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

Michael Dryja mike at dryjapat.com
Fri Jan 31 20:54:49 UTC 2025


That’s a really great point.  

I’m thinking I may refer them to a patent ethics person, the ever-present David Hricik who speaks at every patent CLE I attend!

 - Mike.

> On Jan 31, 2025, at 12:49 PM, Suzannah K. Sundby <suzannah at canadylortz.com> wrote:
> 
> 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
> suzannah at canadylortz.com
> www.canadylortz.com
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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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