New Powers of Attorney Needed for Transferred TM Files

The U.S Patent and Trademark Office's Examination Guide 03-06, "Representing an Applicant/Registrant Before the USPTO," issued on November 13, 2006 requires a new power of attorney, signed by the applicant/registrant, for files which have been transferred from a law firm that previously filed a formal power of attorney:

Submission of a formal power of attorney is generally not required. However, once an attorney is recognized by the USPTO as the representative of an applicant/registrant, a change in representation can only be made upon written
request signed by the applicant/registrant until USPTO recognition ceases as set forth below. The “appearance” of an attorney by means of a telephone call to the Office does not aatisfy the requirement of 37 C.F.R. §2.17(c). Such an attorney
will not be recognized as applicant's/registrant's representative and he or she cannot authorize amendments to the application/registration.

If a qualified attorney already represents an applicant/registrant, and a new attorney takes over prosecution of the application or post-registration filing, the applicant/registrant must file a new power of attorney signed by the applicant/registrant or an authorized signer (see TMEP §602.01), before the USPTO will either (1) accept a response signed by the new attorney; or (2) correspond with the new attorney. A different attorney from the same U.S.-based firm as the current attorney of record is not considered a “new ttorney.”
If the USPTO has recognized the representation of an applicant/registrant by a qualified attorney, and a response to an Office action is received that is signed by someone other than that attorney, the examiner should hold the response incomplete, because it does not appear that the proper party signed the response (i.e., the attorney of record), by issuing a Notice of Incomplete Response. The merits of the response are not addressed.

A reply to the Notice must be submitted within: (1) the period of time left in the original six-month response period; or (2) thirty days from the mailing or e-mail transmission date
of the Notice, whichever is longer. 37 C.F.R. §2.65(b); and (3) Failure to comply with the requirements of the Notice will result in abandonment of the application for incomplete response.

An applicant/registrant cannot sign responses or authorize examiner's amendments without first revoking any previously recognized or appointed powers of attorney, except for submissions where an applicant/registrant's signature is required (e.g., a declaration in support of dates of use, specimens or a §2(f) claim).

With respect to foreign attorneys, the new guidelines state that "Canadian attorneys are currently the only foreign attorneys who have been recognized as meeting the qualification criteria of 37 C.F.R. §10.14(c). A Canadian attorney or agent granted recognition by the USPTO may only represent parties located in Canada."