TMEP 611.05(b): Replying to a Notice of Incomplete Response

October 2017 Edition of the TMEP

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611.05(b)    Replying to a Notice of Incomplete Response

If the individual whose name appears beneath the signature is an authorized signer, he or she may simply telephone or send an e-mail message to clarify the record, and the USPTO staff will make an appropriate Note to the File in the record, review the previously submitted response, and take the appropriate action. If the record does not contain the name of the individual who entered the combination of letters, numbers, spaces, and/or punctuation between two forward slash symbols, a response signed by an authorized party is required. See TMEP §611.

A proper reply to a notice of incomplete response should state the nature of the relationship of the signer to the applicant or registrant.  If the signer has legal authority to bind the applicant or registrant, the person should so state, and should set forth his or her title or position.  If the signer is an attorney who may practice before the USPTO pursuant to 37 C.F.R. §11.14(a),the attorney should identify himself or herself as an attorney and indicate the bar of the U.S. state of which he or she is a member in good standing.  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.  For example, a Canadian attorney or agent recognized to practice before the USPTO in trademark cases by OED ( see TMEP §602.03(a)) may simply state he or she has received recognition by OED as a Canadian practitioner under §§11.14(c) and (f).

In a pending application, if the person who signed the response is not an authorized signer, 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 (e.g., a corporate officer or general partner of a partnership) may telephone the examining attorney to authorize such an amendment.  Otherwise, when the person who signed the response is not an authorized signer, the applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant, or a qualified practitioner.  See TMEP §§ 611.03(b), 611.06–611.06(h), and 712.01 regarding the proper party to sign a response to an Office action.

See TMEP §604.03 regarding changes of attorney.