PTAB Year in Review – From the GC: Signature Requirements at the PTAB

Introduction

“A lawyer, as a member of the legal profession, is a representative of clients, an officer of the legal system and a public citizen having special responsibility for the quality of justice.” This is the opening sentence from the preamble of the ABA Model Rules of Professional Conduct, which the U.S. Patent and Trademark Office (USPTO) adopted in 2013. When a lawyer signs a document that is submitted to a tribunal, that signature carries a certain weight. The USPTO takes its signature requirements very seriously. It explains (1) exactly what the signer is certifying with their signature, (2) exactly what is required to correctly sign a document, and (3) exactly what the possible repercussions are for failing to comply with both (1) and (2).

The USPTO signature requirements unambiguously apply to all post-grant patent challenges. This includes reexamination and reissue proceedings before the Central Reexamination Unit (CRU). 37 C.F.R. § 11.18. And it includes proceedings before the Patent Trial and Appeal Board (PTAB) for both inter partes review (IPR) and post-grant review (PGR) proceedings. 37 C.F.R. § 42.11(b)-(c).

Because many IPR and PGR practitioners have litigation backgrounds or are admitted pro hac vice, it is worth reviewing the USPTO’s (and thus the PTAB’s) strict signature certifications and requirements. Failure to understand and adhere to these certifications and requirements can have severe consequences for both the lawyer and their client.

What is a practitioner certifying when they sign a paper at the PTAB?

When a lawyer signs a paper that will be filed at the PTAB, they certify, first and foremost, that “all statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true” and with the understanding that knowing or willful misrepresentation or deceit “shall be subject to the penalties set forth under 18 U.S.C. 1001,” which include a fine and imprisonment up to 5 years. 37 C.F.R. § 11.18(b)(1).

The lawyer also certifies, “after an inquiry reasonable under the circumstances,” the following four things:

(i) the paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;

(ii) the other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;

(iii) the allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) the denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

37 C.F.R. § 11.18(b)(2)(i)-(iv).

The USPTO is thus quite explicit in what a lawyer or agent’s signature is certifying for each and every paper signed and submitted to USPTO. And it applies equally to every paper signed and submitted at the PTAB since Rule 42.11 references the “duty of candor and good faith” that each individual and party involved in an IPR or PGR proceeding owes to the Office, expressly referencing Rule 11.18(a)-(b).

How does one correctly sign a document at the USPTO?

Now that we understand what a lawyer is certifying when they sign a paper to be submitted to the PTAB, it is equally important to understand the formal signature requirements.

Signing in a representative capacity

Rule 1.34 allows a patent practitioner to act “in a representative capacity.” That means that when a practitioner “signs a paper in practice before the [USPTO] in a patent case, his or her … signature shall constitute a representation to the [USPTO] that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.” 37 C.F.R. § 1.34. If the practitioner is registered to practice before the Office, then the patent practitioner must set forth their registration number along with their name and signature. If the practitioner is not registered to practice before the Office, then they must be admitted pro hac vice before the Board and so indicate when filing.

Signatures must be personally inserted into the document

A signature must be personally inserted/applied by the individual identified as the signer, regardless of the manner of making the signature. 37 C.F.R. § 1.14(d). Most practitioners at the PTAB use what the Office refers to an “S-signature.” In that instance, the requirement to personally apply one’s signature means just that – “the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g.,/Dr. James T. Jones, Jr./).” 37 C.F.R. § 1.4(d)(2)(i). Of course, the USPTO permits old-fashioned handwritten signatures, as well as the insertion of graphic representations of handwritten or S-signatures. But, again, those must be personally inserted by the signer.

A secretary or paralegal, etc., is NOT permitted to sign or insert another’s person’s signature. To properly sign a document, the person signing must actually type their own name for an S-signature, or personally insert the graphic representation of their signature. The only exception to the personal insertion requirement is where the signer is physically unable to use a keyboard or to carry out the personal insertion of a graphical representation. In that narrow circumstance only, the signer “may, while simultaneously reviewing the document for signature, direct another person to press the appropriate keys to form the S-signature.”

Violations of the certification as to the signature of another or a person’s own signature may result in the imposition of sanctions under Rule 11.18(c) and (d).

What are the consequences of violating the signature requirements?

There are two ways one can violate the USPTO (and PTAB) signature requirements. First, a signer can violate the formal signature requirements set forth in Rule 11.18(a). For example, they could improperly direct a paralegal to insert their signature on a document that is then submitted to the PTAB. Second, they can violate the certification’s substantive requirements set forth in Rule 11.18(b)(1)-(2). For example, the signer could violate their duty of candor and good faith to the PTAB, or submit a paper for an improper purpose, such as to harass or cause unnecessary delay in the proceeding.

The consequences of violating the certification requirements before the PTAB—i.e., violating the duty of candor and good faith—are highly fact dependent and subject to sanctions. Sanctions include entry of one or more of the following: (1) an order holding facts to have been established in the proceeding; (2) an order expunging or precluding a party from filing a paper; (3) an order precluding a party from presenting or contesting a particular issue; (4) an order precluding a party from requesting, obtaining, or opposing discovery; (5) an order excluding evidence; (6) an order providing for compensatory expenses, including attorney fees; (7) an order requiring terminal disclaimer of patent term; or (8) judgment in the trial or dismissal of the petition. 37 C.F.R. § 42.12(b).

Key Takeaways

• PTAB practitioners, especially those who have not previously and regularly practiced before the USPTO, should review and understand the signature requirements.
• Signatures must be personally entered onto each paper to be filed at the PTAB. That authority cannot be delegated to an assistant, secretary, or paralegal.
• A signature is a certification that the practitioner’s representations in the paper to comply with their general duty of candor and good faith to the tribunal.
• Violation of the signature certification can have severe consequences.
  

This article appeared in the 2024 PTAB Year in Review: Analysis & Trends report.