[Patentpractice] Paralegal outside of the US filing responses, etc., in Patent Center

[Suzannah K. Sundby]

I'd check state bar rules and rules of ethics... might be something that requires disclosure to the client and/or that the paralegal who is not domiciled in the US must be subject to US laws and regulations, particularly US rules of ethics, etc.

Suzannah K. Sundby | Partner
canady + lortz LLP
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
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-----Original Message-----
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Randall Svihla via Patentpractice
Sent: Friday, January 31, 2025 1:28 PM
To: Michael Dryja <mike at dryjapat.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Paralegal outside of the US filing responses, etc., in Patent Center

Hi, Mike

As long as the application is not under a security order, I don't see why not.  But wouldn't it be easier for the attorney to just file it after they sign it?  It should only take a couple of minutes.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


-----Original Message-----
From: Michael Dryja <mike at dryjapat.com> 
Sent: Friday, January 31, 2025 1:24 PM
To: Randall Svihla <rsvihla at nsiplaw.com>
Cc: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Paralegal outside of the US filing responses, etc., in Patent Center

Hi Randall,

They understand that.  Basically, they are wondering if the actual filing of the attorney-prepared and -signed response in Patent Center can be done by a paralegal outside the US.

 - Mike.

> On Jan 31, 2025, at 10:12 AM, Randall Svihla <rsvihla at nsiplaw.com> wrote:
> 
> Hi, Mike
> 
> A registered practitioner must personally sign the responses before the paralegal can file them.
> 
> Best regards,
> 
> Randall S. Svihla
> NSIP Law
> Washington, D.C.
> 
> 
> -----Original Message-----
> From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Michael Dryja via Patentpractice
> Sent: Friday, January 31, 2025 1:07 PM
> To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
> Cc: Michael Dryja <mike at dryjapat.com>
> Subject: [Patentpractice] Paralegal outside of the US filing responses, etc., in Patent Center
> 
> A client asked this question, and I am unsure of the answer.
> 
> They are a corporation with both a US office and an office outside the US.  They would like for their paralegal outside the US to file office action responses in Patent Center.
> 
> Is there any prohibition for them to do this?  Any potential risks for them to consider?
> 
> Thanks in advance for any information anyone can provide!!
> 
> - Mike.
> 
> ---
> Law Offices of Michael Dryja
> 24 Roy St #447
> Seattle, WA 98109
> mike at dryjapat.com
> 
> 
> 
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