rethink(ip)

Clarification of TEAS Response to Office Action Response Signature Options

Posted by Stephen M. Nipper at March 29, 2007 12:11 AM

Clarification of TEAS Response to Office Action Response Signature Options1

The purpose of this notice is to clarify the options on the Response Signature section of the TEAS Response to Office Action form2 entitled Unrepresented Applicant (Option 1); Attorney - No Other Attorney Has Previously Appeared (Option 2); and New Attorney - Change of Attorney Has Occurred (from attorney previously recognized by USPTO) (Option 3).

The term “attorney” refers to an individual who is a member in good standing of the bar of the highest court of any “state,” which includes the District of Columbia, Puerto Rico, and other federal territories and possessions. See 37 C.F.R. §10.1(c). References in the signature section to “authorized” attorneys and agents refer only to such U.S. attorneys or Canadian attorneys or agents authorized to practice before the USPTO under 37 C.F.R. §10.14.

If a foreign attorney (other than an authorized Canadian attorney/agent) is the only representative who has appeared on behalf of the applicant in this matter (e.g., a foreign attorney who is listed as the correspondence address in a §66 application), the foreign attorney is not authorized to practice before the USPTO under the rules, and the Office considers the applicant to be unrepresented. In this scenario, if you are either the applicant or a person(s) with legal authority to bind the applicant and you are not an authorized attorney, you should select Option 1; if you are an authorized attorney or agent, you should select Option 2.

If you are an authorized attorney, and either you or an associated attorney or firm have appeared in this matter (e.g., by filing the original application), and the applicant was not previously represented by any other authorized attorney or agent, you should select Option 2. Option 2 is also proper where another attorney who is a member of the firm is filing the response on behalf of the attorney of record.

If an authorized attorney or agent has been appointed or otherwise appeared on behalf of the applicant, the USPTO will not recognize a different attorney or agent who is not associated with that attorney or agent, until a new power of attorney, naming the new authorized attorney or agent and signed by the applicant, is submitted. Option 3 is intended to apply to scenarios in which a change of attorney has occurred from an authorized attorney or agent previously recognized by the USPTO. Changes to a firm’s name do not constitute a change of attorney.
____________________________________________________________________

1Changes were made within the signature section as part of a TEAS update on March 3, 2007. The form now requires for successful validation that the signatory “check off” one of three different options, to confirm that the signatory is authorized pursuant to the rules governing representation of others before the USPTO to sign this response. 37 C.F.R. Part 10. See Examination Guide 03-6 (Representing an Applicant/Registrant before the USPTO, issued November 13, 2006).
2The Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action was similarly modified.