712    Signature on Response to Office Action

A response to an Office action must be personally signed by a qualified practitioner or, if the applicant is not represented by a qualified practitioner, by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer, or a general partner of a partnership).  37 C.F.R. §§2.62(b), 2.193(e)(2), 11.18(a).  The examining attorney must review the application record to determine whether the applicant is represented by a qualified practitioner (see 37 C.F.R. §11.14), and must ensure that all responses and amendments are properly signed.  See TMEP §§611.03(b) and 712.02 regarding the proper person to sign, and TMEP §611.06 as to persons who have legal authority to bind various types of juristic entities.

The signatory must personally sign his or her name.  See 37 C.F.R. §2.193(a); TMEP §611.01(b). For electronic signatures on document filed through TEAS, the signatory must personally enter the elements of the electronic signature.  See 37 C.F.R. §2.193(c); TMEP §§611.01(b), (c).

The name of the person who signs the response should be set forth in printed or typed form immediately below or adjacent to the signature, or identified elsewhere in the filing (e.g., in a cover letter or other document that accompanies the filing).  TMEP §611.01(b).

712.01   Persons Who May Sign Response

If an applicant is represented by a qualified practitioner, the practitioner must personally sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a).  This applies to both in-house and outside counsel.

If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) must sign the response.  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii).  In the case of joint applicants who are not represented by a qualified practitioner, all must sign the response. §2.193(e)(2)(ii). See TMEP §611.06 for guidelines as to persons who have legal authority to bind various types of juristic entities.  A person who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) is not entitled to sign responses to Office actions, unless he or she also has legal authority to bind the applicant or is a qualified practitioner.

Example:  A corporate manager might have the firsthand knowledge and implied authority to act on behalf of the applicant required to verify facts under 37 C.F.R. §2.193(e)(1) and still not have legal authority to bind the applicant.

If the applicant is represented by a qualified practitioner, and the response consists only of a declaration (e.g., if the verification was omitted from the initial application and no other issues were raised in the Office action), the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) (see TMEP §804.04), and no separate signature by the practitioner is required.  However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the practitioner. See 37 C.F.R. §2.193(e)(2).

Similarly, if the applicant is not represented by a qualified practitioner, and the response consists only of a declaration, the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1), and no separate signature by the applicant or someone with legal authority to bind the applicant is required.  However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant.  37 C.F.R. §§2.62(b), 2.74(b), 2.193(e)(2).

The examining attorney must ensure that the record establishes the authority of the person who signs the response. If a response to an Office action appears to be signed by an unauthorized person (e.g., a foreign attorney who is not authorized to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must treat the response as incomplete and require the applicant to submit a properly signed response.  The response cannot be ratified by an examiner’s amendment.  See TMEP §§608.01, 611.05–611.05(c), and 712.03 for further information.

See TMEP §§602–602.03(e) regarding persons who are authorized to represent others before the USPTO, and TMEP §611.04 for examples of authorized and potentially unauthorized signatories.

These same principles apply to authorizations of examiner’s amendments and priority actions.  See TMEP §§707.01, 708.02.

712.02   Unsigned Response

The examining attorney should treat an unsigned response as an incomplete response, and should either call the applicant to obtain permission to enter an examiner’s amendment from an authorized party (if appropriate), or issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2).  See TMEP §718.03(b).  To issue a notice of incomplete response, the examining attorney should use the "Examiner’s Non-Responsive Amendment" (or, if appropriate, "SU – Examiner’s Non-Responsive Amendment") selection for a response to a nonfinal action or the "Examiner’s Action Continuing a Final Refusal – 30-day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30-day Letter") selection if the response is to a final action. In either instance, the notice of incomplete response must not include a six-month response clause.

If the applicant is not represented by a qualified practitioner and the response does not require a signed verification (see TMEP §§804–804.05), the applicant or a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) may either request that the amendment(s) be entered through an examiner’s amendment or submit a properly signed copy of the response.  If the applicant is represented by a qualified practitioner, that practitioner must submit the response or request entry of an examiner’s amendment. A duplicate of the original response can be submitted through TEAS (using the response to Office action form) or a properly signed copy of the original document can be submitted by fax (unless it is excluded by 37 C.F.R. §2.195(d)).  In a TEAS Plus or TEAS RF application, the response must be filed through TEAS or the application will lose TEAS Plus or TEAS RF status (see TMEP §§819.02(b), 820.02(b)). The examining attorney must defer action on the merits of the response until the applicant files a properly signed response.  

The substitute response must be personally signed by a qualified practitioner or, if the applicant is not represented by a qualified practitioner, by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).  37 C.F.R. §§2.62(b), 2.193(e)(2), and 11.18(a);  see TMEP §§611.03(b).

If an applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §718.03.  In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66.  The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146.  See TMEP §1713.02.

712.03   Response Signed by an Unauthorized Person

Notice of Incomplete Response.  When it appears that a response to an Office action was signed by an improper party (e.g., a foreign attorney who is not authorized to practice before the USPTO, a corporate employee who does not have legal authority to bind the applicant, or, when the applicant is represented by a qualified practitioner, someone other than the practitioner or another qualified practitioner from the same firm), the examining attorney must treat the response as incomplete.  The examining attorney must issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) (see TMEP §§ 611.05(a), 718.03(b)).  The examining attorney must defer action on the merits of the response until a properly signed response is filed.

Applicant’s Reply to Notice of Incomplete Response.  If the person who signed the response was authorized to sign, the applicant’s reply to the notice of incomplete response should state the nature of the relationship of the signer to the applicant.  If the signer has legal authority to bind the applicant, the person should so state, and should set forth his or her title or position.  If the signer is an attorney authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14(a), the attorney should identify him or herself as an attorney and indicate the United States state bar of which he or she is a member in good standing.  If the signer meets the requirements of either 37 C.F.R. §11.14(b) or (c), the person should explain how he or she meets these requirements.  See TMEP §611.05(b) for further information.

If the person who signed the response is not an authorized signer, the applicant is unrepresented, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant may telephone the examining attorney to authorize such an amendment.  If the applicant is represented by a qualified practitioner, that practitioner must authorize any examiner’s amendment. Otherwise, the applicant must submit a response signed by the applicant or someone with legal authority to bind the applicant (see TMEP §§712.01 et seq.), or by a qualified practitioner.  This should be done through TEAS (using either the "Response to Office Action" or "Request for Reconsideration after Final Office Action" form, as appropriate), or may be done by fax (unless it is excluded by 37 C.F.R. §2.195(d)).  In a TEAS Plus or TEAS RF application, the response must be filed through TEAS, or the application will lose TEAS Plus or TEAS RF status (see TMEP §§819.02(b), 820.02(b)).  See TMEP §611.01(c) regarding signature of documents submitted through TEAS.  When a response is signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.

Unsatisfactory Response or No Response.  If no acceptable response is received within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §718.03.  In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66.  The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146.  See TMEP §1713.01 regarding the standard of review for reversing an examining attorney’s holding of abandonment due to incomplete response.