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Dear Mr. Zarfas:

The issue of whether the PTO will accept a signature from an attorney who has not specifically been authorized on a PTO deposit account recently came to my attention, and it is an important issue of which attorneys and firms need to be aware. This issue arises whenever an attorney at a firm who has not been added to the PTO's list of people authorized to use the "firm's" deposit account signs a form, and that form includes the standard authorization to charge that deposit account. This standard authorization is most often automatically used by firms, in the sense that the authorization to charge overpayments or under payments to the firm's deposit account is included in all of the firm's PTO filings. It is included in all filings as a safety mechanism in case the amount paid by check when filing papers in the PTO is inaccurate.

Upon investigating the PTO's policy regarding whether the PTO accepts signatures of unauthorized users, particularly unauthorized attorneys, I found that there is no clear rule indicating whether an attorney's signature on a deposit account authorization will or will not be accepted by the PTO. Based upon my email exchange with PTO officials on this point, there is also no definite practice in the PTO how to handle that type of situation. However, on this point, I wish to publish the following warning provided to me from a PTO official:

The bottom line is that, while the UPSTO will make phone calls etc, someone who is not an authorized user should not be authorizing a deposit account to be charged. Although we have been lenient in the past, in the future this could be treated as nonpayment.

Some PTO fee payments avoid non-extendable bar dates, such as charges for certain PCT filings. Accordingly, if your firm has been relying upon the gratuity of the PTO in not challenging unauthorized signatures, you may someday be rudely and detrimentally surprised. According to http://www.uspto.gov/web/offices/ac/comp/fin/faqdepac.htm, you can revise the list of authorized users for your firm's deposit account by sending a letter to Mail Stop 16, Director of the US Patent and Trademark Office, PO Box 1450, Alexandria, VA 22313-1450 or via FAX to the Deposit Account Branch at (703) 305-4631. If you have not done so, I suggest you impose a procedure to keep your firm's list of authorized users of the firm's deposit account up to date.

Truly,

Rick Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC and StockPricePredictor.com, LLC
Tel: 703-415-0012
Fax: 703-415-0013
Email:
www.Neifeld.com and www.PatentValuePredictor.com


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