties if if it's going to be harder to get a wet assignment or tank assignment at this point in time or if it's going to be delayed it would seem it would Whitely be preferable to have one with an electronic assignment for not having an express assignment it agrees gives you a an argument and a basis to prove the transfer and you should be able to follow up with a ratification or confirmatory assignment when that becomes feasible and in the normal situation or at least the common situation within a a company and an inventor who is subject to an employment agreement that a necessitates or achieves the transfer that's in essence what we would be doing with the written assignment anyway as we're having a written confirmation of a transfer that we assert to previously exist so it seems to be a point worth considering and with that I'll turn it back to Andre no thanks thanks Mike appreciate that and I think that wraps it up we're over time already but as I put in the in the notes over there if anyone has any specific questions about how the schwegmann firm has implemented this and the police feel free to reach out to Peter you know and just in conclusion thanking everyone for attending appreciate the appreciate the time we will be distributing the slides after this and again if anyone has any you know questions on you know particularly regarding assignments please feel free to reach out to Mike or myself and we'll do our best to share what we know at the moment I said this is kind of a rapidly evolving area of lore and each country is doing something a little differently but happy to share what we know okay well thanks everyone that's that's all I have thanks again everyone for joining and our next webinar is coming up tomorrow into Agnes director of China intellectual property practice Erin Windsor will present a webinar about expediting examination in China and if you visit the slw Institute on the swagman website you can find some more details then thank you again for joining us and you