37 CFR 11.5 : Register of attorneys and agents in patent matters; practice before the Office.

(a) A register of attorneys and agents is kept in the on which are entered the names of all individuals recognized as entitled to represent having prospective or immediate business before the in the preparation and prosecution of patent applications. in the under the provisions of this part shall entitle the individuals so registered to practice before the only in patent matters.

(b)Practice before the Office. Practice before the includes, but is not limited to, law-related service that comprehends any matter connected with the presentation to the or any of its officers or employees relating to a client's rights, privileges, duties, or responsibilities under the laws or regulations administered by the for the grant of a patent or of a trademark, or for enrollment or disciplinary matters. Such presentations include preparing necessary documents in contemplation of filing the documents with the , corresponding and communicating with the , and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the . Nothing in this section proscribes a from employing or retaining non-practitioner assistants under the supervision of the to assist the in matters pending or contemplated to be presented before the .

(1)Practice before the Office in patent matters. Practice before the in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the , drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding. to practice before the in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the involving a patent application or patent in which the is authorized to participate. The services include:

(i) Considering the advisability of relying upon alternative forms of protection which may be available under law, and

(ii) Drafting an assignment or causing an assignment to be executed for the patent in contemplation of filing or prosecution of a patent application for the patent , where the represents the patent after a patent issues in a proceeding before the , and when drafting the assignment the does no more than replicate the of a previously existing oral or written obligation of assignment from one or party to another or party.

(2)Practice before the Office in trademark matters. Practice before the 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 ; preparing and prosecuting an application for trademark ; preparing an amendment which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.