TMEP 608.02: Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO

This is the October 2015 Edition of the TMEP

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608.02    Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO

Occasionally, the Director of the USPTO suspends or excludes a particular individual from practice before the USPTO. 35 U.S.C. §32; 37 C.F.R. §11.56. Notice of the suspension or exclusion is published in the Official Gazette and the decision is posted in the FOIA Reading Room http://des.uspto.gov/Foia/OEDReadingRoom.jsp. A suspended or excluded individual is not a qualified practitioner. See generally 37 C.F.R. §11.58 (a suspended or excluded individual may not practice before the USPTO).

Also, the USPTO sometimes learns that a person who does not meet the requirements of 37 C.F.R. §11.14 is engaged in the widespread unauthorized practice of representing applicants and registrants before the USPTO.

In these cases, the Administrator for Trademark Policy and Procedure (“Administrator”) will notify the USPTO staff accordingly, and the USPTO will send a written notice to the affected applicant or registrant, indicating that:

  • (1) The individual is not entitled to practice before the USPTO in trademark matters, and, therefore, may not represent the applicant or registrant;
  • (2) Any power of attorney is void ab initio;
  • (3) The individual may not sign responses to Office actions, authorize examiner’s amendments or priority actions, conduct interviews with USPTO employees or otherwise represent an applicant, registrant, or party to a proceeding before the Office; and
  • (4) All correspondence concerning the application or registration will be sent to the domestic representative if appropriate, or, alternatively, to the applicant or registrant at its address of record.

The USPTO will change the correspondence address to that of the applicant, registrant, or domestic representative, as appropriate.

If an Office action is outstanding and no response has been received, the examining attorney or Post Registration staff must issue a supplemental action, addressed to the applicant or registrant, that restates any outstanding refusals and/or requirements, includes a new six-month response period, and states that a response signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership) (see TMEP §§611.06–611.06(h) ), or a qualified practitioner (see TMEP §§602–602.03(e) ) must be submitted within the response period. See TMEP §711.02 regarding supplemental Office actions.

If the examining attorney or Post Registration staff receives a response to an Office action signed by an excluded or suspended practitioner, or a person who appears to be engaged in deliberate or widespread unauthorized practice of law, he or she must prepare a notice of incomplete response, addressed to the applicant or registrant, granting the applicant or registrant 30 days, or to the end of the 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 et seq., 712.03, and 718.03(b) for further information.

USPTO employees must also notify the Administrator of the receipt of a document signed by such a person.