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

This is the October 2015 Edition of the TMEP

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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 individual applicant, someone with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b), 2.74(b); see TMEP §§304.01, 304.02, 602, 709.01–709.05.

If the applicant is represented by a qualified practitioner, the examining attorney must communicate directly with the practitioner by phone or e-mail. If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to conduct business, and will note this fact in the examiner’s amendment. Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified practitioner’s approval by indicating that the practitioner has approved the amendment.

If the applicant is pro se, 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 practitioner, 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) is not entitled to authorize an examiner’s amendment, unless he or she has legal authority to bind the applicant. The broad definition of “person properly authorized to sign on behalf of the [applicant]” in 37 C.F.R. §2.193(e)(1) (see TMEP §§611.03(a), 804.04) does not apply to examiner’s amendments.

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

If an examining attorney contacts an applicant 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 e-mail 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.