Issue 138 | December 1, 2003
USPTO Rejecting Filings by
Suspended Patent Practitioners
 On October 21, 2003, the USPTO announced that the Office of Enrollment and Discipline ("OED") at the United States Patent and Trademark Office ("USPTO") will periodically notify the Patent Technology Center Directors of the names of the patent attorneys and agents who have been administratively suspended and that correspondence signed by those suspended patent practitioners should not be accepted.

As reported in Issues 71 and 87 of this newsletter, the OED is requiring responses to survey letters that were mailed under 37 C.F.R. �.11(b) to certain active, registered patent practitioners. The names of practitioners failing to reply and give the requested information have been removed from the register and published in the Official Gazette. Attorneys and agents who have been administratively suspended in this manner are not entitled to practice before the USPTO until reinstated. Consequently, correspondence signed by attorneys or agents who are administratively suspended will be treated as improperly signed and will not be entered as discussed in MPEP �4.01.

Where there is at least one registered practitioner still of record who has not been suspended or excluded from practice, the Office will notify the first properly registered practitioner of the status of the application and advise that a replacement paper must be furnished, or the paper that was already filed must be ratified. If there are no remaining registered practitioners still of record, the notice will be sent to the first named inventor as discussed in MPEP �7.

As long as the application is not under final rejection, then the notice will provide a new one-month time period from the mailing date of the notice to submit a properly signed paper or ratify the previously filed correspondence under 37 CFR 1.135(c). If the application is under final rejection, the notice will indicate that the period for reply set in the prior Office action continues to run and that appropriate action by the applicant must be taken in order to avoid abandonment or revive the abandoned application.

The Pre-OG Notice signed on October 17, 2003 entitled "Correspondence Filed By Individuals Whose Names Have Been Removed From The Register Pursuant to 37 CFR 10.11(b)" is available at http://www.uspto.gov/web/offices/pac/
. The author of this update is Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.