402 Power of Attorney; Naming Representative
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| 402 |
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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.
I. NAMING REPRESENTATIVE IN A POWER OF ATTORNEY
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.
- Powers of attorney naming firms of attorneys or agents filed in patent applications will not be recognized.
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.
Powers of attorney naming joint inventors, one or more registered individuals, or all registered practitioners associated with a Customer Number, may be made.
Where a power of attorney is given to ten or fewer patent practitioners, the name and registration number of each patent practitioner is required 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.
Papers filed on the behalf of a juristic entity applicant in an application filed on or after September 16, 2012 may only be signed by a registered practitioner.
II. REGISTERED PRACTITIONERS
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
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.
III. INEFFECTIVE POWER OF ATTORNEY
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.
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| 402.02 |
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I. General Requirements for Powers of Attorney
For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent 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.
“Applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent.
- If a person is applying for a patent, 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 who is not the applicant may sign a power of attorney only if the assignee becomes the applicant.
The applicant for patent is all parties identified as the applicant under 37 CFR 1.42(a).
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 on behalf of all of the joint inventor-applicants.
- The power of attorney must be signed by parties identified as the applicant in order to be effective.
II. Powers of Attorney in Continuing Applications
A copy of the power of attorney from the prior application must be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).
- 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.
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I. General Requirements for Powers of Attorney
For applications filed before September 16, 2012, a power of attorney must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
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.
II. Powers of Attorney in Continuing Applications
When filing a continuation or divisional application with a copy of a declaration from the parent application, 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.
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Every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party.
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A person acting in a representative capacity may not sign:
- a power of attorney,
- a document granting access to an application,
- a change of correspondence address,
- a terminal disclaimer,or
- a request for an express abandonment without filing a continuing application.
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:
- a power of attorney has not been appointed and
- the patent practitioner was named in the application transmittal papers.
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:
- an executed oath or declaration has not been filed and
- the patent practitioner was named in the application transmittal papers.
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| 402.05 |
All of the Office’s power of attorney forms include revocation language on them and will revoke any existing power of attorney.
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When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.
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When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.
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| 402.06 |
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(b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.
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| 402.07 |
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(a) Any individual not registered under § 11.6 may, upon a showing of circumstances which 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 while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
(b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) 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 83.1 bis and 90.1.
(a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.
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| 402.10 |
The following are examples of who must sign replies when there is more than one person responsible for prosecuting the application:
- If coinventor A has given a power of attorney to a patent practitioner and coinventor B has not, replies must be signed by the patent practitioner of A and by coinventor B.
- If coinventors A and B have each appointed their own patent practitioner, replies must be signed by both patent practitioners.
Papers giving a power of attorney in an application will not be accepted by the Office when signed by less than all of the applicants or owners of the application unless they are accompanied by a petition and the proper fee demonstrating the extraordinary situation where justice requires waiver of the requirement.
» 403 Correspondence — With Whom Held; Customer Number Practice
