||Referenced Items (400, 401, 402, 403, 404, 405, 406, 407, 408, 409, 410)
(406) 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
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
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"
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
[1318 TMOG 117]