Patent Law FAQ

Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:

• Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
• Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
• Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.

The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.

It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.

To learn more:

• Power of Attorney
• Patent Practitioners
• Form PTO/AIA/82
• USPTO Forms

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

What is the difference between a correspondence address and a fee address in USPTO filings?

In USPTO filings, the correspondence address and fee address serve different purposes:

• Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
• Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.

The MPEP clarifies:

The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed. (MPEP 403)

While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

A Customer Number is a USPTO-assigned number that can be used to:

• Designate the correspondence address for a patent application or patent
• Designate the fee address for a patent
• Submit a list of practitioners with power of attorney

According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”

Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

For more information on power of attorney, visit: power of attorney.

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:

• They must be registered and in good standing as a patent agent under Canadian law.
• They must apply for limited recognition to the USPTO Director.
• They can only represent Canadian citizens or residents before the USPTO.
• Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.

As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.

To learn more:

• Canadian patent agents
• USPTO practice
• limited recognition
• patent applications

A ‘person to whom the inventor has assigned or is under an obligation to assign the invention’ refers to an individual or entity that has received rights to the invention through a legal agreement or contract. This concept is important in patent applications filed on or after September 16, 2012, as explained in MPEP 409.05:

Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’

This provision allows assignees or those with a contractual right to the invention to file patent applications, even if they are not the original inventors.

To learn more:

• assignee
• obligation to assign
• patent application
• inventor rights

Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.

The MPEP states: “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.”

To learn more:

• patent practitioner
• representative capacity
• USPTO
• patent application

Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):

“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.’”

To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.

To learn more:

• joint inventors
• refusing inventor
• patent application
• pre-AIA

What happens if an unavailable joint inventor refuses to sign an oath or declaration?

If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):

‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’

The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.

To learn more:

• joint inventor
• oath
• declaration
• refusal to sign
• petition

Yes, a patent application can proceed without all inventors’ signatures under certain circumstances. The MPEP 409.03(d) provides guidance on this matter:

If an inventor is deceased, refuses to execute an application, or cannot be found or reached after diligent effort, the application may be made by the other inventor(s) on behalf of themselves and the non-signing inventor.

To proceed without all signatures, the applicant must:

• File the application on behalf of themselves and the non-signing inventor
• Provide proof of the inventor’s unavailability or refusal
• Submit an oath or declaration by the other inventor(s)
• Include a petition under 37 CFR 1.47

The USPTO will review the evidence and may grant the petition, allowing the application to proceed without the missing signature.

To learn more:

• patent application
• non-signing inventor
• inventor signatures
• USPTO procedure

Can a foreign patent agent with limited recognition represent applicants in all USPTO matters?

No, a foreign patent agent with limited recognition cannot represent applicants in all USPTO matters. The MPEP clearly states that A foreign patent agent granted limited recognition may not represent applicants or parties in trademark matters, ex parte or inter partes appeals to the Patent Trial and Appeal Board, petitions to the Director of the USPTO, disciplinary proceedings, or in any other matter before the Office. (MPEP 402.01) Their representation is strictly limited to the presentation and prosecution of patent applications before the USPTO.

To learn more:

• limited recognition
• foreign patent agents
• scope of practice
• USPTO

MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:

• Assignment: A completed transfer of rights in the invention.
• Agreement to Assign: A promise to transfer rights in the future, often conditional.

For an assignment, MPEP 409.03(f) states:

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”

For an agreement to assign:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”

Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• agreement to assign
• proprietary interest

To learn more:

• 37 CFR 1.47(b)

Can a Canadian patent agent represent U.S. patent applicants before the USPTO?

Yes, a Canadian patent agent can represent U.S. patent applicants before the USPTO under certain conditions. According to MPEP 402.01:

‘The Canadian Intellectual Property Office and the United States Patent and Trademark Office have agreed on a procedure to allow for the reciprocal recognition of patent agents and attorneys registered to practice before their respective Offices.’

This means that registered Canadian patent agents can apply for and be granted limited recognition to represent U.S. patent applicants before the USPTO. However, this recognition is subject to specific conditions and requirements set by the OED Director.

To learn more:

• Canadian patent agent
• USPTO
• limited recognition
• reciprocal recognition

The correspondence address in a patent application is the address where the United States Patent and Trademark Office (USPTO) will send all official communications regarding the application. According to 37 CFR 1.33(a):

“When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.”

This address is crucial for ensuring that applicants receive all necessary information and notifications about their patent application.

To learn more:

• correspondence address
• patent application
• USPTO communication

A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):

See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

The substitute statement can be executed by:

• A legal representative of the deceased or incapacitated inventor
• An assignee or obligated assignee
• A party with sufficient proprietary interest in the invention

This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.

To learn more:

• substitute statement
• deceased inventor
• incapacitated inventor
• patent application
• oath
• declaration

What is the significance of a power of attorney in patent applications?

A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.

To learn more:

• power of attorney
• patent applications
• USPTO
• representative

A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:

‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’

The process typically involves:

• An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
• The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
• If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.

It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.

For more information on juristic entity, visit: juristic entity.

For more information on power of attorney, visit: power of attorney.

For more information on USPTO, visit: USPTO.

Yes, a person can sign patent documents on behalf of a juristic entity, but there are specific requirements:

According to MPEP 402.03: ‘Papers submitted on behalf of juristic entities must be signed by a person having authority to sign for the juristic entity.’

This means:

• The signer must have the legal authority to act on behalf of the entity.
• For corporations, this typically includes officers or agents appointed by the board.
• For partnerships, a partner may sign.
• For universities, an authorized official may sign.

It’s crucial to ensure the signer has proper authorization to avoid potential issues with the patent application.

To learn more:

• juristic entity
• patent documents
• signature authority
• corporate signing

How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?

To revoke a power of attorney in a patent application filed on or after September 16, 2012, you need to follow these steps:

• Submit a new power of attorney form (PTO/AIA/82) or a revocation form (PTO/AIA/83).
• The revocation must be signed by the applicant or patent owner.
• If using form PTO/AIA/82, check the box indicating revocation of all previous powers of attorney.

According to MPEP 402.02(a): “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).”

It’s important to note that the revocation is not retroactive; it only takes effect when received by the USPTO.

To learn more:

• power of attorney
• revocation
• patent application
• USPTO

What is the difference between a principal and an associate power of attorney in patent applications?

In patent applications, there is a distinction between principal and associate powers of attorney:

• Principal Power of Attorney: This is the primary power of attorney granted by the applicant to a patent practitioner or firm.
• Associate Power of Attorney: This is a secondary power of attorney that can be granted by the principal attorney to another practitioner or firm.

According to MPEP 402.02(a):

“A principal attorney or agent may appoint an associate power of attorney to act in a representative capacity. See 37 CFR 1.32(b). An associate power of attorney is a power of attorney given to a second attorney or agent by an already appointed principal patent attorney or agent. The associate power of attorney is given by the principal attorney or agent to the associate attorney or agent, not by the applicant.”

It’s important to note that an associate power of attorney does not replace the principal power of attorney but rather supplements it, allowing for additional representation in the patent application process.

To learn more:

• power of attorney
• principal attorney
• associate attorney
• patent application

Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:

• The application must be filed by the legal representative of the deceased inventor’s estate.
• The legal representative must submit an oath or declaration and any necessary assignments.
• The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.

MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”

It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.

To learn more:

• deceased inventor
• patent application filing
• legal representative
• posthumous patent

When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:

• If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
• The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
• If there are joint inventors, the surviving inventors can continue the prosecution.
• The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.

As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”

To learn more:

• deceased inventor
• patent prosecution
• legal representative
• joint inventors

According to MPEP 409.03(f), various forms of evidence can be submitted as proof of proprietary interest. The section states:

‘Sufficient proprietary interest is shown by an assignment or assignment of the invention to a person who is under an obligation of assignment to the applicant… Other examples of documents which may be submitted to establish proprietary interest are:

• (A) A legal memorandum which explains on the basis of the facts of the case that the person signing the 37 CFR 1.47 oath or declaration is a person who has sufficient proprietary interest in the matter;
• (B) A copy of the contract of employment or of any other contract between the inventor and assignee;
• (C) An affidavit or declaration of the specific facts which support the assignee’s claim of proprietary interest;
• (D) Other evidence which establishes the person’s authority to sign the 37 CFR 1.47 oath or declaration on behalf of and as agent for the inventor.’

These examples provide a range of documents that can be used to demonstrate proprietary interest when an inventor is unwilling or unable to execute the required oath or declaration.

To learn more:

• Evidence of Proprietary Interest
• Patent Application
• MPEP 409.03(f)
• Legal Documents

To learn more:

• MPEP 409.03(f)

When revoking a power of attorney in a situation where there is no practitioner of record, special considerations apply. The MPEP 402.05 states:

‘If a power of attorney is revoked, and a new power of attorney is not promptly filed, then pursuant to 37 CFR 1.33(a) the correspondence address will be changed to that of the inventor(s) or assignee(s) who last provided a correspondence address.’

This means:

• The USPTO will change the correspondence address to that of the inventor(s) or assignee(s).
• The last provided correspondence address by the inventor(s) or assignee(s) will be used.
• All future communications from the USPTO will be sent to this address.
• It’s crucial to provide a new power of attorney or update the correspondence address promptly to ensure receipt of important communications.

To learn more:

• power of attorney
• revocation
• correspondence address
• no practitioner of record

For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.

The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.

Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).

To learn more:

• pre-AIA
• power of attorney
• assignee
• patent application
• revocation

No, this specific requirement does not apply to all patent applications. The MPEP clearly states:

‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’

This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.

To learn more:

• pre-AIA
• AIA
• patent application dates
• 37 CFR 1.47

To learn more:

• 37 CFR 1.47

There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:

• Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
• Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
• Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.

It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.

To learn more:

• power of attorney
• patent application
• America Invents Act
• USPTO forms

Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?

Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:

• The practitioner must submit a request to withdraw.
• The request must comply with 37 CFR 1.36.
• The USPTO must approve the withdrawal.

According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”

It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.

To learn more:

• patent practitioner
• withdrawal
• Application Data Sheet
• ADS

The rights of nonsigning inventors in pre-AIA 37 CFR 1.47 applications are protected through specific provisions in patent law. According to MPEP 409.03(i):

“The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application.”

This means that:

• For applications under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118, the patent must be issued to the inventor, even if they didn’t sign the application.
• For applications under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the nonsigning inventor retains the same rights as if they had joined the application.

These provisions ensure that the nonsigning inventor’s rights to the invention are preserved, regardless of their lack of signature on the original application.

To learn more:

• nonsigning inventor rights
• pre-AIA 37 CFR 1.47
• patent protection
• inventor rights

To learn more:

• pre-AIA 37 CFR 1.47

When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:

“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”

This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.

To learn more:

• power of attorney
• patent practitioners
• revocation
• USPTO procedures

In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:

1. New power of attorney without explicit revocation: “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.”
2. Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
3. Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”

In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.

To learn more:

• power of attorney
• revocation
• pre-AIA
• customer number

Filing a new power of attorney typically revokes all prior powers of attorney. According to MPEP 402.05: 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. This means that the most recently filed power of attorney will control.

To learn more:

• power of attorney
• revocation
• multiple attorneys
• patent application

When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):

When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.

Here’s what happens in this scenario:

• The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
• If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
• If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
• Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
• This requirement continues until the legal representative and living inventors appoint a new representative.

It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.

To learn more:

• joint inventors
• deceased inventor
• patent application
• legal representative
• substitute statement

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

• The Office will not correspond with both an applicant and their attorney/agent.
• The Office will not correspond with more than one attorney/agent.
• If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”

Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”

No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:

A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.

The USPTO takes the following steps to ensure compliance:

• Correspondence will be sent to the applicant or assignee at their address of record.
• If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
• Examiners are instructed not to hold interviews with suspended or excluded practitioners.

For more information on USPTO correspondence, visit: USPTO correspondence.

According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:

“The period for reply to such a notice is normally set at 3 months.”

During this 3-month period, the applicant must take one of the following actions:

• Appoint a new registered patent practitioner
• File a change of correspondence address

It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.

For more information on application abandonment, visit: application abandonment.

For more information on patent practitioner death, visit: patent practitioner death.

For more information on response time, visit: response time.

For more information on USPTO notification, visit: USPTO notification.

When a new power of attorney is filed, it generally revokes all prior powers of attorney. MPEP 402.05(a) provides several scenarios:

• If a new power of attorney is filed without explicitly revoking prior ones, it will be treated as a revocation of the original power of attorney.
• If an assignee files a new power of attorney, it revokes and replaces the original power of attorney filed by the applicant.
• If a power of attorney is given to practitioners associated with a Customer Number, and a second power of attorney is later received for a different Customer Number, the second one will replace the first.

The MPEP states:

In all of these situations, the most recently filed power of attorney will control.

This means that the latest power of attorney filed will take precedence over any previously filed ones.

To learn more:

• power of attorney
• revocation
• new filing
• Customer Number

Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:

‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’

To revoke a power of attorney:

• File a new power of attorney form (PTO/AIA/82) with the USPTO.
• The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
• Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
• Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.

It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.

For more information on power of attorney, visit: power of attorney.

For more information on pro se, visit: pro se.

For more information on revocation, visit: revocation.

For more information on USPTO, visit: USPTO.

Can a withdrawn attorney continue to receive Office communications for a patent application?

No, a withdrawn attorney should not continue to receive Office communications for a patent application. The MPEP 402.06 clearly states:

“An attorney or agent withdrawing from an application who wishes to cease receiving copies of communications from the Office must submit a request that the correspondence cease.”

This means that unless the withdrawn attorney explicitly requests to stop receiving communications, they may continue to receive them. However, it’s important to note that the withdrawn attorney is no longer authorized to act on behalf of the application. To ensure proper handling of the application, the withdrawn attorney should request that correspondence cease, and the applicant or new representative should update the correspondence address with the USPTO.

To learn more:

• withdrawn attorney
• Office communications
• patent application

To verify if someone is authorized to conduct business with the USPTO for a patent application filed after September 16, 2012, you can follow these steps:

• Check if the person is listed as the applicant or an assignee
• Verify if they are a registered patent practitioner
• Look for a power of attorney or authorization of agent document
• Confirm if they are named as an inventor in the application

The USPTO maintains specific rules about who can correspond regarding patent applications. As stated in MPEP 403.01(a):

For applications filed on or after September 16, 2012, … the applicant’s or patent owner’s correspondence address … is the correspondence address of the patent practitioner appointed in a power of attorney or authorization of agent, or if no practitioner is appointed, the correspondence address of the applicant or patent owner.

If you’re unsure, it’s best to contact the USPTO directly for clarification.

To learn more:

• USPTO
• patent application
• authorization
• correspondence

A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:

‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’

The process typically involves:

• An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
• The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
• If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.

It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.

For more information on juristic entity, visit: juristic entity.

For more information on power of attorney, visit: power of attorney.

For more information on USPTO, visit: USPTO.

Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:

‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’

To revoke a power of attorney:

• File a new power of attorney form (PTO/AIA/82) with the USPTO.
• The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
• Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
• Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.

It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.

For more information on power of attorney, visit: power of attorney.

For more information on pro se, visit: pro se.

For more information on revocation, visit: revocation.

For more information on USPTO, visit: USPTO.

What is the difference between a correspondence address and a fee address in USPTO filings?

In USPTO filings, the correspondence address and fee address serve different purposes:

• Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
• Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.

The MPEP clarifies:

The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed. (MPEP 403)

While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

A Customer Number is a USPTO-assigned number that can be used to:

• Designate the correspondence address for a patent application or patent
• Designate the fee address for a patent
• Submit a list of practitioners with power of attorney

According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”

Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

For more information on power of attorney, visit: power of attorney.

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

• The Office will not correspond with both an applicant and their attorney/agent.
• The Office will not correspond with more than one attorney/agent.
• If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”

Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”

According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:

“The period for reply to such a notice is normally set at 3 months.”

During this 3-month period, the applicant must take one of the following actions:

• Appoint a new registered patent practitioner
• File a change of correspondence address

It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.

For more information on application abandonment, visit: application abandonment.

For more information on patent practitioner death, visit: patent practitioner death.

For more information on response time, visit: response time.

For more information on USPTO notification, visit: USPTO notification.

No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:

A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.

The USPTO takes the following steps to ensure compliance:

• Correspondence will be sent to the applicant or assignee at their address of record.
• If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
• Examiners are instructed not to hold interviews with suspended or excluded practitioners.

For more information on USPTO correspondence, visit: USPTO correspondence.

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:

• Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
• Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
• Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.

The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.

It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.

To learn more:

• Power of Attorney
• Patent Practitioners
• Form PTO/AIA/82
• USPTO Forms

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

What is the difference between a correspondence address and a fee address in USPTO filings?

In USPTO filings, the correspondence address and fee address serve different purposes:

• Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
• Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.

The MPEP clarifies:

The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed. (MPEP 403)

While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

A Customer Number is a USPTO-assigned number that can be used to:

• Designate the correspondence address for a patent application or patent
• Designate the fee address for a patent
• Submit a list of practitioners with power of attorney

According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”

Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

For more information on power of attorney, visit: power of attorney.

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:

• They must be registered and in good standing as a patent agent under Canadian law.
• They must apply for limited recognition to the USPTO Director.
• They can only represent Canadian citizens or residents before the USPTO.
• Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.

As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.

To learn more:

• Canadian patent agents
• USPTO practice
• limited recognition
• patent applications

A ‘person to whom the inventor has assigned or is under an obligation to assign the invention’ refers to an individual or entity that has received rights to the invention through a legal agreement or contract. This concept is important in patent applications filed on or after September 16, 2012, as explained in MPEP 409.05:

Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’

This provision allows assignees or those with a contractual right to the invention to file patent applications, even if they are not the original inventors.

To learn more:

• assignee
• obligation to assign
• patent application
• inventor rights

Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.

The MPEP states: “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.”

To learn more:

• patent practitioner
• representative capacity
• USPTO
• patent application

Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):

“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.’”

To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.

To learn more:

• joint inventors
• refusing inventor
• patent application
• pre-AIA

What happens if an unavailable joint inventor refuses to sign an oath or declaration?

If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):

‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’

The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.

To learn more:

• joint inventor
• oath
• declaration
• refusal to sign
• petition

Yes, a patent application can proceed without all inventors’ signatures under certain circumstances. The MPEP 409.03(d) provides guidance on this matter:

If an inventor is deceased, refuses to execute an application, or cannot be found or reached after diligent effort, the application may be made by the other inventor(s) on behalf of themselves and the non-signing inventor.

To proceed without all signatures, the applicant must:

• File the application on behalf of themselves and the non-signing inventor
• Provide proof of the inventor’s unavailability or refusal
• Submit an oath or declaration by the other inventor(s)
• Include a petition under 37 CFR 1.47

The USPTO will review the evidence and may grant the petition, allowing the application to proceed without the missing signature.

To learn more:

• patent application
• non-signing inventor
• inventor signatures
• USPTO procedure

Can a foreign patent agent with limited recognition represent applicants in all USPTO matters?

No, a foreign patent agent with limited recognition cannot represent applicants in all USPTO matters. The MPEP clearly states that A foreign patent agent granted limited recognition may not represent applicants or parties in trademark matters, ex parte or inter partes appeals to the Patent Trial and Appeal Board, petitions to the Director of the USPTO, disciplinary proceedings, or in any other matter before the Office. (MPEP 402.01) Their representation is strictly limited to the presentation and prosecution of patent applications before the USPTO.

To learn more:

• limited recognition
• foreign patent agents
• scope of practice
• USPTO

MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:

• Assignment: A completed transfer of rights in the invention.
• Agreement to Assign: A promise to transfer rights in the future, often conditional.

For an assignment, MPEP 409.03(f) states:

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”

For an agreement to assign:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”

Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• agreement to assign
• proprietary interest

To learn more:

• 37 CFR 1.47(b)

Can a Canadian patent agent represent U.S. patent applicants before the USPTO?

Yes, a Canadian patent agent can represent U.S. patent applicants before the USPTO under certain conditions. According to MPEP 402.01:

‘The Canadian Intellectual Property Office and the United States Patent and Trademark Office have agreed on a procedure to allow for the reciprocal recognition of patent agents and attorneys registered to practice before their respective Offices.’

This means that registered Canadian patent agents can apply for and be granted limited recognition to represent U.S. patent applicants before the USPTO. However, this recognition is subject to specific conditions and requirements set by the OED Director.

To learn more:

• Canadian patent agent
• USPTO
• limited recognition
• reciprocal recognition

The correspondence address in a patent application is the address where the United States Patent and Trademark Office (USPTO) will send all official communications regarding the application. According to 37 CFR 1.33(a):

“When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.”

This address is crucial for ensuring that applicants receive all necessary information and notifications about their patent application.

To learn more:

• correspondence address
• patent application
• USPTO communication

A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):

See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

The substitute statement can be executed by:

• A legal representative of the deceased or incapacitated inventor
• An assignee or obligated assignee
• A party with sufficient proprietary interest in the invention

This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.

To learn more:

• substitute statement
• deceased inventor
• incapacitated inventor
• patent application
• oath
• declaration

What is the significance of a power of attorney in patent applications?

A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.

To learn more:

• power of attorney
• patent applications
• USPTO
• representative

A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:

‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’

The process typically involves:

• An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
• The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
• If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.

It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.

For more information on juristic entity, visit: juristic entity.

For more information on power of attorney, visit: power of attorney.

For more information on USPTO, visit: USPTO.

Yes, a person can sign patent documents on behalf of a juristic entity, but there are specific requirements:

According to MPEP 402.03: ‘Papers submitted on behalf of juristic entities must be signed by a person having authority to sign for the juristic entity.’

This means:

• The signer must have the legal authority to act on behalf of the entity.
• For corporations, this typically includes officers or agents appointed by the board.
• For partnerships, a partner may sign.
• For universities, an authorized official may sign.

It’s crucial to ensure the signer has proper authorization to avoid potential issues with the patent application.

To learn more:

• juristic entity
• patent documents
• signature authority
• corporate signing

How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?

To revoke a power of attorney in a patent application filed on or after September 16, 2012, you need to follow these steps:

• Submit a new power of attorney form (PTO/AIA/82) or a revocation form (PTO/AIA/83).
• The revocation must be signed by the applicant or patent owner.
• If using form PTO/AIA/82, check the box indicating revocation of all previous powers of attorney.

According to MPEP 402.02(a): “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).”

It’s important to note that the revocation is not retroactive; it only takes effect when received by the USPTO.

To learn more:

• power of attorney
• revocation
• patent application
• USPTO

What is the difference between a principal and an associate power of attorney in patent applications?

In patent applications, there is a distinction between principal and associate powers of attorney:

• Principal Power of Attorney: This is the primary power of attorney granted by the applicant to a patent practitioner or firm.
• Associate Power of Attorney: This is a secondary power of attorney that can be granted by the principal attorney to another practitioner or firm.

According to MPEP 402.02(a):

“A principal attorney or agent may appoint an associate power of attorney to act in a representative capacity. See 37 CFR 1.32(b). An associate power of attorney is a power of attorney given to a second attorney or agent by an already appointed principal patent attorney or agent. The associate power of attorney is given by the principal attorney or agent to the associate attorney or agent, not by the applicant.”

It’s important to note that an associate power of attorney does not replace the principal power of attorney but rather supplements it, allowing for additional representation in the patent application process.

To learn more:

• power of attorney
• principal attorney
• associate attorney
• patent application

Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:

• The application must be filed by the legal representative of the deceased inventor’s estate.
• The legal representative must submit an oath or declaration and any necessary assignments.
• The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.

MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”

It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.

To learn more:

• deceased inventor
• patent application filing
• legal representative
• posthumous patent

When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:

• If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
• The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
• If there are joint inventors, the surviving inventors can continue the prosecution.
• The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.

As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”

To learn more:

• deceased inventor
• patent prosecution
• legal representative
• joint inventors

According to MPEP 409.03(f), various forms of evidence can be submitted as proof of proprietary interest. The section states:

‘Sufficient proprietary interest is shown by an assignment or assignment of the invention to a person who is under an obligation of assignment to the applicant… Other examples of documents which may be submitted to establish proprietary interest are:

• (A) A legal memorandum which explains on the basis of the facts of the case that the person signing the 37 CFR 1.47 oath or declaration is a person who has sufficient proprietary interest in the matter;
• (B) A copy of the contract of employment or of any other contract between the inventor and assignee;
• (C) An affidavit or declaration of the specific facts which support the assignee’s claim of proprietary interest;
• (D) Other evidence which establishes the person’s authority to sign the 37 CFR 1.47 oath or declaration on behalf of and as agent for the inventor.’

These examples provide a range of documents that can be used to demonstrate proprietary interest when an inventor is unwilling or unable to execute the required oath or declaration.

To learn more:

• Evidence of Proprietary Interest
• Patent Application
• MPEP 409.03(f)
• Legal Documents

To learn more:

• MPEP 409.03(f)

When revoking a power of attorney in a situation where there is no practitioner of record, special considerations apply. The MPEP 402.05 states:

‘If a power of attorney is revoked, and a new power of attorney is not promptly filed, then pursuant to 37 CFR 1.33(a) the correspondence address will be changed to that of the inventor(s) or assignee(s) who last provided a correspondence address.’

This means:

• The USPTO will change the correspondence address to that of the inventor(s) or assignee(s).
• The last provided correspondence address by the inventor(s) or assignee(s) will be used.
• All future communications from the USPTO will be sent to this address.
• It’s crucial to provide a new power of attorney or update the correspondence address promptly to ensure receipt of important communications.

To learn more:

• power of attorney
• revocation
• correspondence address
• no practitioner of record

For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.

The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.

Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).

To learn more:

• pre-AIA
• power of attorney
• assignee
• patent application
• revocation

No, this specific requirement does not apply to all patent applications. The MPEP clearly states:

‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’

This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.

To learn more:

• pre-AIA
• AIA
• patent application dates
• 37 CFR 1.47

To learn more:

• 37 CFR 1.47

There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:

• Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
• Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
• Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.

It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.

To learn more:

• power of attorney
• patent application
• America Invents Act
• USPTO forms

Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?

Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:

• The practitioner must submit a request to withdraw.
• The request must comply with 37 CFR 1.36.
• The USPTO must approve the withdrawal.

According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”

It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.

To learn more:

• patent practitioner
• withdrawal
• Application Data Sheet
• ADS

The rights of nonsigning inventors in pre-AIA 37 CFR 1.47 applications are protected through specific provisions in patent law. According to MPEP 409.03(i):

“The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application.”

This means that:

• For applications under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118, the patent must be issued to the inventor, even if they didn’t sign the application.
• For applications under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the nonsigning inventor retains the same rights as if they had joined the application.

These provisions ensure that the nonsigning inventor’s rights to the invention are preserved, regardless of their lack of signature on the original application.

To learn more:

• nonsigning inventor rights
• pre-AIA 37 CFR 1.47
• patent protection
• inventor rights

To learn more:

• pre-AIA 37 CFR 1.47

When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:

“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”

This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.

To learn more:

• power of attorney
• patent practitioners
• revocation
• USPTO procedures

In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:

1. New power of attorney without explicit revocation: “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.”
2. Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
3. Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”

In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.

To learn more:

• power of attorney
• revocation
• pre-AIA
• customer number

Filing a new power of attorney typically revokes all prior powers of attorney. According to MPEP 402.05: 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. This means that the most recently filed power of attorney will control.

To learn more:

• power of attorney
• revocation
• multiple attorneys
• patent application

When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):

When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.

Here’s what happens in this scenario:

• The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
• If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
• If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
• Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
• This requirement continues until the legal representative and living inventors appoint a new representative.

It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.

To learn more:

• joint inventors
• deceased inventor
• patent application
• legal representative
• substitute statement

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

• The Office will not correspond with both an applicant and their attorney/agent.
• The Office will not correspond with more than one attorney/agent.
• If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”

Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”

No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:

A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.

The USPTO takes the following steps to ensure compliance:

• Correspondence will be sent to the applicant or assignee at their address of record.
• If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
• Examiners are instructed not to hold interviews with suspended or excluded practitioners.

For more information on USPTO correspondence, visit: USPTO correspondence.

According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:

“The period for reply to such a notice is normally set at 3 months.”

During this 3-month period, the applicant must take one of the following actions:

• Appoint a new registered patent practitioner
• File a change of correspondence address

It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.

For more information on application abandonment, visit: application abandonment.

For more information on patent practitioner death, visit: patent practitioner death.

For more information on response time, visit: response time.

For more information on USPTO notification, visit: USPTO notification.

When a new power of attorney is filed, it generally revokes all prior powers of attorney. MPEP 402.05(a) provides several scenarios:

• If a new power of attorney is filed without explicitly revoking prior ones, it will be treated as a revocation of the original power of attorney.
• If an assignee files a new power of attorney, it revokes and replaces the original power of attorney filed by the applicant.
• If a power of attorney is given to practitioners associated with a Customer Number, and a second power of attorney is later received for a different Customer Number, the second one will replace the first.

The MPEP states:

In all of these situations, the most recently filed power of attorney will control.

This means that the latest power of attorney filed will take precedence over any previously filed ones.

To learn more:

• power of attorney
• revocation
• new filing
• Customer Number

Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:

‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’

To revoke a power of attorney:

• File a new power of attorney form (PTO/AIA/82) with the USPTO.
• The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
• Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
• Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.

It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.

For more information on power of attorney, visit: power of attorney.

For more information on pro se, visit: pro se.

For more information on revocation, visit: revocation.

For more information on USPTO, visit: USPTO.

Can a withdrawn attorney continue to receive Office communications for a patent application?

No, a withdrawn attorney should not continue to receive Office communications for a patent application. The MPEP 402.06 clearly states:

“An attorney or agent withdrawing from an application who wishes to cease receiving copies of communications from the Office must submit a request that the correspondence cease.”

This means that unless the withdrawn attorney explicitly requests to stop receiving communications, they may continue to receive them. However, it’s important to note that the withdrawn attorney is no longer authorized to act on behalf of the application. To ensure proper handling of the application, the withdrawn attorney should request that correspondence cease, and the applicant or new representative should update the correspondence address with the USPTO.

To learn more:

• withdrawn attorney
• Office communications
• patent application

To verify if someone is authorized to conduct business with the USPTO for a patent application filed after September 16, 2012, you can follow these steps:

• Check if the person is listed as the applicant or an assignee
• Verify if they are a registered patent practitioner
• Look for a power of attorney or authorization of agent document
• Confirm if they are named as an inventor in the application

The USPTO maintains specific rules about who can correspond regarding patent applications. As stated in MPEP 403.01(a):

For applications filed on or after September 16, 2012, … the applicant’s or patent owner’s correspondence address … is the correspondence address of the patent practitioner appointed in a power of attorney or authorization of agent, or if no practitioner is appointed, the correspondence address of the applicant or patent owner.

If you’re unsure, it’s best to contact the USPTO directly for clarification.

To learn more:

• USPTO
• patent application
• authorization
• correspondence

Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:

• Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
• Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
• Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.

The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.

It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.

To learn more:

• Power of Attorney
• Patent Practitioners
• Form PTO/AIA/82
• USPTO Forms

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

What is the difference between a correspondence address and a fee address in USPTO filings?

In USPTO filings, the correspondence address and fee address serve different purposes:

• Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
• Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.

The MPEP clarifies:

The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed. (MPEP 403)

While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

A Customer Number is a USPTO-assigned number that can be used to:

• Designate the correspondence address for a patent application or patent
• Designate the fee address for a patent
• Submit a list of practitioners with power of attorney

According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”

Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.

For more information on Correspondence Address, visit: Correspondence Address.

For more information on Customer Number, visit: Customer Number.

For more information on Fee Address, visit: Fee Address.

For more information on power of attorney, visit: power of attorney.

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:

• They must be registered and in good standing as a patent agent under Canadian law.
• They must apply for limited recognition to the USPTO Director.
• They can only represent Canadian citizens or residents before the USPTO.
• Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.

As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.

To learn more:

• Canadian patent agents
• USPTO practice
• limited recognition
• patent applications

A ‘person to whom the inventor has assigned or is under an obligation to assign the invention’ refers to an individual or entity that has received rights to the invention through a legal agreement or contract. This concept is important in patent applications filed on or after September 16, 2012, as explained in MPEP 409.05:

Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’

This provision allows assignees or those with a contractual right to the invention to file patent applications, even if they are not the original inventors.

To learn more:

• assignee
• obligation to assign
• patent application
• inventor rights

Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.

The MPEP states: “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.”

To learn more:

• patent practitioner
• representative capacity
• USPTO
• patent application

Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):

“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.’”

To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.

To learn more:

• joint inventors
• refusing inventor
• patent application
• pre-AIA

What happens if an unavailable joint inventor refuses to sign an oath or declaration?

If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):

‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’

The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.

To learn more:

• joint inventor
• oath
• declaration
• refusal to sign
• petition

Yes, a patent application can proceed without all inventors’ signatures under certain circumstances. The MPEP 409.03(d) provides guidance on this matter:

If an inventor is deceased, refuses to execute an application, or cannot be found or reached after diligent effort, the application may be made by the other inventor(s) on behalf of themselves and the non-signing inventor.

To proceed without all signatures, the applicant must:

• File the application on behalf of themselves and the non-signing inventor
• Provide proof of the inventor’s unavailability or refusal
• Submit an oath or declaration by the other inventor(s)
• Include a petition under 37 CFR 1.47

The USPTO will review the evidence and may grant the petition, allowing the application to proceed without the missing signature.

To learn more:

• patent application
• non-signing inventor
• inventor signatures
• USPTO procedure

Can a foreign patent agent with limited recognition represent applicants in all USPTO matters?

No, a foreign patent agent with limited recognition cannot represent applicants in all USPTO matters. The MPEP clearly states that A foreign patent agent granted limited recognition may not represent applicants or parties in trademark matters, ex parte or inter partes appeals to the Patent Trial and Appeal Board, petitions to the Director of the USPTO, disciplinary proceedings, or in any other matter before the Office. (MPEP 402.01) Their representation is strictly limited to the presentation and prosecution of patent applications before the USPTO.

To learn more:

• limited recognition
• foreign patent agents
• scope of practice
• USPTO

MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:

• Assignment: A completed transfer of rights in the invention.
• Agreement to Assign: A promise to transfer rights in the future, often conditional.

For an assignment, MPEP 409.03(f) states:

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”

For an agreement to assign:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”

Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• agreement to assign
• proprietary interest

To learn more:

• 37 CFR 1.47(b)

Can a Canadian patent agent represent U.S. patent applicants before the USPTO?

Yes, a Canadian patent agent can represent U.S. patent applicants before the USPTO under certain conditions. According to MPEP 402.01:

‘The Canadian Intellectual Property Office and the United States Patent and Trademark Office have agreed on a procedure to allow for the reciprocal recognition of patent agents and attorneys registered to practice before their respective Offices.’

This means that registered Canadian patent agents can apply for and be granted limited recognition to represent U.S. patent applicants before the USPTO. However, this recognition is subject to specific conditions and requirements set by the OED Director.

To learn more:

• Canadian patent agent
• USPTO
• limited recognition
• reciprocal recognition

The correspondence address in a patent application is the address where the United States Patent and Trademark Office (USPTO) will send all official communications regarding the application. According to 37 CFR 1.33(a):

“When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.”

This address is crucial for ensuring that applicants receive all necessary information and notifications about their patent application.

To learn more:

• correspondence address
• patent application
• USPTO communication

A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):

See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

The substitute statement can be executed by:

• A legal representative of the deceased or incapacitated inventor
• An assignee or obligated assignee
• A party with sufficient proprietary interest in the invention

This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.

To learn more:

• substitute statement
• deceased inventor
• incapacitated inventor
• patent application
• oath
• declaration

What is the significance of a power of attorney in patent applications?

A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.

To learn more:

• power of attorney
• patent applications
• USPTO
• representative

A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:

‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’

The process typically involves:

• An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
• The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
• If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.

It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.

For more information on juristic entity, visit: juristic entity.

For more information on power of attorney, visit: power of attorney.

For more information on USPTO, visit: USPTO.

Yes, a person can sign patent documents on behalf of a juristic entity, but there are specific requirements:

According to MPEP 402.03: ‘Papers submitted on behalf of juristic entities must be signed by a person having authority to sign for the juristic entity.’

This means:

• The signer must have the legal authority to act on behalf of the entity.
• For corporations, this typically includes officers or agents appointed by the board.
• For partnerships, a partner may sign.
• For universities, an authorized official may sign.

It’s crucial to ensure the signer has proper authorization to avoid potential issues with the patent application.

To learn more:

• juristic entity
• patent documents
• signature authority
• corporate signing

How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?

To revoke a power of attorney in a patent application filed on or after September 16, 2012, you need to follow these steps:

• Submit a new power of attorney form (PTO/AIA/82) or a revocation form (PTO/AIA/83).
• The revocation must be signed by the applicant or patent owner.
• If using form PTO/AIA/82, check the box indicating revocation of all previous powers of attorney.

According to MPEP 402.02(a): “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).”

It’s important to note that the revocation is not retroactive; it only takes effect when received by the USPTO.

To learn more:

• power of attorney
• revocation
• patent application
• USPTO

What is the difference between a principal and an associate power of attorney in patent applications?

In patent applications, there is a distinction between principal and associate powers of attorney:

• Principal Power of Attorney: This is the primary power of attorney granted by the applicant to a patent practitioner or firm.
• Associate Power of Attorney: This is a secondary power of attorney that can be granted by the principal attorney to another practitioner or firm.

According to MPEP 402.02(a):

“A principal attorney or agent may appoint an associate power of attorney to act in a representative capacity. See 37 CFR 1.32(b). An associate power of attorney is a power of attorney given to a second attorney or agent by an already appointed principal patent attorney or agent. The associate power of attorney is given by the principal attorney or agent to the associate attorney or agent, not by the applicant.”

It’s important to note that an associate power of attorney does not replace the principal power of attorney but rather supplements it, allowing for additional representation in the patent application process.

To learn more:

• power of attorney
• principal attorney
• associate attorney
• patent application

Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:

• The application must be filed by the legal representative of the deceased inventor’s estate.
• The legal representative must submit an oath or declaration and any necessary assignments.
• The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.

MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”

It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.

To learn more:

• deceased inventor
• patent application filing
• legal representative
• posthumous patent

When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:

• If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
• The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
• If there are joint inventors, the surviving inventors can continue the prosecution.
• The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.

As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”

To learn more:

• deceased inventor
• patent prosecution
• legal representative
• joint inventors

According to MPEP 409.03(f), various forms of evidence can be submitted as proof of proprietary interest. The section states:

‘Sufficient proprietary interest is shown by an assignment or assignment of the invention to a person who is under an obligation of assignment to the applicant… Other examples of documents which may be submitted to establish proprietary interest are:

• (A) A legal memorandum which explains on the basis of the facts of the case that the person signing the 37 CFR 1.47 oath or declaration is a person who has sufficient proprietary interest in the matter;
• (B) A copy of the contract of employment or of any other contract between the inventor and assignee;
• (C) An affidavit or declaration of the specific facts which support the assignee’s claim of proprietary interest;
• (D) Other evidence which establishes the person’s authority to sign the 37 CFR 1.47 oath or declaration on behalf of and as agent for the inventor.’

These examples provide a range of documents that can be used to demonstrate proprietary interest when an inventor is unwilling or unable to execute the required oath or declaration.

To learn more:

• Evidence of Proprietary Interest
• Patent Application
• MPEP 409.03(f)
• Legal Documents

To learn more:

• MPEP 409.03(f)

When revoking a power of attorney in a situation where there is no practitioner of record, special considerations apply. The MPEP 402.05 states:

‘If a power of attorney is revoked, and a new power of attorney is not promptly filed, then pursuant to 37 CFR 1.33(a) the correspondence address will be changed to that of the inventor(s) or assignee(s) who last provided a correspondence address.’

This means:

• The USPTO will change the correspondence address to that of the inventor(s) or assignee(s).
• The last provided correspondence address by the inventor(s) or assignee(s) will be used.
• All future communications from the USPTO will be sent to this address.
• It’s crucial to provide a new power of attorney or update the correspondence address promptly to ensure receipt of important communications.

To learn more:

• power of attorney
• revocation
• correspondence address
• no practitioner of record

For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.

The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.

Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).

To learn more:

• pre-AIA
• power of attorney
• assignee
• patent application
• revocation

No, this specific requirement does not apply to all patent applications. The MPEP clearly states:

‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’

This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.

To learn more:

• pre-AIA
• AIA
• patent application dates
• 37 CFR 1.47

To learn more:

• 37 CFR 1.47

There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:

• Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
• Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
• Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.

It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.

To learn more:

• power of attorney
• patent application
• America Invents Act
• USPTO forms

Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?

Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:

• The practitioner must submit a request to withdraw.
• The request must comply with 37 CFR 1.36.
• The USPTO must approve the withdrawal.

According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”

It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.

To learn more:

• patent practitioner
• withdrawal
• Application Data Sheet
• ADS

The rights of nonsigning inventors in pre-AIA 37 CFR 1.47 applications are protected through specific provisions in patent law. According to MPEP 409.03(i):

“The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application.”

This means that:

• For applications under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118, the patent must be issued to the inventor, even if they didn’t sign the application.
• For applications under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the nonsigning inventor retains the same rights as if they had joined the application.

These provisions ensure that the nonsigning inventor’s rights to the invention are preserved, regardless of their lack of signature on the original application.

To learn more:

• nonsigning inventor rights
• pre-AIA 37 CFR 1.47
• patent protection
• inventor rights

To learn more:

• pre-AIA 37 CFR 1.47

When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:

“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”

This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.

To learn more:

• power of attorney
• patent practitioners
• revocation
• USPTO procedures

In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:

1. New power of attorney without explicit revocation: “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.”
2. Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
3. Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”

In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.

To learn more:

• power of attorney
• revocation
• pre-AIA
• customer number

Filing a new power of attorney typically revokes all prior powers of attorney. According to MPEP 402.05: 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. This means that the most recently filed power of attorney will control.

To learn more:

• power of attorney
• revocation
• multiple attorneys
• patent application

When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):

When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.

Here’s what happens in this scenario:

• The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
• If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
• If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
• Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
• This requirement continues until the legal representative and living inventors appoint a new representative.

It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.

To learn more:

• joint inventors
• deceased inventor
• patent application
• legal representative
• substitute statement

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

• The Office will not correspond with both an applicant and their attorney/agent.
• The Office will not correspond with more than one attorney/agent.
• If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”

Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”

No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:

A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.

The USPTO takes the following steps to ensure compliance:

• Correspondence will be sent to the applicant or assignee at their address of record.
• If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
• Examiners are instructed not to hold interviews with suspended or excluded practitioners.

For more information on USPTO correspondence, visit: USPTO correspondence.

According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:

“The period for reply to such a notice is normally set at 3 months.”

During this 3-month period, the applicant must take one of the following actions:

• Appoint a new registered patent practitioner
• File a change of correspondence address

It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.

For more information on application abandonment, visit: application abandonment.

For more information on patent practitioner death, visit: patent practitioner death.

For more information on response time, visit: response time.

For more information on USPTO notification, visit: USPTO notification.

When a new power of attorney is filed, it generally revokes all prior powers of attorney. MPEP 402.05(a) provides several scenarios:

• If a new power of attorney is filed without explicitly revoking prior ones, it will be treated as a revocation of the original power of attorney.
• If an assignee files a new power of attorney, it revokes and replaces the original power of attorney filed by the applicant.
• If a power of attorney is given to practitioners associated with a Customer Number, and a second power of attorney is later received for a different Customer Number, the second one will replace the first.

The MPEP states:

In all of these situations, the most recently filed power of attorney will control.

This means that the latest power of attorney filed will take precedence over any previously filed ones.

To learn more:

• power of attorney
• revocation
• new filing
• Customer Number

Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:

‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’

To revoke a power of attorney:

• File a new power of attorney form (PTO/AIA/82) with the USPTO.
• The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
• Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
• Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.

It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.

For more information on power of attorney, visit: power of attorney.

For more information on pro se, visit: pro se.

For more information on revocation, visit: revocation.

For more information on USPTO, visit: USPTO.

Can a withdrawn attorney continue to receive Office communications for a patent application?

No, a withdrawn attorney should not continue to receive Office communications for a patent application. The MPEP 402.06 clearly states:

“An attorney or agent withdrawing from an application who wishes to cease receiving copies of communications from the Office must submit a request that the correspondence cease.”

This means that unless the withdrawn attorney explicitly requests to stop receiving communications, they may continue to receive them. However, it’s important to note that the withdrawn attorney is no longer authorized to act on behalf of the application. To ensure proper handling of the application, the withdrawn attorney should request that correspondence cease, and the applicant or new representative should update the correspondence address with the USPTO.

To learn more:

• withdrawn attorney
• Office communications
• patent application

To verify if someone is authorized to conduct business with the USPTO for a patent application filed after September 16, 2012, you can follow these steps:

• Check if the person is listed as the applicant or an assignee
• Verify if they are a registered patent practitioner
• Look for a power of attorney or authorization of agent document
• Confirm if they are named as an inventor in the application

The USPTO maintains specific rules about who can correspond regarding patent applications. As stated in MPEP 403.01(a):

For applications filed on or after September 16, 2012, … the applicant’s or patent owner’s correspondence address … is the correspondence address of the patent practitioner appointed in a power of attorney or authorization of agent, or if no practitioner is appointed, the correspondence address of the applicant or patent owner.

If you’re unsure, it’s best to contact the USPTO directly for clarification.

To learn more:

• USPTO
• patent application
• authorization
• correspondence