An applicant for patent may file and prosecute the applicant's own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant. The Office cannot aid in the selection of a patent practitioner.
An applicant who is a juristic entity must be represented by a patent practitioner. An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office. See 37 CFR 1.31. In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2). See 37 CFR 1.4(d)(4). See also MPEP §§ 402.03 and 410.
If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent, but the Office cannot aid in selecting a patent practitioner. A listing of registered patent attorneys and agents is available at www.uspto.gov/FindPatentAttorney. Applicants may also obtain a list of registered patent practitioners located in their area by writing to the Office of Enrollment and Discipline (OED) at Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. The examiner should not suggest that applicant employ a patent practitioner if the application appears to contain no patentable subject matter. It is suggested that form paragraph 4.10 be incorporated in an Office action if the use of a patent practitioner is considered desirable and if patentable subject matter exists in the application.
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at www.uspto.gov/FindPatentAttorney. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
The examiner should not suggest that applicant employ an attorney or agent if the application appears to contain no patentable subject matter.
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· (c) A power of attorney may only name as representative:
· (1) One or more joint inventors (§ 1.45 );
· (2) Those registered patent practitioners associated with a Customer Number;
· (3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. 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 in the application or patent to which the power of attorney is directed.
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An applicant may give a power of attorney to one or more patent practitioners or one or more joint inventors. A power of attorney to a joint inventor will be recognized even though the one to whom it is given is not a registered practitioner. See 37 CFR 1.31 and 37 CFR 1.32(c)(1).
Powers of attorney naming firms of attorneys or agents filed in patent applications will not be recognized. Furthermore, a power of attorney that names more than ten patent practitioners will only be entered if Customer Number practice is used or if such power of attorney is 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 in the application or patent to which the power of attorney is directed. If a power of attorney is not entered because more than ten patent practitioners were named, a copy of the power of attorney should be refiled with the separate paper as set forth in 37 CFR 1.32(c)(3).
Powers of attorney naming joint inventors, one or more registered individuals, or all registered practitioners associated with a Customer Number, may be made. See MPEP § 403 for Customer Number practice. Where a power of attorney is given to ten or fewer patent practitioners, 37 CFR 1.32(c)(3) requires the name and registration number of each patent practitioner to be stated in the power of attorney. If the name submitted on the power of attorney does not match the name associated with the registration number provided in the Office of Enrollment and Discipline records for patent practitioners, the person that the Office will recognize as being of record will be the person associated with the registration number provided, because the Office enters the registration number, not the name, when making the practitioner of record. Accordingly, if the wrong registration number is provided, a new power of attorney will be required to correct the error.
See MPEP § 601.03(a) for change of correspondence address in applications filed on or after September 16, 2012; see MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012. See MPEP § 201.06(c), 402.02(a), and 402.02(b) for change in the power of attorney in continuation or divisional applications filed under 37 CFR 1.53(b). See MPEP § 403 for the addition and/or deletion of a practitioner from the list of practitioners associated with a Customer Number. For a representative of a requester of reexamination, see MPEP § 2213.
For a power of attorney to be valid, the attorney or agent appointed must be registered to practice before the U.S. Patent and Trademark Office in accordance with 37 CFR 11.6. Note that under 37 CFR 11.6(c), certain foreigners who are in good standing before the patent office of the country in which they reside and practice may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country.
Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent matters.
When an application for patent is filed accompanied by a power of attorney to a person who is neither registered to practice before the United States Patent and Trademark Office nor named as the inventor or a joint inventor in the application, the Office of Patent Application Processing will send the official filing receipt directly to the first named applicant, together with an explanatory letter. A copy of the letter will be sent to the person named in the power and a copy placed in the file without being given a paper number. The name of the unregistered person will not be added to the list of patent practitioners of record for the application in the Office’s electronic records.
Form paragraph 4.09 may be used to notify applicant that the attorney or agent is not registered.
An examination of this application reveals that applicant has attempted to appoint an attorney or agent who is neither registered to practice before the U.S. Patent and Trademark Office in patent matters nor named as an inventor in the application, contrary to the Code of Federal Regulations, 37 CFR 1.31 and 1.32. Therefore, the appointment is void, ab initio, and the Office will not recognize the appointment. All communications from the Office will be addressed to the first named applicant, unless specific instructions to the contrary are supplied by the applicant(s) for patent or owner(s).
For applications filed before September 16, 2012, in the absence of the appointment of a registered practitioner, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.
While an applicant (other than a juristic entity) may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is, therefore, encouraged to secure the services of a registered patent attorney or agent (i.e., registered to practice before the U.S. Patent and Trademark Office) to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.
The Office cannot aid you in selecting a registered attorney or agent, however, a list of attorneys and agents registered to practice before the U.S. Patent and Trademark Office is available at www.uspto.gov/FindPatentAttorney. For assistance locating this information, contact the Office of Enrollment and Discipline at (571) 272-4097 or call the Inventors Assistance Center toll-free number, 1(800)786-9199.
This form paragraph is to be used ONLY after ensuring that the named representative is not registered with the Office. An inquiry through the Patent Data Portal should be first made and if no listing is given, the Office of Enrollment and Discipline should be contacted to determine the current "recognition" status of the individual named by the applicant in a "power of attorney." If the named individual is NOT registered or otherwise recognized by the Office, the correspondence address of record should be promptly changed to that of the first named applicant unless applicant specifically provides a different "correspondence address." A copy of the Office communication incorporating this form paragraph should also be mailed to the unregistered individual named by the applicant in the "power of attorney."
· (a) Any individual not registered under §11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted to individuals who have passed the examination or to those for whom the examination has been waived while such individual’s application for registration to practice before the Office in patent matters is pending.
· (b) A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.
· (c) An individual not registered under §11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.
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· (a) Only practitioners registered under § 11.6; individuals given limited recognition under § 11.9(a) or (b) or § 11.16; or individuals admitted pro hac vice as provided in § 41.5(a) or 42.10(c) of this chapter are permitted to represent others before the Office in patent matters.
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Only registered practitioners and individuals granted limited recognition are permitted to prosecute patent applications of others before the Office or represent others in patent proceedings before the Office. See 37 CFR 11.10(a). Persons granted limited recognition are considered practitioners under 37 CFR 11.1 and thus permitted to perform the same patent prosecution functions of registered patent agents and registered patent attorneys when prosecuting a specified patent application or specified patent applications. See 37 CFR 11.5(b)(1). This includes the filing of (A) a power of attorney (37 CFR 1.32(b)(4) ), (B) a document granting access to an application (37 CFR 1.14(c) ), (C) a change of correspondence address (37 CFR 1.33(a) ), (D) a terminal disclaimer (37 CFR 1.321(b)(1) ), or (E) a request for an express abandonment (37 CFR 1.138(b) ). However, persons granted limited recognition are still subject to the restrictions expressed in their grant, including temporal, employer, and visa limitations.
If a request for limited recognition under 37 CFR 11.9 accompanies the application, the Office of Patent Application Processing will forward the file to the Director of the Office of Enrollment and Discipline.
See MPEP § 1807 for representation in international applications (PCT) and MPEP § 2911 for representation in international design applications.
For appointment of a power of attorney in applications filed on or after September 16, 2012, see MPEP § 402.02(a). For appointment of a power of attorney in applications filed before September 16, 2012, see MPEP § 402.02(b).
Effective June 25, 2004, the associate power of attorney practice was eliminated. See Revision of Power of Attorney and Assignment Practice, 69 FR 29865 (May 2004). The Office no longer accepts a power of attorney signed by a principal to name an associate power of attorney. Appointment of an associate power of attorney filed on or after June 25, 2004 are not accepted. See also MPEP § 406.
[Editor Note: See MPEP § 402.02(b) for information pertaining to appointment of a power of attorney in an application filed before September 16, 2012.]
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· (b) A power of attorney must:
· (1) Be in writing;
· (2) Name one or more representatives in compliance with paragraph (c) of this section;
· (3) Give the representative power to act on behalf of the principal; and
· (4) Be signed by the applicant for patent (§ 1.42 ) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.
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· (d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
· (1) The power of attorney was granted by the inventor; and
· (2) The continuing application names an inventor who was not named as an inventor in the prior application.
· (e) If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to § 1.34, if applicable.
For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a) ) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application.
Pursuant to 37 CFR 1.42, the word "applicant" refers to the inventor or all of the joint inventors or to the person applying for a patent as provided in 37 CFR 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.45 (joint inventor(s) on behalf of themselves and an omitted inventor) or 1.46 (assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest). Where the applicant is all of the joint inventors under 37 CFR 1.45, one or more of the joint inventor-applicants may be appointed to represent all of the joint inventor-applicants. The power of attorney must be signed by parties identified as the applicant in order to be effective.
As set forth in 37 CFR 1.42(b), if a person is applying for a patent as provided in 37 CFR 1.46, that person (which may be a juristic entity), and not the inventor, is the applicant. In this situation, the Office would not accept a power of attorney from the inventor. An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71. See also MPEP § 325. Persons who otherwise show sufficient proprietary interest in the matter may supply a power of attorney along with a petition under 37 CFR 1.46(b)(2), which power would be effective once the petition is granted.
An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73 ). See MPEP § 325. A patent owner who was not the applicant under 37 CFR 1.46 must appoint any power of attorney in compliance with 37 CFR 3.71 and 3.73. This covers a patent owner in a reissue application who was not the applicant under 37 CFR 1.46 in the application for the original patent, as well as a patent owner in a supplemental examination or reexamination proceeding who was not the applicant under 37 CFR 1.46.
The power of attorney must be signed by someone who is authorized to act on behalf of the assignee-applicant (i.e., a person with a title that carries apparent authority, or a person who includes a statement of authorization to act.). A patent practitioner is not authorized to act on behalf of an assignee simply by existence of authority to prosecute an application.
Pursuant to 37 CFR 1.32(d), a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless: (1) The power of attorney was granted by the inventor; and (2) the continuing application names an inventor who was not named as an inventor in the prior application. Thus 37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application). Additionally, the copy of the power of attorney must comply with 37 CFR 1.32(b) in the continuing application in order to be accepted, meaning that it must be signed by the applicant for patent named in the continuing application.
The following forms, available on the USPTO website at www.uspto.gov/patent/patents-forms, are for use in applications filed on or after September 16, 2012: PTO/AIA/80, PTO/AIA/81, and PTO/AIA/82. Form PTO/AIA/81A may be used in a patent that issued from an application filed on or after September 16, 2012.
PTO/AIA/80
Form PTO/AIA/80 may be used by assignees who either are the named applicant or are becoming the applicant by filing a request to change the applicant under 37 CFR 1.46(c). In either situation, this form must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent). The Form PTO/AIA/80 must be signed by the named assignee or, where the assignee is a juristic entity, by a person who is authorized to act on behalf of the assignee. Where an assignee gives the practitioner specific authority to act on behalf of the assignee (e.g., authority given by organizational resolution), a practitioner may sign the PTO/AIA/80 on behalf of the assignee. Where an assignee is named as the applicant in the patent application, the assignee-applicant can appoint a power of attorney using the PTO/AIA/82 form instead of Form PTO/AIA/80.
PTO/AIA/81
Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by "the applicant," all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney. For example, if the applicant is four joint inventors, A, B, C. and D, and all four wish to appoint inventor-applicant C as having power of attorney, A, B, C and D must all sign a power of attorney that appoints C.
PTO/AIA/82
Form PTO/AIA/82 may be used by the applicant for patent to appoint one or more patent practitioners. The form has three pages, PTO/AIA/82A (Part A), PTO/AIA/82B (Part B), and PTO/AIA/82C (Part C). Part A is a transmittal page used to identify the application (e.g., application number, if known, filing date, first named inventor) to which the power of attorney is directed and must be signed by a proper 37 CFR 1.33(b) party. Part B is the power of attorney and may also specify the correspondence address. Part B must be signed by the applicant. Where there are multiple applicant parties, a power of attorney signed by each party must be submitted, and the powers must make the same appointment. For information about powers of attorney by less than all applicants, see MPEP § 402.10. Part C is an optional page that may be used to appoint up to 10 patent practitioners by name and registration number.
PTO/AIA/82 may be used like a general power of attorney, if desired. For example, where the applicant is a juristic entity assignee, an officer of the company could sign Part B, leaving the optional "Application Number" and "Filing Date" boxes empty, and then the patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A. If Part A or an equivalent is not filed with Part B, then the "Application Number" and "Filing Date" boxes on Part B must be completed to identify the application to which the power is being directed. See 37 CFR 1.5. Note that the "Application Number" and "Filing Date" boxes of Part B may not be filled in by a patent practitioner after Part B has been signed by the applicant (i.e., the form may not be altered once it has been signed).
Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO website.
PTO/AIA/81A
Form PTO/AIA/81A may be used to appoint a power of attorney in a patent resulting from an application filed on or after September 16, 2012 and must be signed by the applicant or the current patent owner. If the form is signed by the current patent owner, compliance with 37 CFR 3.71 and 3.73 is required by filing a Statement Under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent).
[Editor Note: See MPEP § 402.02(a) for information pertaining to appointment of a power of attorney in an application filed on or after September 16, 2012.]
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· (b) A power of attorney must:
· (1) Be in writing;
· (2) Name one or more representatives in compliance with paragraph (c) of this section;
· (3) Give the representative power to act on behalf of the principal; and
· (4) Be signed by the applicant for patent (§ 1.41(b) ) or the assignee of the entire interest of the applicant.
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For applications filed before September 16, 2012, pre-AIA 37 CFR 1.32(b) sets forth that a power of attorney must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
Pursuant to pre-AIA 37 CFR 1.41(b), the word "applicant" refers to the inventor or all of the joint inventors or to the person applying for a patent in place of the inventor under pre-AIA 37 CFR 1.42 (legal representative of deceased inventor), 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.47(a) (joint inventor(s) on behalf of themselves and joint inventor(s) who refuse to join or cannot be reached or found after diligent effort) or 1.47(b) (by assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest whenever all of the inventors refuse to sign or cannot be found or reached after diligent effort). Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides a combined declaration and power of attorney form on the USPTO website.
While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client. Additionally, relationships between an assignee and the inventors may deteriorate. It is not uncommon in these situations for inventors to stop cooperating and in some cases file powers of attorney in an attempt to control prosecution of the application. A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b). See MPEP § 324.
When filing a continuation or divisional application with a copy of a declaration from the parent application in accordance with pre-AIA 37 CFR 1.63(d), applicants are required to identify in the continuation or divisional application any change in power of attorney that occurred after the filing of the parent application. See pre-AIA 37 CFR 1.63(d)(4). The Office suggests doing so by submitting a copy of the most recent power of attorney from the parent application in the continuing application to ensure that the Office recognizes the correct power of attorney.
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms ) should be used for powers of attorney in applications filed before September 16, 2012. Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO website. Form PTO/SB/81A may be used in a patent that issued from an application filed before September 16, 2012.
· (a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.
· (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
· (1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
· (2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
· (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
· (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
· (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
· (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
· (c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
· (1) Striking the offending paper;
· (2) Referring a practitioner’s conduct to the Director of the Office of Enrollment and Discipline for appropriate action;
· (3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
· (4) Affecting the weight given to the offending paper; or
· (5) Terminating the proceedings in the Office.
· (d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
37 CFR 11.18(a) emphasizes that every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party.
37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or non-practitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure. See MPEP § 410. 37 CFR 11.18(d) provides that any practitioner violating the provisions of 37 CFR 11.18 may also be subject to disciplinary action, thus clarifying that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 11.18(c) for violations of 37 CFR 11.18. See also 37 CFR 1.4(d)(4).
The certifications in 37 CFR 11.18(b) apply to all papers filed in the Office, including allegations of improper conduct made by a registered practitioner in any Office proceeding.
When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.
In accordance with 37 CFR 1.34, a paper filed by a registered patent attorney or agent in an application in which he or she is not of record must include his or her name and registration number with his or her signature. Acceptance of papers filed in patent applications and reexamination proceedings by registered attorneys and agents upon a representation that the attorney or agent is authorized to act in a representative capacity is for the purpose of facilitating replies on behalf of applicants in patent applications and, further, to obviate the need for filing powers of attorney in individual applications or patents when there has been a change in composition of law firms or corporate patent staffs.
When a patent practitioner acts in a representative capacity by filing a paper in an application filed on or after September 16, 2012, he or she must be submitting the paper on behalf of all parties identified as the applicant. The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant. For example, where the applicant is three joint inventors who do not agree about how to proceed in the application, a patent practitioner who only represents one of the joint inventors may not file papers in the application to the exclusion of the other joint inventors. Likewise, where there are multiple assignees identified as the applicant, a patent practitioner may not file papers only on behalf of some of the parties.
Powers of attorney by less than all applicants or owners are not accepted by the Office unless a petition under 37 CFR 1.36(a) or 37 CFR 1.183 is granted in the application, and the granted petition results in more than one attorney, agent, applicant or owner prosecuting the application at the same time and signing correspondence. See MPEP § 402.10. Acting in a representative capacity under 37 CFR 1.34 is not a means of prosecuting an application only on behalf of some of the applicant parties.
For an application filed before September 16, 2012, a patent practitioner may act in a representative capacity on behalf of the applicant or the assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73.
See MPEP § 405 for information concerning interviews with a patent practitioner not of record.
Except as noted below, a person acting in a representative capacity may not sign (A) a power of attorney (37 CFR 1.32 ), (B) a document granting access to an application, (C) a change of correspondence address), (D) a terminal disclaimer (37 CFR 1.321(b)(1) ), or (E) a request for an express abandonment without filing a continuing application (37 CFR 1.138(b) ). In an application filed on or after September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) a power of attorney has not been appointed under 37 CFR 1.32(b) and (2) the patent practitioner was named in the application transmittal papers. See 37 CFR 1.14(c) and 1.33(a). In an application filed before September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) an executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed and (2) the patent practitioner was named in the application transmittal papers. See pre-AIA 37 CFR 1.14(c) and pre-AIA 37 CFR 1.33(a).
Revocation of a power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE). Upon revocation of the power of attorney, appropriate notification is sent by the Office. While an application is involved in an interference or derivation proceeding, any power of attorney or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration. See MPEP § 402.08.
See MPEP § 402.05(a) for applicant revocation of powers of attorney in applications filed on or after September 16, 2012. See MPEP § 402.05(b) for applicant revocation of powers of attorney in applications filed before September 16, 2012. See MPEP § 402.07 for assignee revocation of a power of attorney.
All of the Office’s power of attorney forms include revocation language on them and will revoke any existing power of attorney.
· (a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all patent owners in a supplemental examination or reexamination proceeding) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2) ), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33 ) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee may become the applicant under § 1.46(c) and revoke any previous power of attorney and grant a power of attorney as provided in § 1.32(b).
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A power of attorney may be revoked only by the applicant or patent owner. An assignee who is not the applicant may revoke a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance w
