37 CFR 11.5(b)(1) — Register of attorneys and agents in patent matters; practice before the Office

37 CFR 11.5(b)(1) — 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.

(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.

(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.

(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.

[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]

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