¶ 4.01 Double Correspondence

Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant's attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.

Examiner Note:

1. The first time a reply is received directly from applicant, include this paragraph in the Office action and send a copy of the action to the applicant. See MPEP §§ 403 and 714.01.

2. Should applicant file additional replies, do not send copies of subsequent Office actions to the applicant.

3. Status letters from the applicant may be acknowledged in isolated instances.

¶ 4.03 Death of Patent Practitioner

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.

¶ 4.07 Attorney/Agent Suspended (Sole Practitioner)

The instant application contains a power of attorney to [1] who has been [2] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Accordingly, the Office action is being mailed to the address of the applicant first named in the application. Applicant(s) may file a new power of attorney in the application to have a registered attorney or agent represent them before the Office.

In the absence of an attorney or agent of record, for applications filed before September 16, 2012, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34.

For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.

Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO website, https://oedci.uspto.gov/OEDCI/, or by calling the Office of Enrollment and Discipline at (571) 272-4097.

Examiner Note:

1. In bracket 1, insert the name of the suspended or excluded practitioner.

2. In bracket 2, insert either --suspended-- or --excluded--.

3. This form paragraph should be used when the suspended or excluded practitioner is the only practitioner of record.

4. The Office action is to be mailed only to the applicant first named in the application at that applicant’s current address of record.

¶ 4.08 Attorney/Agent Suspended (Plural Practitioners)

The present application was filed containing a power of attorney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].

[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.

As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the applicant first named in the application. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.

Examiner Note:

1. In brackets 1, 3, 5 and 7 insert the name of the suspended or excluded practitioner.

2. In brackets 2, 4 and 8, insert the name of the first named unsuspended (unexcluded) registered practitioner of record.

3. In bracket 6, insert either --suspended-- or --excluded--.

4. This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice. Use form paragraph 4.07 if there are no remaining registered attorneys or agents of record.

5. The Office action is to be mailed both to the first named registered attorney or agent of record (who is not suspended or excluded) at the address currently listed in the Attorney’s Roster, and to the applicant first named in the application at that applicant’s current address of record.

¶ 4.09 Unregistered Attorney or Agent

An examination of this application reveals that applicant has attempted to appoint an attorney or agent who is neither registered to practice before the U.S. Patent and Trademark Office in patent matters nor named as an inventor in the application, contrary to the Code of Federal Regulations, 37 CFR 1.31 and 1.32. Therefore, the appointment is void, ab initio, and the Office will not recognize the appointment. All communications from the Office will be addressed to the first named applicant, unless specific instructions to the contrary are supplied by the applicant(s) for patent or owner(s).

For applications filed before September 16, 2012, in the absence of the appointment of a registered practitioner, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34

While an applicant (other than a juristic entity) may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is, therefore, encouraged to secure the services of a registered patent attorney or agent (i.e., registered to practice before the U.S. Patent and Trademark Office) to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.

The Office cannot aid you in selecting a registered attorney or agent, however, a list of attorneys and agents registered to practice before the U.S. Patent and Trademark Office is available at https://oedci.uspto.gov/OEDCI/. For assistance locating this information, contact the Office of Enrollment and Discipline at (571) 272-4097 or call the Inventors Assistance Center toll-free number, 1(800)786-9199.

Examiner Note:

This form paragraph is to be used ONLY after ensuring that the named representative is not registered with the Office. A PALM inquiry should be first made and if no listing is given, the Office of Enrollment and Discipline should be contacted to determine the current "recognition" status of the individual named by the applicant in a "power of attorney." If the named individual is NOT registered or otherwise recognized by the Office, the correspondence address of record should be promptly changed to that of the first named applicant unless applicant specifically provides a different "correspondence address." A copy of the Office communication incorporating this form paragraph should also be mailed to the unregistered individual named by the applicant in the "power of attorney."

¶ 4.10 Employ Services of Attorney or Agent

An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an applicant may prosecute the application (except that a juristic entity must be represented by a patent practitioner, 37 CFR 1.31 ), lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.

A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

Examiner Note:

The examiner should not suggest that applicant employ an attorney or agent if the application appears to contain no patentable subject matter.