TMEP § 707
An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application. An examiner’s amendment is a communication to the applicant in which the examining attorney states that the application has been amended in a specified way. Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner. Cf. 37 C.F.R. §§2.62(b), 2.74(b). See TMEP §707.01 regarding the authorization of an examiner’s amendment. Authorization is usually given in a telephone conversation, e-mail communication, or interview between the examining attorney and the applicant or the applicant’s qualified practitioner. See TMEP §§304–304.09 regarding e-mail.
The examining attorney may issue an examiner’s amendment whenever the required amendment does not have to be verified by the applicant. For example, in appropriate circumstances, an examiner’s amendment may be used to amend the identification of goods/services, enter a disclaimer, add the state of incorporation, or amend from the Principal to the Supplemental Register.
The following are examples of amendments that may not be made by examiner’s amendment: the dates of use, if verification would be required (see TMEP §903.04); the mark on a special-form drawing (see TMEP §§807.04–807.04(b)), if the changes would require the filing of a substitute special form drawing; and amendments that require the submission of substitute specimen(s) (see TMEP §904.05). An application cannot be expressly abandoned by examiner’s amendment (see TMEP §718.01).
An authorization to charge a fee to a deposit account cannot be entered by examiner’s amendment, unless the record already contains a written authorization, signed and submitted by someone authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.
Examiner’s amendments generally are not used when there are statutory refusals. However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner’s amendment.
Example: If the applicant could overcome a surname refusal for a mark that is in use in commerce by amending to the Supplemental Register, the examining attorney may initiate telephone or e-mail contact and suggest the amendment. If the applicant authorizes the amendment, the examining attorney may issue an examiner’s amendment amending the application to the Supplemental Register.
Example: If the mark contains the term "organic" and the applicant could overcome a potential deceptiveness refusal by amending the identification to state that the goods are organic, the examining attorney may initiate telephone or e-mail contact and suggest the amendment. If the applicant authorizes the amendment, the examining attorney may issue an examiner’s amendment amending the identification.
Example: If the applicant could overcome a likelihood-of-confusion refusal as to several registrations by amending a vague or indefinite identification of goods/services, the examining attorney may initiate telephone or e-mail contact and suggest the amendment only if it would obviate the refusals as to all the registrations that would be cited. If the applicant agrees to the proposed amendment clarifying the identification, the examining attorney may issue an examiner’s amendment. If the applicant does not agree with the examining attorney’s suggested identification and proposes an amendment that would obviate the refusal as to some, but not all, of registrations, the examining attorney may issue a combined examiner’s amendment/priority action. See TMEP §708.05. However, when it is clear from the outset that amending the identification would not obviate the refusal as to one or more of the registrations, the examining attorney must not initiate telephone or e-mail contact, because it is not possible to offer the applicant a specific action to place the application in condition for publication, suspension, or registration.
Example: If the identification is vague or indefinite, the examining attorney may seek authorization to amend the identification by examiner’s amendment, even when the amendment would not overcome a potential likelihood-of-confusion refusal. The examining attorney would then issue a notice of suspension. To ensure that the applicant understands that amending the identification will only put the application in condition for suspension, during the telephone or e-mail discussion, the examining attorney must notify the applicant of the prior pending application and the forthcoming suspension. The resulting examiner’s amendment should also include this information.
See TMEP §708.04 regarding priority actions involving statutory refusals.
An examining attorney without partial signatory authority must have proper authorization from the managing attorney, senior attorney, or a reviewing examining attorney before initiating an examiner’s amendment.
See TMEP §707.03 regarding the form of an examiner’s amendment.
An applicant should not file correspondence confirming an examiner’s amendment, because this will delay processing of the application. A written response to an examiner’s amendment is not required.
If an applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by telephone or e-mail), so that the objection can be considered before publication or issue. See TMEP §1402.07(e) regarding an applicant’s objection to an examiner’s amendment of the identification of goods/services on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.
Often an applicant will seek to respond to an outstanding Office action with an amendment or other response by telephone. The examining attorney is encouraged to enter an examiner’s amendment if this amendment will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See TMEP §§716–716.06 regarding suspension. However, an applicant does not have an unlimited right to the entry of an examiner’s amendment in response to an Office action. If the applicant does not agree to an amendment that the examining attorney believes will immediately place the application in condition for publication for opposition or issuance of a registration, the applicant must file a complete written response to the outstanding Office action.
See TMEP §708.05 regarding combined examiner’s amendment/priority actions.
NOTE: In a §66(a) application, an examiner’s amendment may not be issued on first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.
Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual applicant, someone with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b), 2.74(b). See TMEP §§304.01, 304.02, 602, 709.01–709.05.
If the applicant is represented by a qualified practitioner, the examining attorney must communicate directly with the practitioner by phone or e-mail. If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to conduct business, and will note this fact in the examiner’s amendment. Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified practitioner’s approval by indicating that the practitioner has approved the amendment.
If the applicant is pro se, the examining attorney must communicate directly with the individual applicant or with someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership). Cf. 37 C.F.R. §11.14(e). For joint applicants who are not represented by a qualified practitioner, each joint applicant must authorize the examiner’s amendment. See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) is not entitled to authorize an examiner’s amendment, unless he or she has legal authority to bind the applicant. The broad definition of "person properly authorized to sign on behalf of the applicant" in 37 C.F.R. §2.193(e)(1) (see TMEP §§611.03(a), 804.04) does not apply to examiner’s amendments.
The applicant or the applicant’s qualified practitioner must actually authorize the examiner’s amendment. The examining attorney may not leave an e-mail or voicemail message for the applicant or the qualified practitioner indicating that an amendment shall be entered if the applicant or practitioner does not respond to the message.
If an examining attorney contacts an applicant and reaches agreement to issue an examiner’s amendment, but later determines that an Office action must be issued instead to state a refusal or requirement, the examining attorney should telephone or e-mail the applicant immediately to advise the applicant of the change of position.
Examining attorneys without partial signatory authority must advise applicants that issuance of the examiner’s amendment is subject to review by a supervisory attorney.
Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified practitioner (sometimes referred to as a "no-call" examiner’s amendment) in the following situations:
Example - The cover letter accompanying a paper application refers to the mark as a stylized golf ball design. If appropriate, the examining attorney could enter an amendment that "the mark consists of the stylized design of a golf ball."
Example – The application refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but the color yellow is omitted from the formal description of the colors in the mark (see TMEP §807.07(a)(ii)). The examining attorney may enter an amendment of the formal color description to accurately reflect all colors in the mark;
Example - The goods are identified as "T-shurtz." The examining attorney may amend to "T-shirts." However, "shurtz" may not be amended to "shirts" without calling the applicant, because "shurtz" (without the "T-" prefix) might also be a misspelling of "shorts."
If the examining attorney must contact the applicant or the applicant’s qualified practitioner about other matters, or if the record contains any ambiguity as to the applicant’s intent, the examining attorney should advise the applicant that the above changes have been made.
If the applicant has authorized e-mail communication with the USPTO, the applicant will receive an e-mail notification when an examiner’s amendment is issued. The applicant may then view and/or print the examiner’s amendment from the USPTO website. If the applicant has not authorized e-mail communication with the USPTO, a copy of the examiner’s amendment will be sent to the applicant. Any applicant who disagrees with any of these changes should contact the examining attorney immediately after reviewing or receipt of the examiner’s amendment, preferably by telephone or e-mail.
Note: In a §66(a) application, an examiner’s amendment may not be issued on first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.
An examiner’s amendment should include the following information: the name, law office, telephone number, and e-mail address of the examining attorney; the name of the person interviewed; the date of the interview; the actual amendment; and, if applicable, a statement to the effect that the amendment has been authorized by the applicant or the applicant’s qualified practitioner.
The examiner’s amendment must not include a six-month response clause, because a written response by the applicant is not required for an examiner’s amendment.
The examiner’s amendment must include a search clause (see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.
The examining attorney must not state in the examiner’s amendment that the application is ready for publication or issue, because some unforeseen circumstance might require that further action be taken in the application.
The examiner’s amendment must indicate any refusals or requirements that are withdrawn and/or continued by the examining attorney.