37 CFR § 11.5 — Register of attorneys and agents in patent (MPEP Coverage Index) – BlueIron IP
37 CFR § 11.5 Register of attorneys and agents in patent
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 11.5, including 2 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Official MPEP § 11.5 — Register of attorneys and agents in patent
Source: USPTOLast Modified: 10/30/2024 08:50:22
11.5 Register of attorneys and agents in patent matters; practice before the Office.
- (a) Register of attorneys and agents . A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants having prospective or immediate business before the Office in the preparation and prosecution of patent applications. Registration in the Office under the provisions of this part shall entitle the individuals so registered to practice before the Office only in patent matters.
- (b)
Practice before the Office. Practice before the
Office includes, but is not limited to, law-related service that
comprehends any matter connected with the presentation to the
Office or any of its officers or employees relating to a client’s
rights, privileges, duties, or responsibilities under the laws or
regulations administered by the Office for the grant of a patent or
registration of a trademark, or for enrollment or disciplinary
matters. Such presentations include preparing necessary documents
in contemplation of filing the documents with the Office,
corresponding and communicating with the Office, and representing a
client through documents or at interviews, hearings, and meetings,
as well as communicating with and advising a client concerning
matters pending or contemplated to be presented before the Office.
Nothing in this section proscribes a practitioner from employing or
retaining non-practitioner assistants under the supervision of the
practitioner to assist the practitioner in matters pending or
contemplated to be presented before the Office.
- (1)
Practice before the Office in all patent
matters.
Practice before the Office in patent
matters includes, but is not limited to, preparing or
prosecuting any patent application; consulting with or giving
advice to a client in contemplation of filing a patent
application or other document with the Office; drafting the
specification or claims of a patent application; drafting an
amendment or reply to a communication from the Office that
may require written argument to establish the patentability
of a claimed invention; drafting a reply to a communication
from the Office regarding a patent application; and drafting
a communication for an interference, derivation, and/or
reexamination proceeding, a petition, an appeal to or any
other proceeding before the Patent Trial and Appeal Board, or
any other patent proceeding. Registration to practice before
the Office in patent matters authorizes the performance of
those services that are reasonably necessary and incident to
the preparation and prosecution of patent applications or
other proceedings before the Office involving a patent
application or patent in which the practitioner is authorized
to participate. The services include:
- (i) Considering the advisability of relying upon alternative forms of protection which may be available under State law, and
- (ii) Drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, where the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and when drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.
- (2)
Practice before the
Office in design patent matters.
- (i) Practice before the Office in design patent matters includes, but is not limited to, preparing or prosecuting a design patent application; consulting with or giving advice to a client in contemplation of filing a design patent application or other document relating to a design patent application with the Office; drafting the specification or claim of a design patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed design invention; drafting a reply to a communication from the Office regarding a design patent application; and drafting a communication for an interference, derivation, and/or reexamination proceeding, a petition, an appeal to or any other design patent proceeding before the Patent Trial and Appeal Board, or any other design patent proceeding.
- (ii) Design patent registration
to practice before the Office in design patent matters
authorizes the performance of those services that are
reasonably necessary and incident to the preparation
and prosecution of design patent applications or other
proceedings before the Office involving a design patent
application or design patent in which the practitioner
is authorized to participate. The services include:
- (A) Considering the advisability of relying upon alternative forms of protection which may be available under State law, and
- (B) Drafting an assignment or causing an assignment to be executed for the design patent owner in contemplation of filing or prosecution of a design patent application for the design patent owner, where the design patent practitioner represents the design patent owner after a design patent issues in a proceeding before the Office, and when drafting the assignment the design patent practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.
- (3) Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing or prosecuting an application for trademark registration; preparing an amendment that may require written argument to establish the registrability of the mark; preparing or prosecuting a document for maintaining, correcting, amending, canceling, surrendering, or otherwise affecting a registration; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.
- (1)
Practice before the Office in all patent
matters.
Practice before the Office in patent
matters includes, but is not limited to, preparing or
prosecuting any patent application; consulting with or giving
advice to a client in contemplation of filing a patent
application or other document with the Office; drafting the
specification or claims of a patent application; drafting an
amendment or reply to a communication from the Office that
may require written argument to establish the patentability
of a claimed invention; drafting a reply to a communication
from the Office regarding a patent application; and drafting
a communication for an interference, derivation, and/or
reexamination proceeding, a petition, an appeal to or any
other proceeding before the Patent Trial and Appeal Board, or
any other patent proceeding. Registration to practice before
the Office in patent matters authorizes the performance of
those services that are reasonably necessary and incident to
the preparation and prosecution of patent applications or
other proceedings before the Office involving a patent
application or patent in which the practitioner is authorized
to participate. The services include:
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (b)(1) introductory text revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (a), (b)(1) introductory text, and (b)(2) revised, 86 FR 28442, May 26, 2021, effective June 25, 2021; para. (b)(1) revised, para. (b)(2) redesignated (b)(3), new para. (b)(2) added, 88 FR 78644, Nov. 16, 2023, effective Jan. 2, 2024]
- Correspondence Address
- Practitioner Recognition