712 Signature on Response to Office Action
A response to an Office action must be personally signed by the proper party; that is, a qualified U.S. attorney or, if the applicant is neither represented by a qualified attorney nor required to be represented by one, 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 U.S. attorney (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 regarding the proper person to sign a response, and §§611.06-611.06(h) as to persons who have legal authority to bind various types of juristic entities.
For a handwritten signature, the signatory must personally sign his or her name. See 37 C.F.R. §2.193(a)(1); TMEP §611.01(b). For an electronic signature, the signatory must personally enter the elements of his or her electronic signature. See 37 C.F.R §2.193(a)(2), (c)(1); TMEP §611.01(b), (c).
The first and last name and the title or position of the person who signs the response must be set forth immediately below or adjacent to the signature. 37 C.F.R §2.193(d); TMEP §611.01(b).
712.01 Persons Who May Sign Response
The response must be properly signed in accordance with the guidelines in TMEP §611.03(b). See TMEP §§611.06-611.06(h) for persons with legal authority to bind various types of juristic entities and §§602-602.03(c) regarding persons qualified to represent others before the USPTO in trademark matters.
When it appears that a response to an Office action is signed by an improper party, the examining attorney must follow the procedures in TMEP §§611.05-611.05(c). See TMEP §611.04 for examples of authorized and potentially unauthorized signatories.
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 response period for 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 "Notice of Non-Responsive Amendment" selection for a response to a nonfinal action or the "Continuing Final Action" selection if the response is to a final action. In either instance, the notice of incomplete response must not include a response clause.
If the applicant is neither required to be represented nor is represented by a qualified U.S. attorney 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. However, if the applicant is required to be represented but has not appointed a qualified U.S. attorney, the applicant may not request the amendment be entered through an examiner’s amendment. See TMEP §§712-712.03. If the applicant is represented by a qualified U.S. attorney, that attorney must submit the response or request entry of an examiner’s amendment. 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 U.S. attorney or, if the applicant is not represented by a qualified attorney, 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), 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 Improper 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 U.S. attorney, someone other than the attorney or another qualified attorney 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 response period for 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)). Note that if the correspondence address was changed as the result of a submission by an unauthorized party, the examining attorney must ensure that the new address is removed from the Trademark electronic record and that the notice of incomplete response is sent to the last previous correct correspondence address. 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 not already provided. 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 provide the attorney bar information required in 37 C.F.R §2.17(b)(3) (see TMEP §602.01(a)). 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 not required to be represented, 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 or email the examining attorney to authorize such an amendment. See TMEP §707.01. If the applicant is represented by a qualified U.S. attorney, the attorney must authorize an examiner’s amendment. See id. Otherwise, the applicant must submit a response signed by the applicant or someone with legal authority to bind the applicant (see TMEP §712.01), or by a qualified U.S. attorney. 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.