rethink(ip)

Confirming signatory authority

Posted by Stephen M. Nipper at March 29, 2007 12:28 AM

Confirming signatory authority. On March 3, 2007, the USPTO modified the TEAS response to Office action form and the petition to revive for failure to submit a timely response to Office action form to require filers to check one of three options, indicating the nature of the signatory's authority to sign and submit the response. When an unauthorized person signs and submits a response to an Office action, the USPTO does not accept or consider the substance of the response.

The USPTO intended these new options to help filers recognize where a proposed signatory lacks authority, so as to prevent situations where the USPTO cannot accept and consider the substance of the response. Examples of unauthorized persons include the following:

* non-attorneys who lack authority under Rule 10.14 to practice before the USPTO in trademark cases, except as an applicant representing himself/herself;

* foreign attorneys who are not members of the bar of any U.S. state and who do not qualify under the limited exception for reciprocally recognized Canadian attorneys/agents under Rule 10.14(c); and

* attorneys who attempt to replace another attorney of record without the appropriate filings for the substitution of counsel.

By requiring the confirmations directly within the new signature options, the USPTO seeks to ensure the legitimacy and propriety of the responses submitted. See Examination Guide NO. 3-06 Representing an Applicant/Registrant Before the USPTO (November 13, 2006).

The USPTO acknowledges that the changes introduced on March 3rd generated some confusion and concern. As an initial matter, the USPTO notes that the language for the new signature options had been posted in full under "Upcoming Enhancements" since January 3, 2007. The USPTO received no comments prior to the March 3rd deployment, and therefore was surprised by the outcry over the new options upon their implementation. Based on feedback received, the USPTO plans to modify the language for the three (3) buttons in the response signature section within an up-coming deployment, currently planned for March 24th, 2007 (see further information, below).

However, the USPTO maintains that, when the options as currently posted are considered in their entirety, including the bold heading that is part of each option, they comprehensively address the appropriate signatory situations. In particular, many commenters have expressed concern that no option seemed to apply to an authorized U.S. attorney who has represented the applicant since the filing of the application. The proper option is #2, which reads: "Attorney - No Other Attorney Has Previously Appeared: I hereby confirm that I am either (1) an attorney who is a member in good standing of the bar of the highest court of a U.S. state; or (2) a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO's Office of Enrollment and Discipline. I further confirm that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) I am the applicant’s attorney or an associate of that attorney."

In focusing solely on the confirmation that "the applicant has not previously been represented in this matter by an authorized attorney," the commenters seemed to overlook both that the statement for the second option is made under the heading "No Other Attorney Has Previously Appeared" (emphasis added), and that the only two choices that apply to attorneys are "New Attorney -- Change of Attorney Has Occurred" and "Attorney -- No Other Attorney Has Previously Appeared." In context, the selection of the second option, where no other attorney has previously appeared, is appropriate and truthful for an authorized U.S. attorney who has represented the applicant throughout.

In any event, in an effort to address the confusion and concern with the new options, the USPTO posted both on the "Important Notices" section of TEAS and on the "News and Notices" section of the USPTO website a Notice on March 8, 2007, namely, “Clarification of ROA Signature Options,” which includes among its guidance the instruction that "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." The USPTO also plans to publish clarifying information in a Notice in the Official Gazette, as some attorneys have expressed a desire that the clarification be memorialized more formally.

As part of a deployment currently planned for March 24, 2007, the USPTO will modify the language within the form as shown below. In the future, the USPTO plans to expand this approach to all other forms requiring a similar authorized signature.

O Unrepresented Applicant,: I hereby confirm that

* No authorized attorney or Canadian attorney/agent represents me in this matter, and that I am either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and
* If an authorized U.S. attorney or Canadian attorney/agent previously represented me in this matter, either I have filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of my prior representative to withdraw.

ADVISORY: You may click this first button only if you are the applicant or legally authorized to bind the applicant, e.g., an officer of the applicant corporation or association, or a general partner of the applicant partnership. See TMEP §§712.01.

O Authorized U.S. Attorney: I hereby confirm that

* I am an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and
* I am currently the applicant’s attorney or an associate thereof; and
* To the best of my knowledge, if prior to my appointment another U.S. attorney or a Canadian attorney/agent not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing me as an associate attorney in this matter.

O Authorized Canadian Attorney/Agent: I hereby confirm that

* I am a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO’s Office of Enrollment and Discipline to represent Canadian applicants before the USPTO; and
* I am currently the applicant’s Canadian attorney/agent, or an associate thereof; and
* To the best of my knowledge, if prior to my appointment another Canadian attorney/agent or a U.S. attorney not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing me as an associate attorney in this matter.

ADVISORY: Foreign attorneys (other than authorized Canadian attorneys/agents) cannot sign this response and are prohibited from representing an applicant before the USPTO in trademark matters.