TMEP 712.01: Persons Who May Sign Response

This is the October 2015 Edition of the TMEP

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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. 37 C.F.R. §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.