United States Patent and Trademark Office OG Notices: 15 May 2007
Changes to Signature Options on TEAS Response to Office Action and Petition to Revive Forms 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 confirm the nature of the signatory's authority to sign and submit the response by checking one of three options. The USPTO intended these new options to help filers recognize when a proposed signatory lacks authority, so as to prevent situations where the USPTO cannot accept and consider the substance of the response. By requiring the confirmations directly within the new signature options, the USPTO sought 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). Although the USPTO believed that the options addressed all authorized signatories, some practitioners were confused and concerned about the changes introduced on March 3, 2007. The two choices that applied to attorneys were "Attorney - No Other Attorney Has Previously Appeared" (Option 2) and "New Attorney - Change of Attorney Has Occurred" (Option 3). These practitioners believed that neither option applied to an authorized U.S. attorney whose representation began with the filing of the application. On March 8, 2007, the USPTO posted a Notice on the "Important Notices" section of TEAS and the "News and Notices" section of the USPTO website entitled "Clarification of ROA Signature Options." The Notice included 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." If the following statement appears in the record in connection with a response to an office action filed between March 3, 2007 and March 22, 2007,1 this indicates that the signatory chose Option 2: The signatory has confirmed that he/she is 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. Sec. 10.14(c) by the USPTO's Office of Enrollment and Discipline. He/she further confirms that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) he/she is the applicant's attorney or an associate of that attorney. The USPTO believes that the selection of this option, either before or after the instruction was posted on March 8, 2007, was appropriate and truthful for an authorized U.S. attorney who had represented the applicant throughout because the confirmation was made under the heading "No Other Attorney Has Previously Appeared" (emphasis added). 1 To further address all concerns and suggestions, the USPTO implemented revised language for the three (3) buttons on March 22, 2007, modifying both the options on the front portion of the form and the corresponding resultant display within the text form, which will ultimately appear in the record.