(Updated 2/11/05; updated
7/21/04)
Power of Attorney
A. Acting in a Representative Capacity (Authorization
to Act)
B. Application Data Sheet
C. Attorneys/Agents Listed on Filing Receipt
D. Changing Power of Attorney
E. Customer Number
F. Effective Date
G. Filing a Declaration Signed before June 25, 2004
H. Language Used to Designate Power of Attorney to a Customer
Number
I. Limited Recognition
J. Multiple Powers of Attorney; Second Revokes the First
K. PAIR (Patent Application Information Retrieval) System
L. Power of Attorney to Both a List of Practitioners and
Customer Number (CN); CN Used
M. Separate Paper Listing Names to be Of Record
N. Signature Requirements
Assignments
A. Correction of Assignee (see also Issue of Patent to
Assignee)
B. Date of Execution
C. Issue of Patent to Assignee (See also Correction of
Assignee)
D. Patent Term Adjustment & Papers filed after Allowance
other than Fee(s) Transmittal
E. Recordation of Assignments
A.
Acting in a Representative Capacity (Authorization to Act)
Q1. (originally Q17) Is there a limit to the
number of practitioners who may be given an Authorization to Act in a
Representative Capacity?
A1. No. Practitioners whose representation is based upon an Authorization
to Act in a Representative Capacity are not entered into the Office’s
computer system and are not considered to be an attorney or agent of
record.
Q2. (originally Q19) I am filing a reply to
an Office action. Because associate power of attorney has been eliminated,
and we already have more than ten patent practitioners with power of attorney,
do I need a new Power of Attorney to a Customer Number to file a reply?
A2. No. Registered patent practitioners may file a reply to an Office
action so long as they are acting in a representative capacity. See
37 CFR 1.34. A new power of attorney is not required.
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B. Application Data Sheet
Q3. (originally Q24) Is a reference to a Customer
Number in an Application Data Sheet a power of attorney?
A3. No.
Application of 37 CFR 1.32 to Specific Applications
Q4. (originally Q22) Does 37 CFR 1.32 apply
to applications that have entered the national stage from an international
application after compliance with 35 U.S.C. 371?
A4. Yes.
Q5. (originally Q23) Does 37 CFR 1.32 apply
to international applications?
A5. No. 37 CFR 1.32 only applies to an international application once
the national stage has been entered under 35 U.S.C. 371.
Q6. (originally Q25) Does 37 CFR 1.32 apply
to provisional patent applications?
A6. Yes. Provisional applications do not normally have a power of
attorney or an executed declaration. When processing a provisional application,
the Office will enter into Office computer records for Power of Attorney
the name of any registered practitioner who signs the transmittal letter.
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C. Attorneys/Agents Listed on Filing Receipt
Q7. (added 2/11/05) In response to a request
for a corrected filing receipt, I received a filing receipt that only
lists the first ten patent attorneys listed in the power of attorney,
even though the power of attorney was filed before June 25, 2004. Can
I get a new corrected filing receipt, listing all of the attorneys who
are of record?
A7. No. A filing receipt can only list up to ten patent attorneys
or agents, regardless of the number of patent attorneys or agents who
are of record. The attorneys and agents will be listed beginning with
the lowest registration number. To see a complete listing of the attorneys
or agents of record, check PAIR.
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D. Changing Power of Attorney
Q8. In an application in which a power of attorney was filed
giving power of attorney to a list of patent practitioners, can one of
the listed patent practitioners file a paper changing the power of attorney
to a Customer Number (i.e., can the separate paper give a Customer Number)?
A8. No. The applicant or assignee gave power of attorney to the list
of patent practitioners, not to a Customer Number. If the power of attorney
is to be changed to a Customer Number, which may include practitioners
in addition to those with a power of attorney, or exclude others now
having a power of attorney, the applicant or assignee must sign a new
power of attorney.
Q9. If an application is filed with a power of attorney naming
more than ten patent practitioners, and a separate list naming a subset
of the ten patent practitioners, how can the subset of patent practitioners
be changed? How will the Office process the change in power of attorney,
when the power of attorney signed by the applicant is the same, but the
listing is different.
A9. The subset of practitioners can be changed in two ways, namely:
1.) A new power of attorney can be filed naming ten or fewer patent
practitioners, or a Customer Number, see 37 CFR 1.32. If a new power
of attorney is filed, it will be treated as a revocation of the earlier
filed POA; or 2.) A copy of the originally filed power of attorney with
a new separate paper (listing) setting forth the different subset of
patent practitioners can be filed. As previously indicated in question
1, a signature for the correspondence is required, and it can be supplied
by any of the parties set forth in 37 CFR 1.33(b), which includes: (1)
a practitioner of record (identified in the originally filed subset
listing) or one of the practitioners named on the new separate paper
(listing); (2) a practitioners not of record but acting in a representative
capacity under the provisions of 37 CFR 1.34; (3) the assignee of the
applicant(s); or (4) all of the applicants.
If the paper is not signed by the applicant or the assignee, and does
not clearly revoke the prior power, then no letter will be generated
to the originally named attorneys to indicate that they are no longer
of record when the Office processes the second paper.
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E. Customer Number
Q10. (originally Q12) Must a Customer Number
only have ten or fewer patent practitioners associated with it?
A10. No, a Customer Number can have any number of patent practitioners
associated with it.
Q11. (originally Q13) Can I use more than one
Customer Number for the Power of Attorney for a particular patent application?
A11. No.
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F. Effective Date
Q12. (originally Q21) My application was filed
prior to the effective date without an executed declaration and power
of attorney. When the executed declaration is submitted, is it grandfathered
under the old rules because the application was filed prior to the effective
date?
A12. No, the revised practice applies to any power of attorney filed
on or after the effective date, June 25, 2004.
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G. Filing a Declaration Signed before June 25,
2004
Q13. (originally Q3) I have a declaration that
was signed before the effective date of the rule change, so it lists more
then ten patent practitioners. Can it still be filed?
A13. Yes. When filing a continuation, a copy of the oath or declaration
from the prior application is usually filed, and an oath or declaration
from a prior application, or one signed before (or after the effective
date of the change in the rules) can be filed together with a separate
paper listing the ten patent practitioners to be entered. If the separate
paper is not filed, no power of attorney will be entered. Basically,
the document can still be filed, but it needs to be accompanied by the
separate list of 10 or the patent practitioners listed on the power
of attorney will not be entered.
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H. Language Used to Designate Power of Attorney
to a Customer Number.
Q14. (originally Q5). Will a power of attorney
naming more than ten patent practitioners be accepted if it includes a
statement “which are the patent practitioners associated with customer
number 12345?”
A14. Although this instruction is not a clear appointment of the practitioners
associated with a Customer Number, the Office will interpret the instruction
as a power of attorney to the practitioners associated with the Customer
Number. The Office recommends the following instruction instead: “I
appoint the practitioners associated with Customer Number 12345, which
currently includes name, registration number, name, registration number,
etc.” or “I appoint the practitioners associated with Customer
Number 12345.”
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I. Limited Recognition
Q15. (originally Q18) Can an attorney who practices
under limited recognition under 37 CFR 11.9(b) have access to private
PAIR?
A15. No. An attorney who practices under a limited recognition under
37 CFR 11.9(b) does not have a registration number and therefore cannot
be associated with a Customer Number. Because the practitioner cannot
be associated with a Customer Number, the attorney cannot access private
PAIR.
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J. Multiple Powers of Attorney; Second Revokes
the First
Q16. (originally Q4) Can a power of attorney
be given to the practitioners associated with a Customer Number, and then
another power of attorney be filed to ten or fewer patent practitioners?
A16. Yes, but the second power of attorney will be treated as revoking
the first.
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K. PAIR (Patent Application Information Retrieval)
System
Q17. (originally Q14) Will the practitioners
who are added to patent applications by way of an “Authorization
to Act in a Representative Capacity” Form be able to use private
PAIR?
A17. No, unless the practitioners are associated with a Customer Number
which is designated as the correspondence address of the application.
Q18. (originally Q15) Who can access the Office's
PAIR records?
A18. The attorneys associated with the Customer Number designated as
the correspondence address of the application.
Q19. (originally Q16) Will the practitioners
who are associated with the Customer Number in the power of attorney be
able to use private PAIR?
A19. No, unless the practitioners are associated with a Customer Number
which is designated as the correspondence address of the application.
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L. Power of Attorney to Both a List of Practitioners
and Customer Number (CN); CN Used
Q20. (originally Q6) Will a power of attorney
giving power of attorney to both a list of patent practitioners and to
a Customer Number be accepted?
A20. Yes, but the Office will enter only the Customer Number. See
Manual of Patent Examining Procedure, Section 403.
Q21. (originally Q7) If I file a power of attorney
giving power of attorney to both a list of patent practitioners and a
Customer Number, does it matter which is listed first?
A21. No, the Office will enter only the Customer Number when both a
Customer Number and a list of practitioners is provided. See Manual
of Patent Examining Procedure, Section 403.
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M. Separate Paper Listing Names to be Of Record
Q22. (originally Q1) Regarding new rule 1.32(c)(3):
It states, “If a power of attorney names more than ten patent practitioners,
such power of attorney must be accompanied by a separate paper indicating
which ten patent practitioners named in the power of attorney are to be
recognized by the Office as being of record ” Does the paper need
to be signed? Who may sign that separate paper? What happens if the separate
paper is not signed?
A22. Yes, a signature is required for the separate paper (see 37 CFR
1.33(b)). Persons who may provide the signature include one of the attorneys
or agents named in the power of attorney naming more than ten patent
practitioners, a patent attorney or agent acting in a representative
capacity, the assignee acting pursuant to 37 CFR 3.73(b), or the applicant
pursuant to 37 CFR 1.41. See 37 CFR 1.33(b). If the separate paper is
not signed, a signature on a properly signed transmittal letter specifically
referring to the attached payment of the surcharge (for late filing
of the declaration), the declaration and the separate listing would
be accepted.
Q23. (originally Q2) A patent application was
already filed, and a declaration has to be filed in response to a Notice
to File Missing Parts. A declaration signed by the inventors is ready
to be filed but it names more than ten patent practitioners. Can one of
the named patent practitioners sign the separate paper listing ten or
fewer patent practitioners under 37 CFR 1.32(c)(3)?
A21. Yes, one of the named patent practitioners could sign the separate
paper under 37 CFR 1.32(c)(3). Alternatively, a signature on a properly
signed transmittal letter specifically referring to the attached payment
of the surcharge (for late filing of the declaration), the declaration
and the separate listing would be acceptable.
Q24. (originally Q10) Can the paper designating
the ten or fewer patent practitioners be filed separately from a Power
of Attorney?
A24. If the power of attorney was already filed (e.g., as part of
an oath or declaration), the rule requires that a new copy of the signed
document must be filed with separate paper listing the patent practitioners
to be entered. The Office will nevertheless be reasonable in enforcing
the requirements of the rule. Therefore, if the power of attorney giving
power of attorney to more than ten patent practitioners was inadvertently
filed without a separate paper listing the patent practitioners to be
made of record, the separate listing may be filed subsequently with
a cover letter that identifies the power of attorney that has been previously
filed and states that all the names on the separate listing appear in
the power of attorney, the Office will enter the separate paper listing
rather than requiring applicant to resubmit the documents as required
in the rule.
Q25. (originally Q11) Can the separate paper
list patent practitioners who are not listed on the power of attorney?
A25. No.
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N. Signature Requirements
Q26. (originally Q20) I am filing a power to
inspect. My name is included on a power of attorney listing more than
ten registered patent practitioners, but not on the separate paper listing
the ten practitioners to be made of record. Do I need a new Power of Attorney
to sign the Power to Inspect?
A26. Yes. If you are not included either a Power of Attorney listing
ten or fewer patent practitioners or to a Customer Number, or in a separate
paper pursuant to 37 CFR 1.32(c)(3) that was filed with a Power of Attorney,
then you are not an attorney of record as set forth in 37 CFR 1.33(b)(1).
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Assignments
A. Correction of Assignee (see also Issue of
Patent to Assignee)
Q1. (added 2/11/05) Can I wait to file my request
to correct the assignment data until after the issuance of the patent?
A1. Yes. However, the assignment must have been submitted for recording
prior to issuance of the patent. By filing the request after the issuance
of the patent, patentees will avoid incurring a reduction of patent
term adjustment pursuant to 37 CFR 1.704(c)(10)(for filing a paper after
the mailing of the notice of allowance).
Q2. (added 2/11/05) Can I still file a petition
to the Office of Petitions to correct other errors after the Issue Fee
payment (e.g. order of inventorship, attorney data, inventor name)?
A2. No. 37 CFR 1.312 prohibits amendment of a patent application after
payment of the issue fee. A certificate of correction and payment of
fee set forth in 37 CFR 1.20(a) is required if the nature of the error
permits correction.
Q3. (added 2/11/05) May I file a petition to
withdraw the application from issue under 1.313(c), with a request for
continued examination and a request to correct the assignee’s name
as the submission required by 37 CFR 1.114 to have the record corrected
to include the correct assignee information?
A3. Yes.
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B. Date of Execution
Q4. (originally Q2) The assignment cover sheet
(PTO-1595) used to require both the date of execution of the application
and the date of execution of the assignment. Why was the date of execution
of the application removed? Why was the date of execution of the assignment
not also removed?
A4. The space for the date of execution of the application was removed
from the cover sheet (PTO-1595) because this date was never required
by 37 CFR 3.31 (requirements for a cover sheet). Furthermore, while
the date of execution of the application had been required by 37 CFR
3.21 to be included, in certain situations, on the assignment itself,
37 CFR 3.21 was revised to eliminate that requirement. The requirements
of 37 CFR 3.21 are to assist the Office and others in identifying the
application to which the assignment relates. In the past, when the assignment
was "executed concurrently with, or subsequent to, the execution
of the patent application, but before the patent application was filed"
the Office required the assignment itself to include the date of execution
of the application. This date is no longer a requirement of the assignment
itself because there was confusion about what the date of execution
of the application was, and because the application to which an assignment
relates can be identified without referencing the date of execution
of the application.
The date of execution of the assignment remains a requirement of 37
CFR 3.31(a)(6). This date is a useful date to identify the assignment
document submitted with the cover sheet, so the Office retained the
requirement for the date of execution of the assignment.
Q5. (originally Q1) Will assignment documents
be returned for assignments filed with new applications after June 25,
2004?
A5. After June 25, 2004, applicants should expect to only receive
the Notice of Recordation. The assignment documents submitted for recordation
will not be returned.
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C. Issue of Patent to Assignee (See also Correction
of Assignee)
Q6. (added 2/11/05) I paid the Issue Fee and
submitted my fee transmittal form (PTOL-85B). I subsequently realized
that the Fee Transmittal form listed an incorrect assignee. Can I file
a petition to correct the assignee’s name on the Fee Transmittal
form prior to the patent issuing?
A6. No. Consistent with 37 CFR 1.312, which prohibits amendment of
an application after payment of the issue fee, effective June 25, 2004,
correction of the assignee’s name is by way of filing a request
for certificate of correction and payment of a processing fee.
Section 3.81(b) states “[a]fter payment of the issue fee: Any
request for issuance of an application in the name of the assignee submitted
after the date of payment of the issue fee, and any request for a patent
to be corrected to state the name of the assignee, must state that the
assignment was submitted for recordation as set forth in § 3.11
before issuance of the patent, and must include a request for a certificate
of correction under § 1.323 of this chapter (accompanied by the
fee set forth in § 1.20(a)) and the processing fee set forth in
§ 1.17(i) of this chapter.”
An applicant wishing to avoid a Certificate of Correction may file
a petition to withdraw from issue and a request for continued examination,
along with the submission of the correct assignee name as the submission
required by 37 CFR 1.114. Alternatively, having the patent issue without
an assignee being named may be preferably because assignment information
is often changed after issuance of the patent.
Q7. (added 2/11/05) After payment of the Issue
Fee and submission of the PTOL-85B, can I subsequently add an assignee’s
name so it appears correctly on the front page of the Letters Patent?
A7. No. The Letters Patent will not include the assignment information
if it was not included on the PTOL-85B. Where assignment information
is submitted after payment of the issue fee, the patent document will
not include the assignment information, but the assignment information
will be included in a Certificate of Correction if a Certificate of
Correction is requested. Thus, if applicant wishes the Letters Patent
to issue with the correct assignee information, it is very important
that applicant take care that the PTOL-85B contain the correct information.
Q8. (added 2/11/05) Do I file a petition to
the Office of Petitions to correct the assignee information after payment
of the Issue Fee?
A8. Yes. Any request for correction of assignee data on the patent,
including requests made after the patent issues, should be directed
to:
Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Applicants are reminded that the practice of allowing a patent to
issue to an assignee when a 37 CFR 3.73(b) statement has been filed,
but an assignment has not been submitted for recordation is discontinued.
See 37 CFR 3.81(a). The assignment must be submitted for recordation
prior to the issuance of the patent as set forth in 37 CFR 3.11 for
a certificate of correction to issue to an assignee.
Q9. (added 2/11/05) I neglected to include the
correct assignee name on the PTOL-85B, and I would like the patent to
reflect the assignee’s name. I filed a petition under 37 CFR 1.183
to waive the requirement of 37 CFR 3.81(a) and to have the assignee data
printed on the patent. How will my pending petition be treated?
A9. The petition will be dismissed. Applicant may file a petition to
withdraw from issue and a request for continued examination to correct
the information if the information cannot be corrected to applicant’s
satisfaction by Certificate of Correction.
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D. Patent Term Adjustment & Papers filed
after Allowance other than Fee(s) Transmittal
Q10. (added 2/11/05) If I file a petition to
issue a patent to the assignee after payment of the issue fee and before
patent grant, will I still incur a reduction of patent term adjustment
pursuant to 37 CFR 1.704(c)(10) for filing a paper after the mailing of
the notice of allowance?
A10. Yes, see 37 CFR 1.704(c)(10).
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E. Recordation of Assignments
Q11. (added 2/11/05) How can I verify that an
assignment has been recorded?
A11. The Office has made patent and trademark assignment records available
over the Internet. Although the copy of a patent assignment document
cannot currently be displayed using http://assignments.uspto.gov/assignments/q?db=pat,
the assignment records on the Internet provide a mechanism to check
if the patent assignment was recorded correctly.
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