707.01    Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney

Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the proper person by telephone, email, or in person during an interview.   Cf. 37 C.F.R. §§2.62(b), 2.74(b);  see TMEP §§304.01, 304.02, 602, 611.03-611.03(i)709.01–709.05.

If the applicant is represented by a qualified U.S. attorney, the examining attorney must communicate directly with the attorney by phone or email.  If a qualified U.S. attorney from the same firm as the qualified attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the attorney to conduct business, and will note this fact in the examiner’s amendment.  

A Canadian trademark attorney or agent who has been appointed in addition to a qualified U.S. attorney may not authorize an examiner’s amendment. Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified attorney’s approval by indicating that the attorney has approved the amendment.

If the applicant is pro se and not required to be represented under 37 C.F.R. §2.11(a), the examining attorney must communicate directly with the individual applicant or with someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership). Cf. 37 C.F.R. §11.14(e).  For joint applicants who are not represented by a qualified U.S. attorney and not required to be represented under 37 C.F.R. §2.11(a), each joint applicant must authorize the examiner’s amendment.  See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1)  (see TMEP §611.03(a)) is not entitled to authorize an examiner’s amendment on behalf of a pro se applicant who is not required to be represented under 37 C.F.R. §2.11(a), unless he or she has also legal authority to bind the applicant.

The applicant or the applicant’s qualified attorney must actually authorize the examiner’s amendment.  The examining attorney may not leave an email or voicemail message for the applicant or the qualified attorney indicating that an amendment shall be entered if the applicant or attorney does not respond to the message.

If the applicant is required to be represented under 37 C.F.R §2.11(a)  but has not appointed a qualified U.S. attorney, the examining attorney may not contact the applicant to authorize an examiner’s amendment. See TMEP §§712-712.03.

If an examining attorney contacts a pro se applicant who is not required to be represented and reaches agreement to issue an examiner’s amendment, but later determines that an Office action must be issued instead to state a refusal or requirement, the examining attorney should telephone or email the applicant immediately to advise the applicant of the change of position.

Examining attorneys without partial signatory authority must advise applicants that issuance of the examiner’s amendment is subject to review by a supervisory attorney.