Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 400 - Representative of Applicant or Owner (419)
Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:
- To maintain consistent numbering across editions
- To allow for future expansion of content
- To accommodate planned updates or revisions
- To serve as placeholders for potential new topics or guidance
This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.
In patent applications filed before September 16, 2012, the power of attorney can be signed by either the inventor(s) or the assignee of the entire interest. However, the MPEP recommends that the assignee sign the power of attorney when one exists. As stated in the MPEP:
While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client.
This recommendation aims to avoid potential conflicts and ensure clear representation in cases where the relationship between the assignee and inventors may deteriorate.
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After the USPTO is notified of a patent practitioner’s death, correspondence is sent to two parties:
- The office of the deceased practitioner
- The person who originally appointed the deceased patent practitioner
This dual notification ensures that both the practitioner’s office and the original appointer are aware of ongoing patent matters and can take appropriate action.
Both practitioners and non-practitioners are responsible for ensuring compliance with USPTO signature and certification requirements when filing papers. According to 37 CFR 11.18(b):
“By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—”
This means that anyone submitting papers to the USPTO, including independent inventors, corporate representatives, and patent attorneys, is responsible for ensuring that the submissions meet the signature and certification requirements. Practitioners have additional responsibilities and may face disciplinary action for violations as specified in 37 CFR 11.18(d).
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During interference or derivation proceedings, power of attorney changes are handled by a specific entity within the USPTO. According to MPEP 402.08:
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
This means that the Patent Trial and Appeal Board (PTAB) is responsible for considering and processing any changes to power of attorney during these special proceedings. This differs from the normal procedure for regular patent applications, where such changes would typically be handled by the Office of Patent Application Processing or the examining corps.
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When there’s no attorney of record, the signatories for patent application papers depend on the filing date and the applicant type. For applications filed before September 16, 2012, MPEP § 407 states: “All papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34.”
For applications filed on or after September 16, 2012: “All papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.”
When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:
For applications filed before September 16, 2012:
- All named applicants
- Assignee of record of an undivided part interest, along with named applicants retaining an interest
- Assignee of the entire interest
- A registered patent attorney or agent not of record acting under 37 CFR 1.34
For applications filed on or after September 16, 2012:
- A patent practitioner of record
- A patent practitioner not of record acting under 37 CFR 1.34
- The applicant (except for juristic entity applicants, which require a patent practitioner)
This information is provided in Form Paragraph 4.07 of MPEP § 407.
Who can sign a substitute statement for a deceased or incapacitated inventor?
In cases where an inventor is deceased or legally incapacitated, specific parties are authorized to sign a substitute statement. According to MPEP 409.01(a):
“A substitute statement under 37 CFR 1.64 may be signed by the applicant or an assignee of the entire interest on behalf of a deceased or legally incapacitated inventor.”
The following parties can sign a substitute statement:
- The applicant (if different from the inventor)
- An assignee of the entire interest
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
It’s important to note that the person signing the substitute statement must have the legal authority to act on behalf of the deceased or incapacitated inventor. This ensures that the patent application can proceed even when the original inventor is unable to participate in the process.
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According to MPEP 402.09, applicants in international patent applications can be represented by:
- Attorneys or agents registered to practice before the USPTO
- An applicant appointed as a common representative
- An attorney or agent with the right to practice before the national office where the international application is filed (for specific authorities)
As stated in 37 CFR 1.455(a): Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9).
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According to MPEP 409.01(a), several parties can file a patent application on behalf of a deceased or legally incapacitated inventor:
- Legal representative:
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor.
- Assignee or obligated assignee:
Under 37 CFR 1.46, a person to whom the inventor assigned (‘assignee’), to whom the inventor was under an obligation to assign (‘obligated assignee’), or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of the deceased or legally incapacitated inventor.
- Administrator or executor: These parties can also file an application, but may need to obtain new letters of administration if they have been discharged from their duties.
It’s important to note that proof of authority is not required by the USPTO, but any person acting as a legal representative should ensure they are properly authorized to do so.
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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.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
The regulation states: 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.
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The correspondence address in a patent application can be changed by specific parties as outlined in 37 CFR 1.33(a):
- A patent practitioner of record (37 CFR 1.33(b)(1))
- The applicant (37 CFR 1.33(b)(3))
- Prior to the appointment of any power of attorney, any patent practitioner named in the application transmittal papers who acts in a representative capacity under 37 CFR 1.34
It’s important to note that after a power of attorney has been appointed, a practitioner acting in a representative capacity cannot change the correspondence address until after the patent has issued, and only with proper notice to the patentee or owner.
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Limited recognition for patent matters can be granted to two main categories of individuals:
- Non-registered individuals: As per 37 CFR 11.9(a), individuals not registered under § 11.6 may be granted limited recognition under certain circumstances.
- Nonimmigrant aliens: According to 37 CFR 11.9(b):
A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.
It’s important to note that limited recognition is granted on a case-by-case basis and is subject to specific restrictions and conditions.
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Under pre-AIA 37 CFR 1.47(b), the term ‘person’ is broadly interpreted. The MPEP states that “The word ‘person’ has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation.” This means that both individuals and legal entities can potentially file an application under this provision, provided they meet the other requirements.
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For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.
As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”
According to the MPEP, an examiner can contact the patent practitioner of record in the application for interviews. The MPEP states:
When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
It’s important to note that registered attorneys or agents not of record should not be contacted for certain actions, such as restriction requirements or approval of examiner’s amendments.
A revocation of power of attorney becomes effective on the date it is received by the USPTO, not on the date it is accepted. As stated in MPEP 402.05: Revocation of a power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE).
The Office will send an appropriate notification upon revocation.
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The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:
See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.
This reference to MPEP § 402.03 suggests that there are certain circumstances where an attorney or agent not of record may be allowed to change the correspondence address or grant access to application information. For specific details, it’s recommended to consult MPEP § 402.03 directly.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO procedures, visit: USPTO procedures.
A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:
“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”
However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.
According to MPEP 409.03(d), acceptable evidence to prove inventor unavailability or refusal can include:
- Copies of letters or email messages sent to the inventor requesting their signature
- Returned receipt indicating the inventor’s refusal to accept mail
- Statements from people who have attempted to contact the inventor
- Evidence of the inventor’s mental or physical incapacity
- Evidence of the inventor’s unavailability due to absence
- Other pertinent evidence that demonstrates the inventor’s unavailability or refusal
The MPEP states: ‘The proof of unavailability or refusal will be examined by the Office.’ This means that the USPTO will carefully evaluate the submitted evidence to determine if it sufficiently demonstrates the inventor’s unavailability or refusal.
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The MPEP provides specific guidance on the type of address that should be provided for the nonsigning inventor in pre-AIA 37 CFR 1.47 applications:
‘That address should be the last known address at which the inventor customarily receives mail.’
This typically means providing the most recent address where the inventor is known to receive correspondence. It’s important to provide an address where the USPTO’s communications are most likely to reach the nonsigning inventor.
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When dealing with a nonsigning inventor under pre-AIA 37 CFR 1.47, the following steps should be taken to present application papers:
- Send a copy of the application papers to the last known address of the nonsigning inventor.
- If the inventor is represented by counsel, send the papers to the inventor’s attorney’s address.
- Ensure that the inventor is given the opportunity to review the complete application, unless they have assigned their interest and the assignee has requested otherwise.
The MPEP emphasizes:
‘It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed.’
This process is crucial to establish that a bona fide attempt was made to present the application papers to the nonsigning inventor.
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When terminating representation, a practitioner must take several steps to protect the client’s interests, as outlined in 37 CFR 11.116(d):
- Give reasonable notice to the client
- Allow time for the client to employ other counsel
- Surrender papers and property to which the client is entitled
- Refund any advance payment of fees or expenses that have not been earned or incurred
Additionally, the practitioner must comply with applicable laws requiring notice to or permission from a tribunal when terminating representation, as per 37 CFR 11.116(c).
The USPTO provides forms (PTO/SB/83 or PTO/AIA/83) that include a section for practitioners to certify the completion of these necessary activities. Practitioners can also file a Web-based e-petition for withdrawal.
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When issuing Office actions after being notified of a patent practitioner’s death, the USPTO includes a special notation. The MPEP 406 instructs examiners to add form paragraph 4.03, which states:
“Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.”
This notation informs all parties of the practitioner’s death and the need for new representation.
For more information on Form Paragraph 4.03, visit: Form Paragraph 4.03.
If you need information related to a topic that corresponds to a reserved MPEP section, such as MPEP 404, follow these steps:
- Check other relevant sections of the MPEP that may cover related topics
- Consult the USPTO’s official website for guidance documents and notices
- Review recent patent laws and regulations that may address the topic
- Contact the USPTO’s Patent Electronic Business Center for assistance
- Consult with a registered patent attorney or agent for professional advice
Remember that reserved sections do not contain any official information, so it’s crucial to seek guidance from active, authoritative sources.
If a legal representative of a deceased inventor refuses to make application, the procedure depends on when the application was filed:
- For applications filed before September 16, 2012: Pre-AIA 37 CFR 1.47 applies. The MPEP states:
pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application.
- In this case, you should:
- Document the refusal and the efforts made to reach the legal representative.
- Provide the last known address of the legal representative, as per MPEP § 409.03(e).
- File the application under pre-AIA 37 CFR 1.47, explaining the situation.
- For applications filed on or after September 16, 2012: Different procedures apply, which are not covered in this specific MPEP section. Consult the current USPTO regulations and guidelines for the appropriate course of action.
It’s important to note that these procedures are specific to cases where there is a known legal representative who is refusing to cooperate. Different rules may apply in other scenarios involving deceased inventors.
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If an applicant’s patent attorney or agent is suspended, they should take the following steps:
- File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
- Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
- If necessary, find a new registered patent attorney or agent using USPTO resources.
- Update the correspondence address for the application if it was previously associated with the suspended practitioner.
It’s important to act promptly to ensure continued proper representation and communication with the USPTO.
When an examiner receives a pre-AIA 37 CFR 1.47 application, they must follow these steps:
“When an examiner receives an application in which a petition under pre-AIA 37 CFR 1.47 has been filed, he or she must check the file to determine that the petition has been decided by the Office of Petitions. If the petition has not been decided by the Office of Petitions, the application, or an electronic message concerning the petition, must be forwarded to the Office of Petitions for appropriate action.”
In essence, the examiner must verify that the Office of Petitions has made a decision on the pre-AIA 37 CFR 1.47 petition. If not, the examiner must forward the application or relevant information to the Office of Petitions for further processing.
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Risks of Self-Representation in Patent Applications
While individuals can file pro se patent applications, there are several risks to consider:
- Lack of expertise: Patent law is complex, and lack of familiarity with examination practices may result in missed opportunities for optimal protection.
- Potential sanctions: According to MPEP 401, pro se applicants are subject to the same certifications and potential sanctions as represented applicants:
In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).
Given these risks, the USPTO may suggest hiring a registered patent practitioner if they notice an applicant is unfamiliar with the process and the application contains potentially patentable subject matter.
For more information on pro se, visit: pro se.
For more information on self-representation, visit: self-representation.
A nonsigning inventor in a pre-AIA 37 CFR 1.47 application retains certain rights, as outlined in MPEP 409.03(i):
- May protest their designation as an inventor
- Can inspect any paper in the application
- May order copies of application documents
- Can make their position of record in the application file
- Has the option to join the application later by filing an oath/declaration
- Retains inventor rights for patent issuance
However, the nonsigning inventor cannot:
- Prosecute the application if status under 37 CFR 1.47 is accorded
- Revoke power of attorney without agreement of the 37 CFR 1.47 applicant
The MPEP states: 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.
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A nonsigning inventor, also known as an ‘inventor designee,’ has several rights in a patent application filed under pre-AIA 37 CFR 1.47. These rights include:
- The right to protest their designation as an inventor
- The right to inspect any paper in the application
- The right to order copies of application documents at the price set forth in 37 CFR 1.19
- The right to make their position of record in the file wrapper of the application
As stated in MPEP 409.03(i): “The nonsigning inventor is entitled to inspect any paper in the application, order copies thereof at the price set forth in 37 CFR 1.19, and make his or her position of record in the file wrapper of the application.”
It’s important to note that while these rights are granted, the nonsigning inventor is not entitled to prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded.
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The USPTO, through its Office of Enrollment and Discipline, provides valuable resources to client-applicants when their patent practitioner dies. The MPEP 406 states:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This list serves as a crucial resource, helping client-applicants find new representation to continue their patent prosecution process without significant delays.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO Resources, visit: USPTO Resources.
For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:
- The invention has been assigned to the applicant
- The inventor has agreed in writing to assign the invention to the applicant
- The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application
As stated in MPEP 409.03(f):
“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”
The specific documentation required depends on which of these conditions is being met.
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When filing under pre-AIA 37 CFR 1.47, the applicant must provide proof that the nonsigning inventor is unavailable or refusing to sign. According to MPEP 409.03(d):
- For an unavailable inventor, submit a statement of facts describing the diligent efforts made to find or reach the inventor. Include documentary evidence like Internet searches, certified mail receipts, etc.
- For a refusing inventor, provide evidence that the application was presented to the inventor for signature and they refused. This can include:
- A statement detailing the circumstances of the presentation and refusal
- Documentary evidence of written refusal
- Statement of the reasons given by the inventor for refusing
The section states: Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.
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For applications filed on or after September 16, 2012:
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor
- The applicant may file a substitute statement in lieu of an inventor’s oath or declaration if the inventor has refused to execute the oath or declaration
For applications filed before September 16, 2012, a petition under pre-AIA 37 CFR 1.47 could be filed.
For applications filed on or after September 16, 2012, if an inventor is deceased or legally incapacitated:
- The legal representative of the inventor may make the application for patent on behalf of the inventor.
- An assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest may file the application as the applicant.
As stated in MPEP § 409.01(a): “If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”
For more information on legal representative, visit: legal representative.
When filing under pre-AIA 37 CFR 1.47(b), an applicant must prove that the filing of the application is necessary for specific reasons. The MPEP outlines two primary justifications:
- To preserve the rights of the parties
- To prevent irreparable damage
Specifically, the MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage.”
This requirement ensures that the use of pre-AIA 37 CFR 1.47(b) is justified and not merely a matter of convenience. For more detailed information on proving necessity, refer to MPEP § 409.03(g).
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What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”
This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.
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The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
This means:
- For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
- For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.
This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.
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The filing date is crucial in relation to irreparable damage because it can determine whether an applicant’s rights are preserved or lost. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This means that the filing date can be critical for:
- Establishing priority over other potential patent applications
- Avoiding statutory bars to patentability
- Preserving international filing rights
- Preventing public disclosure that could jeopardize patent rights
Therefore, proving that a specific filing date is necessary can be essential to prevent irreparable damage to an applicant’s patent rights.
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What is the significance of the AIA (America Invents Act) for patent application correspondence?
The America Invents Act (AIA) brought significant changes to patent application correspondence, particularly for applications filed on or after September 16, 2012. Key changes include:
- New rules for who can file patent applications
- Changes in correspondence procedures
- Updated requirements for patent practitioners’ authority
According to MPEP 403.01(a): “The provisions of 37 CFR 1.33(b) for patent applications filed on or after September 16, 2012 differ from the provisions of pre-AIA 37 CFR 1.33(b) for patent applications filed prior to September 16, 2012.” This highlights the importance of understanding the specific rules that apply based on the application’s filing date.
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What is the significance of the ‘correspondence address’ in USPTO patent applications?
The correspondence address is crucial in USPTO patent applications for several reasons:
- It determines where the USPTO sends all official communications regarding the application.
- It can be used to designate a specific attorney or agent to receive correspondence.
- Changes to the correspondence address must be made in writing to ensure proper routing of communications.
According to MPEP 403.01: “The correspondence address is used by the Office for mailing notices, actions, and other communications relating to the application.” Additionally, the MPEP states: “A change of correspondence address may be filed with the USPTO during the pendency of an application, and in a patent file.” This emphasizes the importance of keeping the correspondence address up-to-date to ensure timely receipt of important USPTO communications.
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What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?
The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.
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Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
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MPEP 402.08 has important implications for independent inventors involved in interference proceedings. The key provision states:
For independent inventors, this means:
- Changes in legal representation during an interference proceeding must be approved by the PTAB.
- There may be additional complexity and potential delays in changing attorneys.
- Inventors should carefully consider the timing of any representation changes.
- Direct communication with the PTAB may be necessary regarding power of attorney matters.
Independent inventors should be aware of these special procedures to navigate interference proceedings effectively and ensure proper legal representation throughout the process.
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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.
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What is the significance of a customer number in USPTO correspondence?
A customer number is a crucial tool for managing correspondence with the USPTO. According to MPEP 403:
‘A customer number allows an applicant, attorney or agent to easily change the correspondence address for a number of applications or patents by simply requesting a change to the address associated with the customer number.’
Key benefits of using a customer number include:
- Streamlined correspondence management for multiple applications
- Easy updates to address information
- Efficient access to application information through USPTO systems
By using a customer number, patent professionals can significantly simplify their administrative processes when dealing with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
What is the significance of a customer number in patent applications filed after September 16, 2012?
A customer number holds significant importance in patent applications filed after September 16, 2012, particularly for managing practitioner representation. Here’s why:
- It allows for efficient management of multiple practitioners
- Power of attorney can be given to a customer number
- It simplifies the process of adding or removing practitioners
- Correspondence address can be associated with a customer number
According to MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This provision streamlines the process of managing representation for applicants and practitioners alike.
Furthermore, the MPEP states: ‘If a practitioner is not of record, correspondence will be sent to the applicant’s correspondence address as shown in the application or the Patent Application Locating and Monitoring (PALM) system.’ This underscores the importance of keeping the customer number and associated information up to date.
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A Customer Number is a unique identifier assigned by the USPTO that can be associated with a correspondence address. It offers several advantages in managing patent application correspondence:
- Simplified address changes: You can update the address for multiple applications at once by changing the address associated with the Customer Number.
- Priority in address selection: When multiple addresses are provided, the USPTO may prioritize the address associated with a Customer Number.
- Easier access to Patent Application Information Retrieval (PAIR) system: Customer Numbers can be used to access multiple applications in PAIR.
37 CFR 1.33(a) states: If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
Using a Customer Number can streamline communication with the USPTO and make it easier to manage multiple patent applications.
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37 CFR 11.18 is a crucial regulation that governs signature and certification requirements for correspondence filed with the USPTO. Its significance includes:
- Establishing signature requirements for practitioners
- Defining certifications made when submitting papers
- Setting standards for truthfulness and proper purpose in filings
- Outlining potential consequences for violations
The MPEP emphasizes its importance: “The certifications in 37 CFR 11.18(b) apply to all papers filed in the Office, including allegations of improper conduct made by a registered practitioner in any Office proceeding.”
This regulation helps maintain the integrity of the patent application process and ensures that all parties involved are held to high ethical and legal standards.
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‘Limited recognition’ is a specific status granted by the USPTO that allows certain individuals to practice patent law in a restricted capacity. Its significance includes:
- Allowing non-registered practitioners to represent applicants in specific circumstances.
- Providing a pathway for Canadian patent agents to represent Canadian applicants.
- Restricting the scope of practice to specific types of applications or applicants.
The MPEP 402.01 states: Limited recognition to practice in patent cases means recognition to practice before the Office in patent cases, or in a limited capacity as a patent agent, as appropriate…
This status ensures that certain practitioners can assist applicants while maintaining the integrity of the USPTO’s registration system.
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What is the significance of ‘facts showing the right’ in proving proprietary interest?
The phrase ‘facts showing the right’ is crucial in proving proprietary interest for patent applications. According to MPEP 409.03(f):
‘Facts showing the right or authority to make the petition must be proved in accordance with 37 CFR 1.46.’
This means that:
- Applicants must provide concrete evidence demonstrating their right to file and prosecute the patent application.
- The evidence should clearly establish the applicant’s legal authority or ownership of the invention.
- These facts are essential for the USPTO to determine if the applicant has the proper standing to proceed with the application.
Examples of such facts might include:
- Documentation of employment agreements assigning invention rights to an employer
- Contracts showing transfer of rights from inventors to the applicant
- Court orders establishing ownership in cases of disputes
The significance of these ‘facts showing the right’ is that they protect the interests of all parties involved and ensure that patent rights are granted to the rightful owners or their authorized representatives.
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An affidavit plays a crucial role in proving the unavailability or refusal of a non-signing inventor. The MPEP 409.03(d) states:
An affidavit or declaration of the applicant, or his/her attorney or agent, explaining the situation and stating the last known address of the non-signing inventor, may be sufficient to establish that the inventor cannot be found or reached after diligent effort or has refused to execute the application papers.
The affidavit should:
- Provide a detailed account of efforts to locate or communicate with the inventor
- Include dates, methods of contact attempted, and results
- Explain any refusal circumstances if applicable
- Be signed under oath or declaration
This sworn statement serves as a formal record of the applicant’s diligent efforts and is considered by the USPTO in determining the validity of the proof of unavailability or refusal.
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An administrator plays a crucial role in filing a patent application for a deceased inventor. According to MPEP 409.01(b):
If the inventor was not of sound mind and legally incapacitated at the time the application was made, it may be signed by a legal representative (e.g., guardian), the inventor’s legal representative (e.g., executor, administrator, etc.), or someone acting on behalf of the inventor or legal representative.
The administrator’s responsibilities include:
- Representing the deceased inventor’s estate
- Signing necessary documents on behalf of the deceased inventor
- Providing proof of their authority to act as administrator
- Ensuring the application process complies with legal requirements
It’s important to note that the administrator must have the legal authority to act on behalf of the deceased inventor’s estate.
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An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:
- They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
- They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.
The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.
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What is the role of a patent practitioner during an interview with the USPTO?
A patent practitioner plays a crucial role during an interview with the USPTO. According to MPEP 408, the practitioner is responsible for:
- Representing the applicant or patent owner
- Discussing the merits of the application or patent
- Providing clarifications on the invention
- Negotiating potential claim amendments
- Addressing any concerns raised by the examiner
The MPEP states: ‘Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference centers.’ This underscores the formal nature of these interactions and the importance of the practitioner’s role in facilitating productive discussions with the examiner.
For more information on patent examination, visit: patent examination.
What is the role of a legal representative in filing a patent application for a deceased inventor?
What is the role of a legal representative in filing a patent application for a deceased inventor?
A legal representative plays a crucial role in filing a patent application for a deceased inventor. According to MPEP 409.03(b):
“The legal representative (executor, administrator, etc.) of a deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative’s responsibilities include:
- Executing the necessary oath or declaration on behalf of the deceased inventor
- Providing proof of their authority to act (e.g., Letters Testamentary or Letters of Administration)
- Submitting the patent application and all required documents to the USPTO
- Corresponding with the USPTO throughout the application process
- Potentially assigning the patent rights if required by the deceased inventor’s will or other legal arrangements
It’s important to note that the legal representative must act in accordance with the law and the best interests of the deceased inventor’s estate.
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The legal representative of a deceased inventor plays a crucial role in the patent application process. According to MPEP 409.01:
If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or representatives of the deceased inventor.
The legal representative’s responsibilities include:
- Executing the oath or declaration on behalf of the deceased inventor
- Providing documentation of their authority to act on behalf of the deceased inventor’s estate
- Continuing the prosecution of the patent application
- Receiving the granted patent on behalf of the deceased inventor’s estate
It’s important to note that the legal representative must be properly appointed according to state laws governing estate administration.
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In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states:
‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’
This requirement ensures that the USPTO can attempt to contact the nonsigning inventor regarding the application filed on their behalf.
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MPEP 409.03(f) is not applicable to patent applications filed on or after September 16, 2012. This is clearly stated at the beginning of the section:
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012. See MPEP §§ 325, 409.05, and 605 for information pertaining to applications for patent filed on or after September 16, 2012 by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.]”
For applications filed on or after September 16, 2012, applicants should refer to:
- MPEP § 325 – Assignment of ownership rights
- MPEP § 409.05 – Applications filed on or after September 16, 2012
- MPEP § 605 – Applicant
These sections provide guidance on how assignees, obligated assignees, or persons with sufficient proprietary interest can file patent applications under the current law.
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Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.
It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.
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MPEP 409.03(f) – Proof of Proprietary Interest outlines the requirements for establishing proprietary interest in a patent application when an inventor refuses to execute an oath or declaration. The section states:
‘If an inventor refuses to execute an oath or declaration under 37 CFR 1.63, the party to whom the inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent as provided in 37 CFR 1.46.’
This section provides guidance on how to prove sufficient proprietary interest, which is crucial for applicants who need to file a patent application without the inventor’s cooperation.
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MPEP 409.03 provides guidance on how to handle patent applications filed before September 16, 2012 when an inventor is unavailable or unwilling to sign the application. It outlines the procedures for filing an application under pre-AIA 37 CFR 1.47 when:
- A joint inventor refuses to join in an application or cannot be found/reached after diligent effort
- All inventors are unavailable
- A legal representative of a deceased inventor is unavailable
The section details the requirements, evidence needed, and process for submitting and processing these types of applications.
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What is the purpose of limited recognition in patent matters?
The purpose of limited recognition in patent matters is to allow certain individuals who are not fully registered patent practitioners to represent patent applicants before the USPTO in specific situations. As stated in MPEP 402.01:
‘Limited recognition to practice before the Office in patent matters may also be granted in appropriate circumstances to an individual who is not registered to practice before the Office.’
This provision serves several purposes:
- Allows qualified scientists and engineers to assist in patent matters
- Facilitates international cooperation through reciprocal agreements (e.g., with Canadian patent agents)
- Provides flexibility for the USPTO to address specific needs or situations
- Enables representation in cases where full registration may not be necessary or practical
Limited recognition ensures that patent applicants have access to appropriate representation while maintaining the integrity of the patent system.
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What is the purpose of a Customer Number in USPTO correspondence?
A Customer Number is a unique identifier assigned by the USPTO to simplify and streamline patent correspondence. According to the MPEP 403, ‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’ This system allows for:
- Easy updates to correspondence addresses for multiple applications
- Efficient management of power of attorney
- Simplified access to private PAIR (Patent Application Information Retrieval) for registered practitioners
By using a Customer Number, patent applicants and their representatives can more effectively manage their patent portfolios and communications with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
The process for revoking power of attorney during an interference proceeding differs from the standard procedure. According to MPEP 402.08:
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
To revoke power of attorney during an interference proceeding:
- Prepare the revocation document as you normally would.
- Instead of submitting it through regular channels, forward the revocation to the Patent Trial and Appeal Board (PTAB).
- The PTAB will consider the revocation within the context of the ongoing interference proceeding.
- Wait for the PTAB’s decision before considering the revocation effective.
This special handling ensures that changes in representation are properly managed within the complex context of an interference proceeding.
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What is the process for filing a patent application if an inventor is legally incapacitated?
When an inventor is legally incapacitated, the patent application can be filed by the legal representative of the incapacitated inventor. According to MPEP 409.03(b):
“If an inventor is legally incapacitated, the legal representative of the inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The process involves:
- Filing a petition under 37 CFR 1.47(b)
- Paying the petition fee set forth in 37 CFR 1.17(g)
- Providing proof of the inventor’s incapacity (e.g., court order)
- Submitting an oath or declaration by the legal representative
The legal representative should state their relationship to the incapacitated inventor and provide evidence of their authority to act on behalf of the inventor.
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What is the procedure for an examiner to verify an attorney’s authority during an interview?
When conducting an interview with an attorney or agent who is not of record, the examiner must follow a specific procedure to verify their authority. According to MPEP 405:
If an attorney or agent not of record in an application contacts an examiner for an interview, the examiner may grant the interview if the attorney or agent presents an authorization from the practitioner of record, or presents a signed power of attorney or a paper authorizing them to act as associate or agent.
The examiner should:
- Ask for an authorization from the practitioner of record
- Accept a signed power of attorney
- Accept a paper authorizing the attorney or agent to act as an associate or agent
If none of these are available, the examiner should decline the interview unless the attorney or agent is willing to conduct the interview with the inventor present.
For more information on USPTO procedures, visit: USPTO procedures.
What is the duty of disclosure in patent applications?
The duty of disclosure is a fundamental obligation in the patent application process. As outlined in MPEP 410:
“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”
This duty requires applicants and their representatives to:
- Disclose all known material information
- Submit information disclosure statements (IDS)
- Update the USPTO with new material information throughout the application process
Failing to comply with the duty of disclosure can result in charges of inequitable conduct, which may render a patent unenforceable. It’s crucial for applicants to err on the side of disclosure when in doubt about the materiality of information.
For more information on USPTO, visit: USPTO.
What is the duration of limited recognition granted by the OED Director?
The duration of limited recognition granted by the OED Director is not explicitly specified in MPEP 402.01. However, the section states: Limited recognition is granted for a period consistent with the employment situation for which the individual is granted limited recognition.
This suggests that the duration is tailored to each individual’s specific employment situation and may vary case by case. It’s important to note that limited recognition can be withdrawn by the OED Director at any time.
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What is the duration of limited recognition for foreign patent agents?
Limited recognition for foreign patent agents is typically granted for a period of 5 years. According to the MPEP, Recognition of a foreign patent agent for the limited purpose of representing applicants before the USPTO in the presentation and prosecution of applications for patent is granted for a period of 5 years.
(MPEP 402.01) This means that foreign patent agents must renew their limited recognition status every 5 years to continue practicing before the USPTO.
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The main difference in power of attorney revocation between pre-AIA (before September 16, 2012) and post-AIA (on or after September 16, 2012) applications lies in who can sign the power of attorney and the process for revocation:
- Post-AIA (on or after September 16, 2012): The power of attorney must be signed by the applicant or patent owner. For an assignee to revoke a power of attorney, they must first become the applicant under 37 CFR 1.46(c).
- Pre-AIA (before September 16, 2012): The assignee of record of the entire interest can revoke the power of attorney of the applicant directly, provided they establish their right to take action under pre-AIA 37 CFR 3.73(b).
This change reflects the shift in USPTO regulations to give more control to the applicant in post-AIA applications, while pre-AIA rules allowed more direct action by assignees.
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Pre-AIA 37 CFR 1.42 and pre-AIA 37 CFR 1.47 serve different purposes in relation to deceased inventors:
- Pre-AIA 37 CFR 1.42: This regulation specifically addresses the situation of a deceased inventor. It allows the legal representative (executor or administrator of the estate) to make an application on behalf of the deceased inventor.
- Pre-AIA 37 CFR 1.47: This regulation is not intended for deceased inventors directly. As stated in the MPEP,
Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
However, pre-AIA 37 CFR 1.47 does apply in cases where:
- A known legal representative of a deceased inventor cannot be found or reached after diligent effort, or
- The legal representative refuses to make the application
In such cases, the last known address of the legal representative must be provided, as per MPEP § 409.03(e).
It’s important to note that these regulations apply to applications filed before September 16, 2012. For applications filed on or after that date, different procedures may apply.
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In patent applications, both attorneys and agents can represent applicants before the USPTO, but there are important distinctions:
- Patent Attorney: A lawyer who has passed both a state bar exam and the USPTO’s patent bar exam. They can practice law and provide legal advice beyond patent prosecution.
- Patent Agent: An individual who has passed the USPTO’s patent bar exam but is not a licensed attorney. They can represent clients before the USPTO for patent matters but cannot practice law or provide other legal services.
The MPEP 402 refers to both as ‘patent practitioners’: ‘The term ‘patent practitioner’ as used in this chapter includes patent attorneys and patent agents.’ Both can receive power of attorney and represent applicants in patent matters before the USPTO, but only patent attorneys can offer broader legal counsel.
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.
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In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
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While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:
- Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
- Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.
The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’
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.
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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.
For assignee applicants, there is a specific deadline for recording documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that assignees or obligated assignees should ensure that their documentary evidence of ownership is recorded with the USPTO, as specified in 37 CFR Part 3, by the time they pay the issue fee for the patent application. Failing to record this evidence by the deadline could potentially cause complications in establishing ownership of the patent.
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The Customer Number practice allows applicants to:
- Designate the correspondence address of a patent application or patent
- Designate the fee address of a patent
- Submit a list of practitioners who have power of attorney
Using a Customer Number allows applicants to easily change the correspondence address, fee address, or list of practitioners for multiple applications or patents by simply changing the information associated with the Customer Number.
According to MPEP 403: “A Customer Number (previously a ‘Payor Number’) may be used to: (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i)); (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).”
What is the Customer Number Practice for power of attorney in patent applications?
The Customer Number Practice is a system used by the USPTO to simplify the process of changing the correspondence address or power of attorney for multiple patent applications. Here’s how it works:
- Practitioners are associated with a Customer Number
- The Customer Number can be used to grant power of attorney in applications
- Changes to the Customer Number automatically update all associated applications
According to the MPEP:
The Customer Number Practice permits applicants, attorneys, and agents of record to expressly request that the USPTO use a Customer Number to associate a power of attorney with a particular application.
(MPEP 402.02(a))
This practice streamlines the process of managing power of attorney and correspondence addresses for multiple applications, making it more efficient for both applicants and the USPTO.
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What is the Customer Number practice at the USPTO for patent applications?
The Customer Number practice at the USPTO is a system that simplifies the process of managing correspondence addresses for patent applicants and practitioners. Key aspects of this practice include:
- A Customer Number is a unique identifier assigned by the USPTO to a specific address.
- It allows for easy updating of correspondence information for multiple applications.
- Customer Numbers can be associated with Power of Attorney forms.
According to MPEP 403.01(a): ‘The Customer Number practice permits a patent applicant, assignee or practitioner of record to change the correspondence address for a number of applications or patents with one change of address filed in one location.’
To use the Customer Number practice:
- Request a Customer Number from the USPTO using the Customer Number Request form (PTO/SB/125A).
- Associate the Customer Number with your applications using the appropriate forms or through the USPTO’s electronic filing system.
- Update your correspondence address by modifying the Customer Number information, which will automatically update all associated applications.
This practice significantly streamlines the process of managing correspondence for multiple patent applications, making it easier for applicants and practitioners to maintain up-to-date contact information with the USPTO.
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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.
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Unpublished patent applications are subject to confidentiality requirements under 35 U.S.C. 122(a). MPEP 405 addresses this in the context of interviews:
However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the authorized attorney or agent to maintain confidentiality.
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 required for a person with ‘sufficient proprietary interest’ to file a patent application?
A person who shows sufficient proprietary interest in the matter can file a patent application, but must submit a petition as outlined in 37 CFR 1.46(b)(2). The petition must include:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The MPEP further explains that a proprietary interest can be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant.
This should be supported by an affidavit or declaration and prepared by an attorney familiar with the relevant jurisdiction’s law.
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Limited recognition in patent matters is a provision that allows certain individuals who are not registered patent practitioners to prosecute specific patent applications before the United States Patent and Trademark Office (USPTO). According to 37 CFR 11.9(a):
Any individual not registered under § 11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications.
This means that under certain circumstances, individuals who are not registered patent attorneys or agents may be granted permission to work on specific patent applications.
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Irreparable damage, in the context of patent applications, refers to a situation where a filing date is crucial to preserve the rights of an applicant or to prevent severe harm. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This means that an applicant can demonstrate irreparable damage by providing a statement explaining why obtaining a specific filing date is essential to protect their rights or avoid significant harm.
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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.
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Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
What is considered a ‘good and sufficient reason’ to revoke a power of attorney by less than all applicants?
The USPTO does not provide a specific definition of what constitutes a ‘good and sufficient reason’ to revoke a power of attorney by less than all applicants. According to MPEP 402.10:
A power of attorney may not be revoked by less than all of the applicants or owners of the entire interest without good and sufficient reason, and the revocation must be approved by the Director.
The determination of what qualifies as a ‘good and sufficient reason’ is made on a case-by-case basis by the Director of the USPTO. Some potential reasons could include:
- Evidence of misconduct or negligence by the current attorney
- Irreconcilable differences between the applicant(s) and the attorney
- Inability of the attorney to continue representation due to health issues or other circumstances
Applicants seeking to revoke a power of attorney with less than all signatures should provide a detailed explanation of their reasons for the request.
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Proof of unavailability for a non-signing inventor can include various forms of evidence. According to MPEP 409.03(d):
In the case of unavailability, proof of the inability to find or reach the non-signing inventor after diligent effort must be submitted.
This proof may include:
- Returned correspondence
- Copies of email or other communication attempts
- Statements from people with knowledge of the inventor’s unavailability
- Documentation of searches or inquiries made to locate the inventor
The key is to demonstrate a diligent effort to locate and communicate with the non-signing inventor.
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What is considered ‘diligent effort’ when trying to contact an inventor for joint invention?
When attempting to contact a joint inventor for patent application purposes, ‘diligent effort’ typically involves:
- Multiple attempts to reach the inventor through various communication methods (e.g., phone, email, postal mail)
- Reasonable time intervals between attempts
- Documenting all contact attempts and responses (or lack thereof)
- Exploring alternative contact methods if initial attempts fail
The MPEP 409.03(d) states: ‘Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47(b), a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’ This emphasizes the importance of thoroughly documenting all efforts made to contact the inventor.
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An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:
‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’
The ADS must include:
- The name of the inventor(s)
- A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
- If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention
The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.
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An ‘obligated assignee’ in patent applications refers to a person or entity who is under an obligation to assign the invention but has not yet executed an assignment. This concept is important in the context of MPEP 409.05, which states:
An assignee or obligated assignee who is the applicant may execute a substitute statement under 37 CFR 1.64 in lieu of an inventor’s oath or declaration.
This provision allows an obligated assignee to file a patent application and execute certain documents on behalf of the inventor, even if the formal assignment has not yet been completed.
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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.
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What is a substitute statement for a deceased inventor and when is it required?
A substitute statement is a document that replaces the inventor’s oath or declaration when the inventor is deceased, legally incapacitated, or otherwise unavailable. For a deceased inventor, it is required when filing a patent application on or after September 16, 2012.
According to MPEP 409.01(a):
The substitute statement must comply with the requirements of 35 U.S.C. 115(d) and 37 CFR 1.64.
The substitute statement must:
- Identify the inventor to whom it applies
- Identify the person executing the substitute statement
- Include a statement that the person executing the substitute statement believes the named inventor to be the original inventor
- State the circumstances permitting the person to execute the substitute statement (e.g., the inventor’s death)
This statement allows the patent application process to proceed in cases where the inventor cannot personally execute the required oath or declaration.
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A substitute statement is a document that can be used in place of an inventor’s oath or declaration under certain circumstances. According to 37 CFR 1.64, an applicant may execute a substitute statement if the inventor:
- Is deceased
- Is under a legal incapacity
- Has refused to execute the oath or declaration
- Cannot be found or reached after diligent effort
The substitute statement must comply with specific requirements outlined in 37 CFR 1.64(b), including identifying the inventor, the person executing the statement, and the circumstances permitting its use. For more details on substitute statements, see MPEP § 604.
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A substitute statement is a document that can be used in lieu of an inventor’s oath or declaration under certain circumstances. According to MPEP § 409.05, a substitute statement can be used when the inventor:
- Is deceased
- Is under a legal incapacity
- Cannot be found or reached after diligent effort
- Has refused to execute the oath or declaration
The substitute statement must comply with the requirements of 37 CFR 1.64, including identifying the inventor, the person executing the statement, and the circumstances permitting its use.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on substitute statement, visit: substitute statement.
A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.
According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met.
This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.
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A juristic entity, in the context of patent applications, typically refers to an organizational assignee such as a company or corporation. According to MPEP 401, juristic entities have special requirements:
“An applicant who is a juristic entity must be represented by a patent practitioner.”
This means that companies or other organizational entities cannot represent themselves in patent applications and must hire a registered patent attorney or agent to act on their behalf.
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.
A customer number is a unique identifier assigned by the USPTO to simplify patent correspondence. According to MPEP 403:
‘A customer number allows a patent applicant, patent owner, or assignee to designate a single correspondence address for all applications and patents associated with that customer number.’
Benefits of using a customer number include:
- Easier management of correspondence addresses for multiple applications
- Simplified process for changing the address or representative for all linked applications
- Improved efficiency in USPTO communications
To obtain a customer number, you need to file a request with the USPTO using the appropriate form.
For more information on Customer Number, visit: Customer Number.
For more information on patent correspondence, visit: patent correspondence.
For more information on USPTO, visit: USPTO.
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.
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The Applicant Initiated Interview Request form (PTOL-413A) should include specific information to facilitate the interview process. According to MPEP 408:
This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.
Providing this information helps the examiner prepare adequately for the interview and ensures that all necessary parties are involved in the discussion of relevant issues.
When an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b), the declaration must include specific information about the non-signing inventor. According to the MPEP, the declaration must state:
- The full name of the non-signing inventor
- The residence of the non-signing inventor
- The post office address of the non-signing inventor
- The citizenship of the non-signing inventor
Additionally, “the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).” This ensures that the person signing has the authority to do so on behalf of the corporation.
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When a patent application is filed by someone other than the inventor under 37 CFR 1.46, the application must contain an application data sheet (ADS) with specific information. According to 37 CFR 1.46(b), the ADS must specify in the applicant information section:
- The assignee
- The person to whom the inventor is under an obligation to assign the invention
- The person who otherwise shows sufficient proprietary interest in the matter
This information should be provided in the applicant information section of the ADS, as specified in 37 CFR 1.76(b)(7). Ensuring this information is correctly included in the ADS is crucial for establishing the proper applicant for the patent application.
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What information must be included in an oath or declaration for an unavailable joint inventor?
When filing an oath or declaration for an unavailable joint inventor, specific information must be included. According to MPEP 409.03(a), the oath or declaration must contain:
- The name of the unavailable inventor
- A statement that the inventor is unavailable and the reason for unavailability
- The last known address of the unavailable inventor
Additionally, the MPEP states:
‘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.’
It’s crucial to provide as much detail as possible about the efforts made to contact the unavailable inventor and any responses received. This information helps the USPTO understand the situation and process the application appropriately.
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What information must be included in a substitute statement for a deceased or incapacitated inventor?
When filing a substitute statement for a deceased or legally incapacitated inventor, specific information must be included to ensure its validity. According to MPEP 409.01(a) and 37 CFR 1.64, a substitute statement must contain:
- Identification of the inventor to whom the substitute statement applies
- The circumstances permitting the use of a substitute statement (e.g., death, legal incapacity)
- A statement that the person signing:
- Has reviewed and understands the contents of the application
- Believes the named inventor to be the original inventor of the claimed invention
- Acknowledges the duty to disclose information material to patentability
- The relationship of the person signing to the inventor
Additionally, the substitute statement must:
- Identify the person executing the substitute statement and the capacity in which they are signing
- Be signed in accordance with 37 CFR 1.64(a)
Ensuring all required information is included in the substitute statement is crucial for the proper processing of the patent application in cases where the inventor is unavailable.
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When filing papers in a representative capacity, a patent practitioner must provide specific information to identify themselves and establish their authority. According to MPEP 402.04:
- Registration number
- Name
- Signature
The MPEP states: “In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.”
This requirement applies even when the practitioner is not of record in the application. It helps facilitate replies on behalf of applicants and eliminates the need for filing powers of attorney in individual applications when there are changes in law firms or corporate patent staffs.
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When a pre-AIA 37 CFR 1.47 application is found acceptable, certain information is published in the Official Gazette. According to the MPEP: A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).
This publication serves several purposes:
- It provides public notice of the application’s existence.
- It identifies the nonsigning inventors, which may be important for legal or intellectual property reasons.
- It establishes a clear record of the application’s status under pre-AIA 37 CFR 1.47.
This publication is an important step in the processing of these special applications and ensures transparency in the patent application process.
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When filing a patent application with an unavailable joint inventor, you must include the last known address of the nonsigning inventor. As stated in MPEP 409.03(a):
“The last known address of the nonsigning joint inventor must be stated.”
For more details on providing this information, refer to MPEP 409.03(e). This requirement helps the USPTO in potential future communications and establishes that efforts were made to locate the inventor.
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When one of multiple practitioners of record is suspended, the USPTO continues to communicate with the remaining unsuspended practitioners. MPEP § 407 provides guidance for this situation: “This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice.” The Office action is mailed to the first named unsuspended registered practitioner at their address of record. Additionally, to ensure timely receipt, a copy is also sent to the first named applicant’s address of record.
For more information on USPTO communication, visit: USPTO communication.
When a power of attorney is accepted from less than all applicants or owners, it results in multiple parties prosecuting the application simultaneously. The MPEP states:
“The acceptance of such papers by petition under 37 CFR 1.36(a) or 1.183 will result in more than one attorney, agent, applicant, or owner prosecuting the application at the same time. Therefore, each of these parties must sign all subsequent replies submitted to the Office.”
This means:
- All involved parties must sign subsequent documents.
- The USPTO will indicate who must sign future replies.
- Double correspondence is not permitted.
- Correspondence will be mailed to the attorney or agent if one is involved.
- If multiple attorneys are involved, correspondence goes to the first-named attorney unless all parties agree otherwise.
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When an inventor is added to a pre-AIA patent application through a 37 CFR 1.48 request, it can affect the existing power of attorney. According to MPEP 402.05(b):
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.
This means that if a new inventor is added and doesn’t provide a power of attorney consistent with the original one, the original power of attorney is lost. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34, which allows for acting in a representative capacity.
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The death of an inventor (or one of the joint inventors) typically terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012, unless the power of attorney is coupled with an interest (e.g., the patent practitioner is an assignee or part-assignee). As stated in MPEP 409.01(b):
“Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012.”
In such cases, a new power of attorney from the heirs, administrators, executors, or assignees is necessary if the deceased inventor was the sole inventor or if all powers of attorney in the application have been terminated.
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After acceptance of a Pre-AIA 37 CFR 1.47 application, the non-signing inventor retains certain rights and responsibilities:
- They are considered a joint inventor and will be named on any patent that may issue.
- They have the right to access the application file and receive notices from the USPTO.
- They can still submit an executed oath or declaration, which would then be entered into the file.
As stated in MPEP 409.03(j): ‘The fact that an application was accepted and prosecuted pursuant to 37 CFR 1.47 does not alter the rights or obligations of any of the inventors with regard to the application or any patent issuing thereon.’
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What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
In a pre-AIA 37 CFR 1.47 application, nonsigning inventors are notified of the application filing. The MPEP states: The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s).
This notification process ensures that all inventors, even those who didn’t sign the application, are aware of the patent application filed using their invention. It’s important to note that this notification is a courtesy and doesn’t require a response from the nonsigning inventor for the application to proceed.
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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.
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The death of a named principal or assignee can have significant implications for an existing power of attorney in a patent application. According to MPEP 402.05:
The death of the principal may terminate the power of attorney given by him or her depending on the circumstances.
This means that the power of attorney may automatically terminate upon the death of the principal. However, the specific circumstances of each case must be considered. In cases where there are multiple applicants or assignees, the power of attorney may remain in effect for the surviving parties. It’s crucial to notify the USPTO of any changes in the status of the applicant or assignee to ensure proper representation in the patent application process. If necessary, a new power of attorney should be filed by the appropriate party, such as the executor of the deceased’s estate or the remaining applicants.
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For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
A power of attorney given to a suspended or disbarred patent practitioner becomes ineffective. The MPEP states: ‘Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent matters.’ (MPEP § 407)
During an interference or derivation proceeding, any changes to the power of attorney must be forwarded to a specific board for review. As stated in MPEP 402.05: While an application is involved in an interference or derivation proceeding, any power of attorney or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
This ensures that the appropriate authority handles changes in representation during these specialized proceedings.
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When a patent practitioner dies, their power of attorney is automatically revoked or terminated. According to the MPEP, The power of attorney of a patent practitioner will be revoked or terminated by his or her death.
(MPEP 406)
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.
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When an inventor dies before filing a patent application, the legal representative (executor, administrator, etc.) of the deceased inventor can make the necessary oath or declaration and apply for the patent. This is specified in 37 CFR 1.42 (pre-AIA), which states:
“In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative must comply with the same requirements and conditions that would have been applicable to the inventor.
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If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):
“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”
However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:
“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”
This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.
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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.
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When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
When the legal representative of a deceased inventor is unavailable, the process depends on whether the application was filed before or after September 16, 2012:
- For applications filed before September 16, 2012: If the legal representative cannot be found or reached after diligent effort, or refuses to make application, pre-AIA 37 CFR 1.47 applies. In such cases, the last known address of the legal representative must be provided.
- For applications filed on or after September 16, 2012: The provisions of pre-AIA 37 CFR 1.47 do not apply. Instead, refer to current USPTO regulations and procedures.
It’s important to note that pre-AIA 37 CFR 1.47 is not an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 for deceased inventors. As stated in the MPEP, Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
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If the last-known address of an unavailable inventor is invalid, the petitioner must make a diligent effort to find a valid address. According to MPEP 409.03(b):
‘If the last known address of the nonsigning inventor(s) is invalid, petitioner must state what efforts were made to find a current address.’
This means the petitioner should document their attempts to locate the inventor, which may include searching public records, contacting former employers, or using people-finding services. If all efforts fail, this should be clearly stated in the petition.
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What happens if not all joint inventors sign a power of attorney in a patent application?
If not all joint inventors sign a power of attorney in a patent application, the power of attorney is not effective. According to MPEP 402.10:
A power of attorney must be signed by all of the applicants, or all of the assignees of the entire interest, or all parties entitled to prosecute the application, unless otherwise specified.
This means that for the power of attorney to be valid, it must be signed by all parties with the right to prosecute the application. If some inventors haven’t signed, the USPTO will treat the application as if no power of attorney has been appointed.
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What happens if not all inventors sign the power of attorney in a pre-September 16, 2012 application?
For applications filed before September 16, 2012, it’s crucial that all inventors who have not assigned their rights sign the power of attorney. According to MPEP 402.02(b):
If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.
If not all inventors sign, the power of attorney may be considered incomplete or invalid. In such cases, the USPTO may require a new power of attorney signed by all parties with the right to prosecute the application, or may accept communications only from the inventors themselves until the issue is resolved.
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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.
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What happens if an inventor dies or becomes legally incapacitated after an application is filed?
If an inventor dies or becomes legally incapacitated after an application is filed, the legal representative of the deceased or incapacitated inventor may make an oath or declaration in compliance with 37 CFR 1.64. The MPEP 409.01(a) states:
“If an inventor dies after an application naming the inventor is filed, the personal representative of the inventor’s estate may make an oath or declaration in compliance with 37 CFR 1.64.”
This process ensures that the application can continue to be prosecuted even if the inventor is no longer able to participate. The legal representative must provide evidence of their authority to act on behalf of the deceased or incapacitated inventor.
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What happens if an inventor becomes legally incapacitated during the patent application process?
If an inventor becomes legally incapacitated during the patent application process, the application can still proceed. According to MPEP 409, ‘If an inventor is legally incapacitated, the legal representative of the inventor may make an application for patent on behalf of the inventor.’ This means that a court-appointed guardian or conservator can act on behalf of the incapacitated inventor to continue the patent application process.
The legal representative must provide evidence of their authority to act for the inventor, such as a court order appointing them as guardian. They can then sign necessary documents and make decisions regarding the patent application on behalf of the incapacitated inventor.
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If an inventor becomes available after a 37 CFR 1.47(a) petition is granted, they should be given the opportunity to join the application. The MPEP 409.03(b) provides guidance:
‘If a nonsigning inventor subsequently joins in the application, the applicant may file a petition under 37 CFR 1.182 to withdraw the 37 CFR 1.47 petition.’
This process involves:
- The newly available inventor signing the necessary oath or declaration.
- Filing a petition under 37 CFR 1.182 to withdraw the previous 1.47 petition.
- Paying any required fees for the new petition.
- Updating the application to reflect the inventor’s participation.
It’s important to address this situation promptly to ensure the application accurately reflects all participating inventors.
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What happens if an attorney or agent withdraws without notifying the USPTO?
If an attorney or agent withdraws from representation without notifying the USPTO, it can lead to several issues:
- The USPTO will continue to recognize the attorney or agent as the representative of record.
- Official correspondence will still be sent to the attorney or agent, potentially causing delays or missed deadlines.
- The applicant may not receive important communications about their application.
According to MPEP 402.06: “A registered attorney or agent who has been given a power of attorney and who withdraws from the application without relinquishing the power of attorney to the USPTO is still considered to be the attorney or agent of record.” To properly withdraw, the attorney or agent should follow the procedures outlined in 37 CFR 1.36 and notify the USPTO in writing.
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What happens if an attorney or agent withdraws from representation in a patent application?
When an attorney or agent withdraws from representation in a patent application, the following occurs:
- The USPTO will correspond directly with the applicant until a new Power of Attorney or address change is filed.
- The withdrawal is effective when approved by the Office, not when received.
- The Office may require the applicant or assignee to revoke the previous Power of Attorney and appoint a new representative.
As stated in MPEP 402.06: ‘In the event the power of attorney is withdrawn, the Office will communicate directly with the applicant… until a new registered attorney or agent is appointed.’
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If a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application, they can do so by filing the appropriate documentation. The MPEP states:
“In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.”
This means that if the inventor who initially did not sign the application later chooses to participate, they can submit a properly executed oath or declaration. This document will then be added to the official application file, effectively joining them to the application.
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If a patent application is filed without a correspondence address:
- The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
- If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
- Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
- The applicant has 2 months from the filing date to complete the application before it is abandoned.
According to MPEP 403: “If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. … If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.”
If a nonsigning inventor believes they are the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application where they are named as a joint inventor, they have a specific course of action available to them.
According to MPEP 409.03(i):
“If a nonsigning inventor feels that he or she is the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application naming him or her as a joint inventor, the nonsigning inventor may file his or her own application and request that his or her application be placed in interference with the pre-AIA 37 CFR 1.47 application.”
This means that the nonsigning inventor can:
- File their own separate patent application for the invention
- Request that their application be placed in interference with the pre-AIA 37 CFR 1.47 application
The MPEP further states: “If the claims in both the nonsigning inventor’s application and the pre-AIA 37 CFR 1.47 application are otherwise found allowable, an interference may be declared.”
An interference proceeding is a process used to determine which party has the right to a patent when two or more parties claim the same invention.
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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.
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If a legal representative hasn’t been appointed for a deceased inventor in an application filed before September 16, 2012, the situation can be complex. According to MPEP 409.01(b):
If no legal representative has been appointed, the examiner will reject the application under 35 U.S.C. 102(f) on the basis that the applicant is not the inventor and/or on the basis that there is no right to apply in any person other than the inventor.
This means that without a legal representative, the application may face rejection. It’s crucial to appoint a legal representative as soon as possible to avoid this outcome.
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What happens if a foreign patent agent’s limited recognition expires?
If a foreign patent agent’s limited recognition expires, they are no longer authorized to represent applicants before the USPTO. The MPEP states, A foreign patent agent granted limited recognition may continue to represent applicants for the remainder of any time period previously set by the USPTO for taking an action, which period is still outstanding at the expiration of the 5-year period of recognition.
(MPEP 402.01) This means that if there are any ongoing actions with set deadlines, the agent can complete those, but they cannot take on new representations or continue general practice until they renew their limited recognition status.
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After an application filed under pre-AIA 37 CFR 1.47 is accepted by the USPTO, the examiner proceeds with the application as usual. As stated in the MPEP:
“After an application deposited pursuant to pre-AIA 37 CFR 1.47 is found acceptable by the Office, the examiner will act on the application in the usual manner.”
This means that the application will be examined and processed like any other patent application, despite its initial filing under special circumstances.
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For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.
Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.
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There are two main forms that can be used to authorize a patent practitioner for an interview:
- Applicant Initiated Interview Request Form (PTOL-413A)
- Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’
According to MPEP 405:
Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
Additionally:
Alternatively, Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ which is available from the USPTO website at www.uspto.gov/sites/default/files/web/forms/sb0084.pdf may be used to establish the authority to conduct an interview.
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:
Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.
The process involves:
- The assignee signing the power of attorney (Form PTO/SB/80)
- Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)
Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.
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The USPTO provides several forms for appointing a power of attorney in patent applications filed on or after September 16, 2012. These forms are available on the USPTO website and include:
- PTO/AIA/80: For use by assignees who are either the named applicant or are becoming the applicant.
- PTO/AIA/81: For use by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney.
- PTO/AIA/82: For use by the applicant for patent to appoint one or more patent practitioners.
- PTO/AIA/81A: For use in appointing a power of attorney in a patent resulting from an application filed on or after September 16, 2012.
Each form has specific uses and requirements. For example, Form PTO/AIA/80 must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) and must be signed by the named assignee or a person authorized to act on behalf of the assignee.
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When an applicant is initiating an interview request, they should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner. The MPEP provides the following guidance:
When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This form helps streamline the interview process by providing the examiner with essential information about the proposed interview.
To support a petition under pre-AIA 37 CFR 1.47, the following evidence is typically required:
- A statement of facts signed by someone with firsthand knowledge
- Documentary evidence such as Internet searches, certified mail return receipts, cover letters of instructions, or telegrams
- Details of steps taken to locate the nonsigning inventor
The MPEP emphasizes:
‘The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted.’
It’s crucial to provide facts rather than conclusions in the statement.
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To show an inventor is unavailable or refuses to sign, the petitioner must provide substantial evidence. According to MPEP 409.03(b):
‘The fact that an inventor is unavailable or refuses to join in an application must be established by satisfactory proof… such as inability to find him or reach him after diligent effort.’
Evidence may include:
- Copies of correspondence sent to the last known address with no response
- Returned mail showing the inventor is no longer at the address
- Affidavits from people with knowledge of the inventor’s unavailability
- Documentation of attempts to contact the inventor through various means
For refusal to sign, direct evidence such as a written statement from the inventor expressing their refusal would be ideal. In the absence of such direct evidence, circumstantial evidence showing implied refusal may be considered.
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What evidence is required to prove an inventor’s refusal to sign a patent application?
When an inventor refuses to sign a patent application, specific evidence is required to proceed without their signature. The MPEP 409.03(d) outlines the necessary proof:
‘Where refusal of the inventor to sign the application papers is the reason for filing under pre-AIA 37 CFR 1.47(b), the applicant should make reasonable efforts to contact the inventor and to secure the inventor’s signature.’
Evidence of refusal typically includes:
- Documented attempts to contact the inventor (emails, letters, phone logs)
- Any written responses from the inventor indicating refusal
- Witness statements corroborating the inventor’s refusal
- A detailed explanation of the circumstances surrounding the refusal
The USPTO requires a thorough statement of facts describing the situation and efforts made to obtain the inventor’s signature. It’s crucial to demonstrate that the inventor was fully informed about the patent application and explicitly refused to sign, rather than simply being unresponsive.
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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.
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MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.
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.”
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What documents can serve as proof of proprietary interest for joint inventors?
For joint inventors, proof of proprietary interest can be established through various documents. According to MPEP 409.03(f), acceptable forms of proof include:
- An assignment for the entire right, title, and interest in the application from all inventors to one or more joint inventors
- Written statements from all inventors that they have assigned their rights in the application to one or more joint inventors
- Other evidence showing that one or more joint inventors are the only inventor(s) who have the right to prosecute the application
The MPEP states: ‘Where one of several joint inventors is deceased or cannot be reached, a statement by the prosecuting inventor as to the facts, including the names of the other joint inventors, may be accepted as sufficient proof of proprietary interest.’ This provision allows for flexibility in cases where obtaining documentation from all inventors is challenging.
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According to MPEP 402.04, there are several important documents that a person acting in a representative capacity generally cannot sign. These include:
- A power of attorney (37 CFR 1.32)
- A document granting access to an application
- A change of correspondence address
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for express abandonment without filing a continuing application (37 CFR 1.138(b))
However, there are some exceptions for applications filed on or after September 16, 2012. In these cases, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- A power of attorney has not been appointed under 37 CFR 1.32(b), and
- The patent practitioner was named in the application transmittal papers.
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When a legal representative takes over a patent application for a deceased inventor, specific documents are required:
- Proof of authority to act on behalf of the deceased inventor’s estate (e.g., Letters Testamentary, Letters of Administration)
- A new oath or declaration by the legal representative
- Any necessary assignments or other documents to establish ownership rights
According to MPEP 409.01: “The Office no longer requires proof of authority of the legal representative to prosecute the application. However, any necessary documentary evidence of the legal representative’s authority to act on behalf of the deceased inventor’s estate, such as Letters Testamentary, Letters of Administration, or a Certificate of Heirship, should be kept in the application file.”
It’s important to note that while the USPTO doesn’t require submission of proof of authority, it’s advisable to keep such documentation readily available in case it’s requested.
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What documents are required for an assignee to revoke power of attorney in a patent application?
To revoke power of attorney in a patent application, an assignee must submit specific documents to the USPTO. According to MPEP 402.07, the required documents are:
- Statement under 37 CFR 3.73(c): This establishes the assignee’s ownership.
- Revocation of the existing power of attorney
- New power of attorney from the assignee
The MPEP states:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner. The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”
It’s crucial to ensure all documents are properly executed and filed with the USPTO to effectively change the power of attorney.
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What documentation is required when filing a patent application for a deceased or legally incapacitated inventor?
When filing a patent application for a deceased or legally incapacitated inventor, specific documentation is required. According to MPEP 409.03(b), the following documentation is typically necessary:
- For deceased inventors:
- Death certificate of the inventor
- Letters Testamentary or Letters of Administration proving the legal representative’s authority
- For legally incapacitated inventors:
- Court order declaring the inventor legally incapacitated
- Guardianship or conservatorship papers demonstrating the legal representative’s authority
- For both cases:
- Oath or declaration executed by the legal representative
- Application Data Sheet (ADS) listing the inventor and indicating their status (deceased or legally incapacitated)
- Power of Attorney from the legal representative, if applicable
The MPEP states: “Proof of the authority of the legal representative must be provided to the Office.” This ensures that the person acting on behalf of the inventor has the legal right to do so.
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When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
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What documentation is required when an inventor dies during the patent application process?
When an inventor dies during the patent application process, specific documentation is required to continue the application. According to MPEP 409, the following documents are typically needed:
- A copy of the inventor’s death certificate
- Legal documentation showing the authority of the legal representative (e.g., executor of the estate)
- An oath or declaration by the legal representative
The MPEP states: ‘If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.’ This means that the executor or administrator of the deceased inventor’s estate can step in to complete the patent application process.
It’s important to note that the legal representative must provide evidence of their authority to act on behalf of the deceased inventor’s estate, such as letters testamentary or letters of administration issued by a probate court.
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What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
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What documentation is required for a legal representative to file a patent application for a deceased inventor?
When filing a patent application for a deceased inventor, a legal representative must provide specific documentation to establish their authority. According to MPEP 409.01(a):
“If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent as provided in 37 CFR 1.43. In accordance with 37 CFR 1.43, the legal representative must provide proof of authority…”
The required documentation typically includes:
- A copy of the deceased inventor’s death certificate
- Proof of the legal representative’s authority (e.g., court appointment as executor or administrator of the estate)
- A substitute statement in lieu of an inventor’s oath or declaration
- An Application Data Sheet (ADS) identifying the legal representative
It’s important to note that the specific requirements may vary depending on the circumstances and jurisdiction. Consulting with a patent attorney is advisable to ensure all necessary documentation is properly prepared and submitted.
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To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide:
- A copy of the written agreement to assign the invention
- If the agreement is conditional, a statement of facts showing the conditions have been met
MPEP 409.03(f) states:
“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. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met.”
A common example is an employment agreement. In such cases, you must provide evidence that the invention was made during the course of employment, typically through a statement from someone with firsthand knowledge of the circumstances.
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What documentation is needed to prove authority as a legal representative for a deceased or incapacitated inventor?
When filing a patent application on behalf of a deceased or legally incapacitated inventor, it’s crucial to provide documentation that proves your authority as a legal representative. The specific documentation required can vary based on the circumstances, but generally includes:
- For a deceased inventor: Death certificate and letters testamentary or letters of administration
- For an incapacitated inventor: Court order declaring incapacity and appointing a legal guardian or conservator
- Power of attorney or other legal document granting authority to act on behalf of the inventor or their estate
The MPEP 409.01(a) states:
Office personnel will not question whether the person executing the substitute statement is authorized to act on behalf of the deceased inventor’s estate or legal entity unless there is evidence to the contrary.
While the USPTO generally accepts the substitute statement without questioning the authority, it’s important to have proper documentation available in case it’s requested or if legal issues arise later. Always consult with a patent attorney to ensure you have the correct documentation for your specific situation.
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What documentation is needed for a legal representative to act on behalf of a deceased or incapacitated inventor?
To act on behalf of a deceased or incapacitated inventor, a legal representative must provide appropriate documentation to the USPTO. The MPEP 409.01(a) states:
“Office personnel will not question whether the person signing the oath or declaration is in fact a person authorized to make the statement, and will not require proof of the authority of the person making the statement.”
However, it’s important to note that while the USPTO does not require proof upfront, the legal representative should still have proper documentation, such as:
- For a deceased inventor: Letters testamentary, letters of administration, or other court documents establishing authority over the estate.
- For an incapacitated inventor: Court order appointing a guardian or conservator.
These documents may be required if the authority is later questioned or in other legal proceedings related to the patent application.
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A valid reason for filing under pre-AIA 37 CFR 1.47 requires a diligent effort to locate or reach a nonsigning inventor. The MPEP states:
‘Where inability to find or reach a nonsigning inventor “after diligent effort” is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’
It’s important to note that temporary unavailability, such as being on vacation or out of town, is not considered an acceptable reason. Additionally, hospitalization or unconsciousness are not valid reasons under this rule, but may be addressed under pre-AIA 37 CFR 1.43.
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The MPEP 409.03(g) section on proof of irreparable damage is not applicable to patent applications filed on or after September 16, 2012. This change is due to the implementation of the America Invents Act (AIA), which brought significant reforms to the U.S. patent system. Key changes include:
- Transition from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system
- New procedures for challenging patents at the USPTO
- Expanded definition of prior art
- Changes to inventor oath and declaration requirements
For applications filed on or after September 16, 2012, different rules and procedures apply regarding the representation of applicants and the handling of situations that might have previously fallen under the irreparable damage provisions.
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Pro se applicants make important certifications when filing patent applications. According to MPEP 401:
“In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).”
These certifications include statements about the truthfulness of the application, that it is not being presented for improper purposes, and that claims are warranted by existing law or a good faith argument for changing the law.
When submitting papers to the USPTO, two key certifications are made under 37 CFR 11.18(b):
- Statements made are subject to the declaration clause of 37 CFR 1.68
- The certification required for papers filed in federal court under Rule 11(b) of the Federal Rules of Civil Procedure
Specifically, 37 CFR 11.18(b) states that by presenting any paper to the USPTO, the party certifies that:
‘All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute’
This applies to both practitioners and non-practitioners submitting papers to the USPTO.
When presenting any paper to the USPTO, the party (whether a practitioner or non-practitioner) is making important certifications as outlined in 37 CFR 11.18(b):
- All statements made of the party’s own knowledge are true.
- Statements made on information and belief are believed to be true.
- The paper is not being presented for any improper purpose (e.g., harassment, delay).
- Legal contentions are warranted by existing law or non-frivolous arguments for changes in the law.
- Factual contentions have or are likely to have evidentiary support.
- Denials of factual contentions are warranted or based on lack of information or belief.
The MPEP notes: “37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or non-practitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure.”
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If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, 37 CFR 1.45(a) provides a solution. It states:
“If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor.”
In such cases, the other joint inventor(s) can proceed with the application and execute a substitute statement in lieu of an oath or declaration from the unavailable inventor, as outlined in 37 CFR 1.64. For more information on substitute statements, refer to MPEP § 604.
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The timing of filing a request to withdraw as a patent practitioner is crucial. According to the MPEP:
- The USPTO will review and decide on withdrawal requests filed before the expiration of a time period for reply or before the expiration of a time period that can be extended under 37 CFR 1.136(a).
- Requests filed after these deadlines will be placed in the application file but will not be treated on their merits.
- Revocations of power of attorney filed after these deadlines will also simply be placed in the application file, with the exception of those accompanied by a petition to revive.
It’s important to note that the USPTO may render a decision on a timely filed request even after the stated period for reply, after the application is abandoned, or after proceedings have terminated.
For reexamination proceedings, practitioners should refer to MPEP § 2223 for specific guidance on withdrawal.
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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.
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When multiple parties are prosecuting a patent application, there are specific signature requirements for replies to the USPTO. The MPEP provides clear guidance:
“Each of these parties must sign all subsequent replies submitted to the Office.”
The MPEP also provides examples to illustrate these requirements:
- “If coinventor A has given a power of attorney to a patent practitioner and coinventor B has not, replies must be signed by the patent practitioner of A and by coinventor B.”
- “If coinventors A and B have each appointed their own patent practitioner, replies must be signed by both patent practitioners.”
These examples demonstrate that all parties involved in prosecuting the application must sign subsequent replies, whether they are inventors, attorneys, or agents. This ensures that all parties are aware of and agree to the content of communications with the USPTO.
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According to 37 CFR 11.18(a), all documents filed in the USPTO for patent matters must bear a signature, with some exceptions:
- Documents that are required to be signed by the applicant or party do not need a practitioner’s signature.
- For all other documents, each piece of correspondence filed by a practitioner must be personally signed or have their signature inserted in compliance with 37 CFR 1.4(d).
The MPEP states: “37 CFR 11.18(a) emphasizes that every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party.”
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What are the signature requirements for papers filed by a juristic entity in a patent application?
For papers filed by a juristic entity (e.g., corporation) in a patent application:
- A person authorized to act on behalf of the juristic entity must sign.
- The signer’s name and title must be included.
- The papers must state the signer’s capacity to sign for the juristic entity.
The MPEP states: Papers filed on behalf of juristic entities must be signed by a patent practitioner. 37 CFR 1.33(b)(3).
(MPEP 402.03)
For example, a proper signature might look like: ‘John Smith, President, Corporation XYZ, authorized to sign on behalf of Corporation XYZ’.
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For documents submitted through EFS-Web, the USPTO accepts electronic signatures. According to MPEP 402.03:
Any paper filed in the Office in a patent application, patent file, or other proceeding which is not signed as required by 37 CFR 1.4(d) or (e) will be considered unsigned, and will be treated in accordance with 37 CFR 1.4(d)(1).
The USPTO specifically recognizes S-signatures for EFS-Web submissions. An S-signature is a signature inserted between forward slash marks, like so: /John Smith/. It’s important to note that the signer must manually type their name or use a facsimile or handwritten signature inserted between the slashes.
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S-signatures, or electronic signatures, must meet specific requirements for patent applications:
- Inserted between forward slash marks (//).
- Include the signer’s name.
- Be reasonably specific to identify the signer.
- Be handwritten or a facsimile of a handwritten signature.
According to MPEP 402.03: ‘The signature must consist only of letters, or Arabic numerals, or both. The S-signature must be signed in permanent dark ink or its equivalent.’
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When conducting interviews with patent practitioners in foreign countries, examiners must follow specific guidelines:
- Interviews must be conducted via video conference or telephone.
- In-person interviews in foreign countries are not permitted.
- The same interview policies and procedures apply as for domestic interviews.
As stated in the MPEP 408: ‘For patent practitioners in foreign countries, interviews must be scheduled to be conducted by video conference or telephone. Examiners may not hold in-person interviews with patent practitioners in foreign countries.’
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).
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A non-signing inventor, also known as an “inventor designee,” has certain rights in a patent application filed without their signature. According to MPEP § 409.03(i) (for applications filed before September 16, 2012):
- The non-signing inventor may protest their designation as an inventor
- They are entitled to inspect any paper in the application and order copies
- They can make their position of record in the file wrapper of the application
- They may arrange to do any of the above through a registered patent attorney or agent
However, the non-signing inventor is not entitled to a hearing and cannot prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded or if the proprietary interest of the pre-AIA 37 CFR 1.47(b) applicant has been shown.
For applications filed on or after September 16, 2012, similar principles apply, but the specific procedures may differ.
What are the restrictions on registered practitioners not of record during USPTO interviews?
Registered practitioners who are not of record for a specific patent application face certain restrictions when attending USPTO interviews. According to MPEP 408:
‘The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This means that while a practitioner not of record may accompany the practitioner of record to an interview, their participation is limited. They cannot actively engage in the discussion or negotiation process without explicit authorization from the patent applicant. This restriction is in place to ensure that the applicant’s interests are properly represented by their chosen practitioner of record and to maintain the integrity of the interview process.
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
For more information on registered practitioner, visit: registered practitioner.
What are the requirements for signing patent documents on behalf of juristic entities?
The requirements for signing patent documents on behalf of juristic entities (such as corporations, universities, or other organizations) are specific and strict. According to MPEP 402.04:
“Effective September 16, 2012, any paper submitted on behalf of a juristic entity must be signed by a patent practitioner.”
This means that for juristic entities:
- All patent documents must be signed by a registered patent practitioner (either a patent attorney or a patent agent).
- Employees or officers of the juristic entity cannot sign patent documents, even if they are the inventors.
- The patent practitioner must be officially appointed to represent the juristic entity before the USPTO.
This requirement ensures that juristic entities are properly represented in patent matters and helps maintain the integrity of the patent application process. It’s important for juristic entities to work with qualified patent practitioners to handle their patent applications and related documents.
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Amendments and other papers filed in a patent application must be signed by specific individuals as outlined in 37 CFR 1.33(b):
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
- The applicant (37 CFR 1.42)
It’s important to note that for juristic entities (e.g., corporations), 37 CFR 1.33(b)(3) specifies:
“Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.”
This requirement ensures that juristic entities are properly represented in patent proceedings.
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The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
S-signatures, or electronic signatures, are accepted by the USPTO for patent applications. The requirements for S-signatures include:
- The signature must be between forward slash marks (//).
- The signer’s name must be provided in printed or typed form preferably immediately below or adjacent to the S-signature.
- The S-signature may be any combination of letters, numbers, spaces, and punctuation marks.
The MPEP 402.03 states: An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./).
It’s important to note that the S-signature must be inserted by the person signing the document, not by someone else on their behalf.
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The requirements for representing applicants before international patent authorities vary depending on the specific authority. According to MPEP 402.09 and 37 CFR 11.9(c):
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.
This means that representation rights depend on the specific authority and the individual’s right to practice before the relevant national office or the International Bureau.
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What are the requirements for limited recognition to practice before the USPTO?
To obtain limited recognition to practice before the USPTO in patent matters, an individual must meet the following requirements:
- Be a scientist or engineer with a bachelor’s degree in a recognized technical subject
- Demonstrate scientific and technical training
- Possess good moral character and reputation
- Be competent to advise and assist patent applicants
As stated in MPEP 402.01: ‘The OED Director may grant limited recognition to practice before the Office in patent matters to an individual not registered to practice before the Office.’ This limited recognition is subject to the conditions specified by the OED Director.
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To file an application under pre-AIA 37 CFR 1.47(a) when at least one joint inventor is available, the following requirements must be met:
- All available joint inventors must make an oath/declaration for themselves and on behalf of the nonsigning inventor
- Proof that the nonsigning inventor cannot be found/reached after diligent effort or refuses to execute the application
- The last known address of the nonsigning inventor must be stated
As stated in MPEP 409.03(a): In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements…
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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When conducting interviews with inventors or assignees, examiners must adhere to specific requirements:
- The practitioner of record must authorize and be present for the interview.
- Inventors or assignees cannot participate without the practitioner’s presence.
- Examiners should not conduct interviews directly with inventors or assignees alone.
According to the MPEP 408: ‘Interviews with inventors or assignees and/or their attorneys or agents of record must be authorized by the practitioners of record. The practitioner of record must be present and an examiner may not conduct an interview with an inventor or assignee unless the practitioner is present.’
For more information on patent examination, visit: patent examination.
What are the requirements for a registered practitioner to obtain access to an application?
According to MPEP 405, a registered practitioner may obtain access to an application if they fulfill the following requirements:
- The practitioner must be acting in a representative capacity
- The practitioner must have proper authority from the applicant or attorney or agent of record
- Written consent from the applicant, attorney, or agent of record must be provided
The MPEP states: ‘Access will be given to the entire application file history in the absence of a specific request from the authorizing party for only a portion of the file.’ This means that unless specified otherwise, the practitioner will be granted full access to the application file.
For more information on application access, visit: application access.
For more information on registered practitioner, visit: registered practitioner.
For more information on USPTO procedures, visit: USPTO procedures.
What are the requirements for a power of attorney to be valid in patent applications?
For a power of attorney to be valid in patent applications, it must meet the following requirements:
- It must be signed by the applicant for patent (e.g., the inventor) or the assignee of the entire interest.
- It must be in writing.
- It must name one or more representatives to act on behalf of the principal.
As stated in MPEP 402.04: ‘The power of attorney must be signed by the applicant for patent (e.g., the inventor(s)) or the assignee of the entire interest of the applicant.’ This ensures that only authorized individuals can appoint representatives to act on behalf of the applicant or assignee in patent matters.
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What are the requirements for a power of attorney in applications filed before September 16, 2012?
What are the requirements for a power of attorney in applications filed before September 16, 2012?
For applications filed before September 16, 2012, there are specific requirements for a valid power of attorney. According to MPEP 402.02(b):
“For applications filed before September 16, 2012, the power of attorney must be signed by (1) the applicant, where the inventor is the applicant, or (2) the assignee of the entire interest of the applicant.”
Additionally, the power of attorney must:
- Be in writing
- Name one or more attorneys or agents
- Be signed by the applicant for patent (i.e., all of the inventors) or the assignee of the entire interest of the applicant
It’s important to note that for applications filed before September 16, 2012, a power of attorney may be incorporated in the oath or declaration form if the power of attorney is included in the same document.
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What are the requirements for a patent practitioner to withdraw from representation?
A patent practitioner who wishes to withdraw from representation must follow specific procedures. According to MPEP 403.01(a): A registered patent practitioner acting in a representative capacity in an application filed on or after September 16, 2012, may not withdraw from representation in that application without leave of the Office.
The process for withdrawal typically involves:
- Filing a request to withdraw as attorney or agent of record
- Providing reasons for the withdrawal
- Ensuring that the applicant is notified of the request
- Obtaining Office approval before ceasing representation
For detailed instructions on the withdrawal process, refer to MPEP 402.06. It’s crucial to follow these procedures to ensure a proper transition and to maintain compliance with USPTO regulations.
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What are the requirements for a non-registered individual to obtain limited recognition?
For a non-registered individual to obtain limited recognition, several requirements must be met as outlined in MPEP 402.01:
- The individual must be an attorney who is not registered to practice before the Office.
- They must show that they are acting only as an attorney for a particular named applicant.
- The attorney must be authorized to practice before a court of general jurisdiction of the state where they reside or are employed.
- The OED Director must find that the attorney possesses the scientific and technical qualifications necessary to render valuable service to the applicant.
- The attorney must apply for and be granted limited recognition by the OED Director.
It’s important to note that limited recognition is granted for a specific purpose and duration, and can be withdrawn by the OED Director at any time.
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According to 37 CFR 11.116(b), a practitioner may withdraw from representing a client for several reasons, including:
- Withdrawal can be accomplished without material adverse effect on the client’s interests
- The client persists in a course of action the practitioner reasonably believes is criminal or fraudulent
- The client has used the practitioner’s services to perpetrate a crime or fraud
- The client insists on taking action the practitioner considers repugnant or fundamentally disagrees with
- The client fails to fulfill an obligation regarding the practitioner’s services after reasonable warning
- The representation results in an unreasonable financial burden or has been rendered unreasonably difficult by the client
- Other good cause for withdrawal exists
It’s important to note that when requesting withdrawal, practitioners should be mindful of client confidentiality as required by 37 CFR 11.106. In cases involving sensitive reasons for withdrawal, practitioners should cite ‘irreconcilable differences’ and submit supporting evidence as proprietary material.
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Violations of USPTO signature and certification requirements can result in serious consequences as outlined in 37 CFR 11.18(c) and (d):
- Striking the offending paper
- Referral to the Office of Enrollment and Discipline
- Preclusion from submitting papers or contesting issues
- Affecting the weight given to the offending paper
- Termination of proceedings
- Disciplinary action against practitioners
The MPEP states: “37 CFR 11.18(d) provides that any practitioner violating the provisions of 37 CFR 11.18 may also be subject to disciplinary action, thus clarifying that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 11.18(c) for violations of 37 CFR 11.18.”
Additionally, knowingly making false statements can lead to criminal penalties under 18 U.S.C. 1001.
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Limited recognition in patent matters comes with several restrictions:
- Scope limitation: As stated in 37 CFR 11.9(a), ‘Limited recognition under this paragraph shall not extend further than the application or applications specified.’
- Duration for nonimmigrant aliens: According to 37 CFR 11.9(b), ‘Limited recognition shall be granted for a period consistent with the terms of authorized employment or training.’
- Geographical restrictions: The same regulation states, ‘Limited recognition shall not be granted or extended to a non-United States citizen residing abroad.’
- Automatic expiration: For nonimmigrant aliens, ‘Limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.’
These limitations ensure that limited recognition is granted only for specific circumstances and does not provide the same broad authority as full registration as a patent practitioner.
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For patent applications filed on or after September 16, 2012, the general requirements for powers of attorney are:
- The power of attorney must be in writing.
- It must name one or more representatives.
- It must give the representative power to act on behalf of the principal.
- It must be signed by the applicant for patent or the patent owner.
According to 37 CFR 1.32(b)(4), “A power of attorney must: […] (4) Be signed by the applicant for patent (§ 1.42) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.”
It’s important to note that an assignee who is not an applicant cannot revoke or appoint a power of attorney in a patent application.
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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.
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Violating the certification requirements when submitting papers to the USPTO can have serious consequences. According to 37 CFR 11.18(c), violations may result in:
- Striking the offending paper
- Referring a practitioner’s conduct to the Office of Enrollment and Discipline
- Precluding a party or practitioner from submitting papers or contesting issues
- Affecting the weight given to the offending paper
- Terminating proceedings in the Office
Additionally, 37 CFR 11.18(d) states that practitioners violating these provisions may be subject to disciplinary action. The USPTO Director determines appropriate sanctions after notice and opportunity to respond.
It’s important to note that violations can jeopardize the validity of applications, documents, patents, and trademark registrations. As stated in the MPEP:
‘The submission by an applicant of misleading or inaccurate statements of facts during the prosecution of applications for patent has resulted in the patents issuing on such applications being held unenforceable.’
Several court cases are cited demonstrating how false statements have led to patents being unenforceable.
Submitting unauthorized correspondence to the USPTO for patent applications filed after September 16, 2012, can have serious consequences:
- The correspondence may be returned or not entered into the application
- It could cause delays in the processing of the application
- Important deadlines might be missed, potentially leading to abandonment of the application
- There may be additional fees or costs to rectify the situation
The USPTO has strict rules about who can correspond on behalf of applicants. According to MPEP 403.01(a):
Pursuant to 37 CFR 1.33(a), if an applicant includes more than one correspondence address (37 CFR 1.33(a) ) in a patent application, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
To avoid these issues, ensure that all correspondence is submitted by authorized individuals or entities as specified in the MPEP and relevant USPTO regulations.
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What are the consequences of knowingly submitting false statements to the USPTO?
Submitting false statements to the USPTO can have serious consequences. According to MPEP 410:
“Knowingly submitting false statements or withholding material information from the Office in connection with a patent application or patent may be punishable by fine or imprisonment.”
The MPEP further states that such actions may result in:
- Invalidation of patents
- Unenforceability of patents
- Criminal prosecution
- Disciplinary action against practitioners
It’s crucial for applicants and their representatives to maintain honesty and transparency in all communications with the USPTO to avoid these severe consequences.
For more information on USPTO, visit: USPTO.
Improper signatures on patent documents can have serious consequences:
- The document may be considered unsigned and therefore ineffective.
- It could lead to delays in the patent application process.
- In some cases, it might result in the loss of rights or benefits.
- The USPTO may require a new submission with proper signatures.
MPEP 402.03 states: ‘Signatures on any paper filed in the Office relating to patents must be permanent. The Office will accept and consider electronically submitted papers bearing S-signatures or handwritten signatures.’
To avoid these issues, ensure all signatures meet USPTO requirements and are made by authorized individuals.
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For unpublished patent applications, confidentiality is a critical concern. The MPEP states:
An interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the attorney or agent to maintain confidentiality. The examiner cannot disclose any information from the application file that hasn’t been supplied by the practitioner.
For more information on unpublished applications, visit: unpublished applications.
When a patent practitioner dies, the law firm should take the following actions:
- Promptly notify the USPTO’s Office of Enrollment and Discipline (OED) of the practitioner’s death.
- Inform clients with pending applications about the situation and the need to appoint a new representative.
- Assist clients in filing new powers of attorney or authorizations of agent for pending applications.
- Provide the USPTO with updated correspondence addresses for affected applications.
The MPEP 406 states: ‘When it is known that the attorney or agent of record in an application is deceased, the Office should be promptly notified.’ This notification helps ensure a smooth transition and continued proper handling of patent applications.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
What actions can a suspended or excluded practitioner take during the 30-day limited recognition period?
During the 30-day limited recognition period, suspended or excluded practitioners are allowed to perform specific actions to protect their clients’ interests. According to MPEP 407:
“During the 30-day period of limited recognition, the suspended or excluded practitioner may conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of suspension or exclusion.”
Specifically, the practitioner may:
- Receive and forward correspondence related to pending matters
- Make appropriate filings to protect the client’s rights
- Conclude or withdraw from representation in pending proceedings
- Perform limited actions necessary to transfer the client’s case to another registered practitioner
It’s important to note that this limited recognition does not allow the practitioner to take on new clients or file new patent applications during this period.
What actions can a practitioner take to preserve an applicant’s rights without a power of attorney?
A practitioner can take certain actions to preserve an applicant’s rights without a formal power of attorney, but these are generally limited to urgent situations. The MPEP 402.04 provides some examples:
- Filing a patent application to prevent statutory bar
- Filing a response to an Office action with a nearing deadline
- Filing a notice of appeal when the period for appeal is about to expire
The MPEP states: ‘Such actions, if taken by a registered patent practitioner, will be accepted by the Office if submitted in a timely manner.’ However, it’s important to note that these actions are typically allowed only in emergencies to prevent the loss of patent rights. The practitioner should follow up with proper documentation of authority as soon as possible after taking such actions.
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While providing the last known address where the nonsigning inventor customarily receives mail is the primary requirement, the MPEP suggests that additional addresses may be beneficial:
‘Inasmuch as a nonsigning inventor is notified that an application pursuant to pre-AIA 37 CFR 1.47 has been filed on his or her behalf, other addresses at which the nonsigning inventor may be reached should also be given.’
This recommendation aims to increase the chances of successfully notifying the nonsigning inventor about the application. If you’re aware of multiple addresses where the inventor might be reached, it’s advisable to include them all.
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While the last known residence is often the appropriate address to provide, it’s not always the case. The MPEP states:
‘Ordinarily, the last known address will be the last known residence of the nonsigning inventor.’
However, the key is to provide the address where the inventor customarily receives mail. If this differs from their residence, the mailing address should be provided instead. The goal is to increase the likelihood that the nonsigning inventor will receive any USPTO communications.
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The United States Patent and Trademark Office (USPTO) does not require proof of authority to be filed by a legal representative of a deceased or incapacitated inventor. MPEP 409.01(b) states:
“Proof of authority of the legal representative of a deceased or incapacitated inventor is not required.”
However, it’s important to note that while the USPTO doesn’t require this proof, the legal representative should ensure they are properly acting in such a capacity. The MPEP advises:
“Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.”
This means that while formal proof isn’t needed for USPTO purposes, the legal representative should be prepared to demonstrate their authority if challenged in other legal contexts.
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No, MPEP 409.03(g) is not applicable to all patent applications. As stated in the editor’s note at the beginning of the section:
This MPEP section is not applicable to applications filed on or after September 16, 2012.
This means that the guidance provided in MPEP 409.03(g) regarding proof of irreparable damage only applies to patent applications filed before September 16, 2012. For applications filed on or after that date, different rules and procedures may apply.
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No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:
‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’
This is supported by several court cases cited in the MPEP, including:
- Nordberg, Inc. v. Telsmith, Inc.
- FMC Corp. v. Hennessy Indus., Inc.
- American Hoist & Derrick Co. v. Sowa & Sons, Inc.
The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.
When handling interview requests from practitioners not of record, examiners should follow these guidelines:
- Verify the requester’s authority to conduct the interview.
- Ensure the practitioner of record has authorized the interview.
- If authorization is not provided, decline the interview request.
The MPEP 408 states: ‘Interviews with practitioners not of record should be conducted only with the consent of the practitioner of record.’ It further advises: ‘An examiner should not conduct an interview with an attorney or agent who is not of record unless the attorney or agent presents either a power of attorney or a letter signed by the attorney or agent of record authorizing the interview.’
For more information on patent examination, visit: patent examination.
When handling interview requests from multiple attorneys or agents, examiners should follow these guidelines:
- Generally, only one interview is granted per application.
- If multiple practitioners request interviews, coordinate with the practitioner of record.
- Additional interviews may be granted at the examiner’s discretion.
The MPEP 408 states: ‘An interview should normally be conducted with the attorney or agent of record in an application.’ It further advises: ‘If more than one attorney or agent request an interview in an application, it is the responsibility of the attorney or agent of record to resolve any conflict.’
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:
- Changes in patent laws or regulations
- New court decisions affecting patent examination
- Evolving USPTO policies and procedures
- Feedback from patent examiners and practitioners
Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.
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.
For continuing applications where application papers from a prior application are used, special attention must be paid to the correspondence address. According to 37 CFR 1.33(f):
“Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.”
This means that applicants must explicitly specify the desired correspondence address for the continuing application to ensure proper communication with the USPTO.
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Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations:
- The inventor must be presented with the application papers.
- The inventor must understand what they are being asked to sign.
- The inventor must expressly refuse to accept the application papers.
The MPEP states:
‘A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers.’
It’s important to document the circumstances of the presentation and refusal, including time, place, and any written evidence of refusal.
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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.”
When two patent practitioners are appointed, the handling of correspondence depends on how and when they were appointed. According to MPEP 403.02:
“If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record.”
This means that the USPTO will use the most recently provided correspondence address. It’s important to note that this is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets.
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When two patent practitioners are appointed for the same application:
- If appointed simultaneously, the applicant should specify which address to use for correspondence.
- If a second practitioner is added later, correspondence will be sent to the most recently provided correspondence address.
- A new power of attorney appointing only the second practitioner effectively revokes the power of the first practitioner.
According to MPEP 403.02: “If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. … If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. … 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.”
When multiple parties are prosecuting a patent application, the USPTO has specific procedures for handling correspondence. The MPEP states:
“Double correspondence will still not be permitted. Accordingly, when the acceptance of such papers results in an attorney or agent and at least one applicant or owner prosecuting the application, correspondence will be mailed to the attorney or agent.”
Furthermore, when multiple attorneys or agents are involved:
“When the acceptance of such papers results in more than one attorney or agent prosecuting the application, the correspondence address will continue to be that of the attorney or agent first named in the application, unless all parties agree to a different correspondence address.”
Key points to remember:
- Correspondence is typically sent to the attorney or agent if one is involved.
- If multiple attorneys are prosecuting, the first-named attorney receives correspondence unless otherwise agreed.
- Each attorney or agent must indicate whom they represent in subsequent papers.
- All parties involved must sign replies to the USPTO.
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The processing of a pre-AIA 37 CFR 1.47 application involves several steps:
- A filing date is assigned if the application meets the requirements of 37 CFR 1.53(b).
- A filing receipt is sent to the applicant.
- The application or an electronic message about the petition is forwarded to the Office of Petitions.
- If the papers are found acceptable, the Office of Petitions enters a decision in the file.
- A notice is published in the Official Gazette with application details.
- The USPTO notifies the nonsigning inventor(s) or legal representative(s) by letter.
As stated in the MPEP, When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).
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In international patent applications, a common representative can be appointed in several ways. According to MPEP 402.09 and 37 CFR 1.455(b):
Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
If no specific appointment is made and there are multiple applicants, the first named applicant who is entitled to file with the U.S. Receiving Office is considered the common representative by default, as stated in 37 CFR 1.455(a).
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When a practitioner withdraws and the correspondence address will change as a result, the withdrawing practitioner(s) must request that the USPTO direct all future correspondence to one of the following:
- The first named inventor or assignee that has properly made itself of record (for applications filed before September 16, 2012)
- The applicant (for applications filed on or after September 16, 2012)
- The assignee of record (for proceedings involving issued patents)
Practitioners can specify either the correspondence address or the address associated with the Customer Number of the appropriate party. It’s important to note that withdrawing practitioners cannot change the correspondence address to another law firm’s Customer Number or any other address except those mentioned above.
This ensures that the patent application or proceeding remains properly managed after the practitioner’s withdrawal.
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The USPTO has specific methods to verify the authenticity of S-signatures:
- Comparison with other documents: The USPTO may compare the S-signature with other signatures from the same person in their records.
- Certification statement: MPEP 402.03 states: ‘The person inserting a permanent S-signature must present a statement certifying that the inserted signature is his or her own signature.’
- Audit trail: Electronic filing systems may maintain an audit trail of who submitted the document.
- Additional verification: In case of doubt, the USPTO may request additional verification or clarification.
While the USPTO generally presumes the authenticity of signatures, it’s crucial to ensure all S-signatures are genuine and properly certified to avoid potential legal issues.
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According to MPEP 406, the USPTO follows a specific procedure to notify client-applicants:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This notification ensures that the client-applicant is aware of the situation and has resources to find new representation if needed.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
How does the USPTO notify applicants of their practitioner’s suspension or exclusion?
The USPTO has a specific process for notifying applicants when their patent practitioner has been suspended or excluded. The MPEP 407 outlines this process:
“The OED Director will… notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner. The notification will be sent to the address of record in the application.”
This notification serves several purposes:
- Informs the applicant of their practitioner’s status change
- Advises the applicant of the practitioner’s limited recognition period
- Allows the applicant to take necessary actions to protect their patent application
It’s crucial for applicants to promptly respond to such notifications to ensure their patent applications are not adversely affected by their practitioner’s disciplinary status.
For more information on USPTO notification, visit: USPTO notification.
When an inventor is deceased, the MPEP 409.03(d) provides specific guidance:
In the case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may sign the necessary oath or declaration.
This means that:
- The legal representative of the deceased inventor can sign the required oath or declaration
- Proof of the inventor’s death and the legal representative’s authority should be provided
- The application can proceed with the legal representative acting on behalf of the deceased inventor
It’s important to note that the legal representative must have the authority to act on behalf of the deceased inventor’s estate. This typically requires documentation such as a death certificate and letters of administration or executorship.
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The USPTO has specific rules for representation by foreign attorneys or agents:
- Foreign attorneys or agents who are not registered to practice before the USPTO and do not reside in the U.S. are not permitted to represent patent applicants before the USPTO.
- There is an exception for Canadian patent agents under limited recognition.
- Applicants may be represented by a registered attorney or agent who is not residing in the United States.
According to MPEP 402.01: No attorney or agent residing in a foreign country may be registered to practice before the United States Patent and Trademark Office.
This emphasizes the importance of proper registration and residency for patent practitioners.
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The USPTO has specific guidelines for handling proof of refusal from a non-signing inventor. According to MPEP 409.03(d):
In the case of refusal, the proof that a bona fide attempt was made to present a copy of the application papers to the non-signing inventor for signature, but the inventor refused to sign the papers, must be submitted.
To demonstrate proof of refusal, an applicant should:
- Provide evidence of attempts to present the application to the inventor
- Document the inventor’s explicit refusal to sign
- Include any communication or statements from the inventor indicating refusal
- Submit an affidavit or declaration detailing the refusal circumstances
The USPTO will review this evidence to determine if it constitutes a valid proof of refusal.
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How does the USPTO handle proof of proprietary interest for deceased inventors?
The USPTO has specific provisions for handling proof of proprietary interest when an inventor is deceased. According to MPEP 409.03(f):
‘In the case of a deceased inventor, the proof of proprietary interest must be signed by the legal representative (executor, administrator, etc.) of the deceased inventor’s estate.’
This means that:
- The legal representative of the deceased inventor’s estate must provide the necessary documentation.
- This could be an executor or administrator appointed by the court.
- The proof should demonstrate that the legal representative has the authority to act on behalf of the deceased inventor’s estate in matters related to the patent application.
It’s important to note that the USPTO requires proper documentation to ensure that the rights of the deceased inventor are properly represented and that the application is prosecuted by those with legitimate authority to do so.
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The USPTO takes specific actions regarding powers of attorney granted to suspended or excluded practitioners. According to MPEP 407:
The Office of Enrollment and Discipline (OED) Director will contact the Director of the Technology Center (TC) managing the application when a practitioner has been suspended or excluded from practice. The OED Director will request that the TC Director review a pending application to determine whether the practitioner has been granted a power of attorney. If the suspended or excluded practitioner was given a power of attorney, the TC Director will notify the applicant and request a new power of attorney.
The process typically involves:
- Identification of affected applications by the OED Director
- Review of power of attorney status by the TC Director
- Notification to the applicant if a power of attorney exists
- Request for a new power of attorney from the applicant
- Potential application abandonment if no response is received within 30 days
For more information on power of attorney, visit: power of attorney.
How does the USPTO handle patent applications when an inventor is legally incapacitated?
The USPTO has provisions for handling patent applications when an inventor is legally incapacitated. The MPEP 409.03(b) states:
“If a person is legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
In these cases:
- The legal guardian or conservator acts on behalf of the incapacitated inventor
- They must provide proof of their legal authority to represent the incapacitated inventor
- The guardian or conservator executes the necessary oath or declaration
- They handle all aspects of the patent application process on behalf of the inventor
This approach ensures that the intellectual property rights of legally incapacitated inventors are protected and that their inventions can still be patented.
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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.”
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When multiple correspondence addresses are provided, the USPTO has a specific process for selection. According to 37 CFR 1.33(a):
“If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.”
This means that the USPTO will choose one address for all official communications, with a preference for Customer Number addresses if provided. Applicants should be aware of this to ensure they provide the most appropriate address for correspondence.
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How does the USPTO handle interviews for applications with multiple practitioners of record?
The USPTO has specific guidelines for handling interviews when multiple practitioners are of record for a patent application. MPEP 408 provides guidance on this situation:
‘Where a registered practitioner has been given a power of attorney or authorization of agent, only that practitioner, a practitioner appointed in an associate power of attorney or authorization of agent, or another registered practitioner who has the permission of one of the aforementioned practitioners may conduct an interview.’
This means that when multiple practitioners are of record, any one of them can conduct the interview. However, it’s important to note that clear communication between the practitioners is crucial to ensure consistent representation of the applicant’s interests. The USPTO typically communicates with the practitioner who initiated the interview or the one designated as the primary contact for the application.
For more information on patent examination, visit: patent examination.
For more information on power of attorney, visit: power of attorney.
How does the USPTO handle inequitable conduct in patent applications?
The USPTO takes inequitable conduct in patent applications very seriously. According to MPEP 410:
“[T]he Office will consider equitable and public policy principles in assessing whether to issue a patent to an applicant who has engaged in inequitable conduct.”
Inequitable conduct typically involves:
- Failure to disclose material information
- Submitting false material information
- Intentional misrepresentation of facts
If inequitable conduct is found, the consequences may include:
- Rejection of the patent application
- Invalidation of an issued patent
- Disciplinary action against registered practitioners
The USPTO may also refer cases of suspected fraud to the U.S. Department of Justice for potential criminal prosecution. It’s crucial for applicants and their representatives to maintain honesty and transparency throughout the patent application process.
For more information on fraud, visit: fraud.
For more information on USPTO, visit: USPTO.
How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?
When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:
- The correspondence address in the ADS takes precedence if filed with the initial application papers.
- A customer number provided in a single paper with a clear power of attorney overrides the ADS.
- If no power of attorney is filed, the correspondence address in the ADS is used.
The MPEP states:
Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record.
(MPEP 403)
It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.
For more information on application data sheet, visit: application data sheet.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO, visit: USPTO.
In a Pre-AIA 37 CFR 1.47 application, the USPTO follows specific procedures for handling correspondence. According to MPEP 409.03(j):
‘The Notice of Acceptance under 37 CFR 1.47 should remind the applicant that the nonsigning inventor has access to the application papers. Applicant may petition under 37 CFR 1.14(e) for access restriction. See MPEP § 104.’
This means that:
- The USPTO will send a Notice of Acceptance to the applicant.
- The non-signing inventor has the right to access application papers.
- The applicant can petition for access restriction if necessary.
- Regular correspondence will be sent to the applicant or their representative.
It’s important to note that while the application is prosecuted by the applicant under 37 CFR 1.47, the non-signing inventor retains certain rights, including access to the application file.
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How does the USPTO handle correspondence if no practitioner is of record in a patent application?
When no practitioner is of record in a patent application, the USPTO follows specific procedures for handling correspondence. Here’s what you need to know:
- Correspondence is sent to the applicant’s correspondence address
- The address used is the one shown in the application or the Patent Application Locating and Monitoring (PALM) system
- It’s crucial for applicants to keep their correspondence information up to date
As stated in MPEP 403.01(a): ‘If a practitioner is not of record, correspondence will be sent to the applicant’s correspondence address as shown in the application or the Patent Application Locating and Monitoring (PALM) system.’
This policy ensures that even without a practitioner of record, the USPTO can maintain communication with the applicant. It’s important for applicants to regularly check and update their correspondence information to avoid missing critical communications from the USPTO.
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How does the USPTO handle correspondence from multiple patent practitioners?
When multiple patent practitioners are involved in an application, the USPTO has specific rules for handling correspondence. MPEP 403.01(a) states: Where more than one practitioner is of record in an application, the Office will direct correspondence to the practitioner first named in the request for representation unless the request for representation specifies otherwise.
This means:
- The USPTO will typically communicate with the first-named practitioner.
- Applicants can specify a different practitioner for correspondence if desired.
- All practitioners of record have the authority to act on behalf of the applicant.
It’s important for the applicant and all involved practitioners to clearly communicate their roles and preferences for correspondence to ensure smooth communication with the USPTO. For more information on correspondence procedures, visit the USPTO’s MPEP 403 page.
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How does the USPTO handle correspondence from multiple attorneys in a patent application?
The USPTO has specific guidelines for handling correspondence from multiple attorneys in a patent application:
- If multiple attorneys are listed on the Power of Attorney form, the USPTO will direct all correspondence to the first listed attorney.
- The first listed attorney is considered the ‘correspondence address’ for official communications.
- As stated in MPEP 403.01(a): ‘If more than one attorney is of record, the Office will direct correspondence to the first listed attorney in the Power of Attorney.’
- Other listed attorneys can still communicate with the USPTO, but official correspondence will be sent to the designated address.
This approach ensures clear communication channels and prevents confusion in multi-attorney cases.
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For juristic entities (e.g., corporations, organizations), the USPTO has specific requirements for correspondence and signatures. According to 37 CFR 1.33(b)(3):
Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
This means that:
- A juristic entity must prosecute a patent application through a registered patent practitioner.
- All correspondence, amendments, and other papers must be signed by a patent practitioner on behalf of the juristic entity.
- The juristic entity cannot directly correspond with the USPTO or sign documents without representation by a patent practitioner.
This requirement ensures that juristic entities have proper legal representation in patent matters, which can be complex and have significant legal implications.
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How does the USPTO handle correspondence for applications with multiple attorneys or agents?
When an application has multiple attorneys or agents of record, the USPTO follows specific guidelines for correspondence:
- The USPTO will direct all correspondence to the first named attorney or agent of record, unless otherwise specified.
- If a customer number is provided, correspondence will be sent to the address associated with that customer number.
- Applicants can designate one or more attorneys or agents to receive correspondence by filing a power of attorney or including the information in an application data sheet.
As stated in the MPEP:
If applicant provides, in a single paper, a list of patent practitioners and a correspondence address without also filing a clear power of attorney to a patent practitioner, the Office will direct all correspondence to the correspondence address pursuant to 37 CFR 1.33(a).
(MPEP 403)
It’s important to clearly designate correspondence preferences to ensure proper communication with the USPTO.
For more information on patent agents, visit: patent agents.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO correspondence, visit: USPTO correspondence.
How does the USPTO handle correspondence for applications with multiple applicants?
The USPTO has specific rules for handling correspondence in applications with multiple applicants:
- For applications filed on or after September 16, 2012, the USPTO will direct correspondence to the first named applicant, unless a practitioner is appointed.
- For applications filed before September 16, 2012, correspondence is sent to the first named inventor, unless a practitioner is of record.
As stated in MPEP 403: ‘Where more than one attorney or agent is of record, the Office will direct correspondence to the first named attorney or agent of record, unless otherwise requested.’ This ensures clear communication channels for multi-applicant applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.
How does the USPTO handle conflicting powers of attorney in a patent application?
When conflicting powers of attorney are submitted in a patent application, the USPTO follows specific procedures to resolve the conflict. According to MPEP 402.10:
Where a written power of attorney is submitted in an application without the signature of one or more inventors or assignees, the power of attorney is not accepted until either (1) the nonsigning inventor or assignee provides a power of attorney consistent with the power of attorney provided by the other parties, or (2) the nonsigning inventor or assignee is removed from the application.
In practice, this means:
- The USPTO will not accept a power of attorney unless it is signed by all parties or consistent with previously filed powers.
- If conflicting powers are received, the Office will contact the applicants to resolve the discrepancy.
- The application may be delayed until the conflict is resolved.
- In some cases, the nonsigning inventor or assignee may need to be removed from the application for prosecution to proceed.
It’s crucial for applicants to coordinate and agree on representation to avoid such conflicts and potential delays in the patent application process.
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How does the USPTO handle conflicting instructions from multiple representatives?
When multiple representatives are authorized to act on behalf of an applicant or assignee, conflicts may arise if they provide contradictory instructions. The USPTO has a clear procedure for handling such situations. According to MPEP 402.04, “Where an applicant is represented by more than one practitioner, the Office will direct all communications to the first named representative (the representative of record) in absence of a request to the contrary or in absence of revocation of power of attorney.” This means that if conflicting instructions are received, the USPTO will generally follow the guidance provided by the representative of record, ensuring a clear line of communication and decision-making.
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The USPTO handles confidentiality in 37 CFR 1.47(a) petitions with care, recognizing the sensitive nature of the information provided. The MPEP 409.03(b) states:
‘Petitions under 37 CFR 1.47 are not available to the public since they are contained in the application file… The petition will be available to the nonsigning inventor upon request.’
This means:
- Petition documents are kept confidential as part of the non-public application file.
- The general public cannot access these petitions.
- The nonsigning inventor has the right to request and view the petition.
- The USPTO balances the need for transparency with the protection of potentially sensitive information.
Applicants should be aware that while the petition is generally confidential, the nonsigning inventor may still access it, which could affect strategies for presenting information in the petition.
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After an attorney withdraws from a patent application, the USPTO adjusts its communication process as follows:
- The Office communicates directly with the applicant or assignee.
- This direct communication continues until a new registered patent practitioner is appointed.
- The applicant or assignee who originally appointed the withdrawing attorney becomes the point of contact for all purposes in the application.
According to MPEP 402.06: ‘For applications in which the attorney or agent has withdrawn from representation, the Office will communicate directly with the applicant … until such time as a new attorney or agent is appointed.’
It’s crucial for applicants to stay responsive and consider appointing new representation promptly to ensure smooth prosecution of their patent application.
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The USPTO has specific procedures for handling changes in power of attorney and correspondence address. According to MPEP 403:
‘A new power of attorney or change of correspondence address filed in a patent application or patent does not change the correspondence address for any other application or patent.’
Key points to remember:
- Each application or patent is treated separately.
- A change in one application doesn’t automatically apply to others, even if filed by the same applicant or assignee.
- To change multiple applications, you must file separate requests for each one.
- Using a customer number can simplify this process for multiple applications.
It’s crucial to ensure that any changes are properly filed and recorded to maintain effective communication with the USPTO.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
How does the USPTO handle applications filed before September 16, 2012?
Applications filed before September 16, 2012, are subject to different correspondence rules. As stated in MPEP 403.01(a): For applications filed before September 16, 2012, pre-AIA 37 CFR 1.33(a) applies.
This means that for these older applications, the correspondence rules and procedures outlined in pre-AIA 37 CFR 1.33(a) are still in effect. It’s important to check the filing date of your application to determine which set of rules applies.
For more detailed information on pre-AIA rules, you can refer to MPEP 403 which covers correspondence for applications filed before September 16, 2012.
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The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution.
When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.
To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
The USPTO determines the correspondence address based on the most recent information provided. According to MPEP 403.02:
“If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record.”
This means that the USPTO will use the most recently provided correspondence address, regardless of which practitioner it is associated with. This practice is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets. It’s crucial for applicants and practitioners to keep the correspondence address up to date to ensure proper communication with the USPTO.
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How does the USPTO define ‘material information’ in patent applications?
The USPTO considers information to be material if it affects the patentability of an invention. According to MPEP 410:
“Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.”
In simpler terms, material information includes any facts that could affect the USPTO’s decision to grant a patent. This may include prior art, conflicting statements, or any other information that could impact the novelty or non-obviousness of the claimed invention.
For more information on prior art, visit: prior art.
For more information on USPTO, visit: USPTO.
When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:
- For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
- For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.
This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.
For international patent applications filed by non-inventor applicants, there are specific requirements outlined in 37 CFR 1.46(b):
If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
This means that for PCT applications entering the U.S. national stage or for international design applications, the non-inventor applicant must have been properly identified as the applicant for the United States during the international phase or in the international registration publication.
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The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:
- They maintain consistent numbering in the MPEP, aiding navigation and referencing
- They allow for future expansion of examination guidelines without major restructuring
- They serve as potential indicators of areas where the USPTO may develop new policies or procedures
Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.
The Manual of Patent Examining Procedure (MPEP) addresses the issue of unavailable joint inventors for applications filed on or after September 16, 2012, in section 409.02. This section provides guidance on how to proceed when a joint inventor is unavailable or unwilling to participate in the patent application process.
Key points from MPEP 409.02 include:
- Joint inventors must apply for a patent jointly and each must make an inventor’s oath or declaration.
- If a joint inventor refuses to join or cannot be found after diligent effort, the other joint inventor(s) may proceed with the application.
- A substitute statement can be executed in lieu of an oath or declaration from the unavailable inventor.
For applications filed before September 16, 2012, different procedures apply, which are covered in MPEP § 409.03 et seq.
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The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f):
“An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).”
This means that even if an original application has been assigned, and that assignment includes language covering continuations and divisions, it does not automatically cover a continuation-in-part application. This is because a CIP application, by definition, contains new matter not present in the original application.
When dealing with a CIP application under pre-AIA 37 CFR 1.47(b), applicants need to ensure that the assignment or proof of proprietary interest specifically covers the new matter included in the CIP. A new assignment or demonstration of proprietary interest may be necessary for the portions of the CIP that were not present in the original application.
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The death of an inventor can have significant implications for power of attorney in a patent application. According to MPEP 409.01(a):
Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of an inventor who is an applicant party terminates the power of attorney given by the deceased inventor in an application filed on or after September 16, 2012.
This means that in most cases, when an inventor who is also an applicant dies, any power of attorney they had given is automatically terminated. As a result:
- If the deceased inventor was the sole inventor-applicant, a new power of attorney is necessary.
- If all powers of attorney in the application have been terminated due to the inventor’s death, a new power of attorney is required.
- The new power of attorney must come from the heirs, administrators, executors, or assignees of the deceased inventor.
It’s important for legal representatives and other parties involved in the patent application to be aware of this and take appropriate action to ensure the application can continue to be prosecuted effectively.
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How does the AIA impact power of attorney for applications filed before September 16, 2012?
The America Invents Act (AIA) does not significantly change the power of attorney requirements for applications filed before September 16, 2012. As stated in MPEP 402.02(b):
For applications filed before September 16, 2012, all parties having the right to prosecute the application at the time of filing the power of attorney must act together in appointing a power of attorney.
This means that the pre-AIA rules continue to apply for these older applications. However, it’s important to note that any new applications filed on or after September 16, 2012, are subject to the updated AIA rules regarding power of attorney.
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How does the AIA change the process for applications with deceased or incapacitated inventors?
The America Invents Act (AIA) introduced significant changes to the patent application process, including how applications with deceased or legally incapacitated inventors are handled. According to MPEP 409.01(a):
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent.”
Key changes under the AIA include:
- Allowing assignees or those with sufficient proprietary interest to file applications
- Introduction of the substitute statement to replace inventor oaths in certain circumstances
- Simplified process for continuing prosecution when an inventor becomes unavailable
- Removal of the need for heirs or legal representatives to expressly petition to file on behalf of a deceased inventor
These changes streamline the application process and provide more flexibility when dealing with situations involving deceased or incapacitated inventors, making it easier for the remaining inventors or interested parties to pursue patent protection.
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When a power of attorney is revoked, it affects pending applications as follows:
- The revocation is effective upon receipt in the USPTO.
- It applies to all pending applications in which the attorney or agent was appointed, unless specifically limited.
- The Office will not communicate further with the revoked attorney/agent.
- The applicant must appoint a new representative or correspond directly with the Office.
As stated in MPEP 402.05: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ This means the revocation can occur at any point during the patent application process.
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When a power of attorney is revoked, it’s important to understand its impact on pending amendments in a patent application. According to MPEP 402.05:
Any amendments made in an application after the filing date of the application will not be effective to revoke a power of attorney.
This means that if an applicant submits an amendment to revoke a power of attorney after the application’s filing date, that amendment will not be effective in revoking the power of attorney. To properly revoke a power of attorney, the applicant must follow the specific procedures outlined in the MPEP, such as submitting a separate revocation document or a new power of attorney.
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MPEP 409.03(f) provides guidance on handling patent applications when an inventor is deceased or legally incapacitated. The section states:
‘When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or assignee on compliance with the foregoing provisions.’
This means that in cases of a deceased inventor, the patent can still be issued to their legal representative or assignee, provided they comply with the requirements for proving proprietary interest. For legally incapacitated inventors, similar provisions apply, allowing the legal guardian or other authorized representative to act on behalf of the inventor in patent matters.
It’s important to note that in these situations, additional documentation such as death certificates or court orders establishing legal guardianship may be required to establish the authority of the person acting on behalf of the inventor.
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MPEP 402.08 has significant implications for patent attorneys involved in derivation proceedings. The key provision states:
For patent attorneys, this means:
- Any changes in representation must go through the PTAB, not regular USPTO channels.
- There may be delays in processing power of attorney changes due to PTAB review.
- Attorneys must be prepared to justify changes in representation to the PTAB if necessary.
- The timing of representation changes may be influenced by the ongoing derivation proceeding.
Patent attorneys should be aware of these special procedures to ensure smooth transitions in representation during derivation proceedings.
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Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.
This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:
- See MPEP § 1807 for representation in international applications (PCT)
- See MPEP § 2911 for representation in international design applications
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When an inventor becomes legally incapacitated before filing a patent application and executing the required oath or declaration, a legal representative must be appointed to act on their behalf. According to 37 CFR 1.43 (pre-AIA):
“In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative, typically appointed by a court of competent jurisdiction, can then execute the oath or declaration and proceed with the patent application process on behalf of the incapacitated inventor.
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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.
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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:
- 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.”
- 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.”
- 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.
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How does attorney withdrawal affect the power of attorney in a patent application?
When an attorney withdraws from a patent application, it affects the power of attorney status. According to MPEP 402.06:
“The Office will not remove the names of practitioners who have been granted a power of attorney or authorization of agent from the list of practitioners of record at the request of the practitioner filing the withdrawal.”
This means that even after withdrawal, the attorney’s name may remain on record unless specific actions are taken. However, the withdrawn attorney no longer has the authority to act on behalf of the application. To fully revoke the power of attorney, the applicant must file a revocation and/or new power of attorney. It’s crucial for applicants to update their power of attorney promptly after an attorney’s withdrawal to ensure proper representation and communication with the USPTO.
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How does attorney withdrawal affect pending patent applications?
When an attorney withdraws from representation in a pending patent application, it can have several implications:
- The applicant becomes responsible for prosecuting the application.
- Official correspondence will be sent directly to the applicant.
- Deadlines and response periods remain in effect.
- The applicant may need to find new representation quickly.
According to MPEP 402.06:
“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”
It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.
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How does an attorney or agent officially withdraw from a patent application?
To officially withdraw from a patent application, an attorney or agent must follow these steps:
- Submit a request to withdraw as attorney or agent of record.
- The request must be signed by the attorney or agent of record.
- Include the application number and filing date.
- Provide the names of the inventors and assignee (if applicable).
- State the reason for withdrawal.
The MPEP 402.06 states: ‘When an attorney or agent of record in an application withdraws… the Office of Enrollment and Discipline should be notified by the withdrawing attorney or agent.’ This notification ensures proper processing of the withdrawal request.
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How does an assignee become of record in a patent application?
An assignee must become of record in a patent application before they can revoke the power of attorney given by the applicant. According to MPEP 402.07, this process involves:
- Filing a statement under 37 CFR 3.73(c)
- Complying with the requirements of 37 CFR 3.71
The MPEP states:
“The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”
This typically involves submitting documentary evidence of the chain of title from the original owner to the assignee, such as assignment documents. Once the USPTO recognizes the assignee as the owner of record, they can proceed with revoking the existing power of attorney and appointing a new one.
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To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:
- Show that the invention has been assigned to the applicant
- Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
- Otherwise demonstrate a proprietary interest in the subject matter of the application
The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”
For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).
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Adding an inventor to a patent application can affect an existing power of attorney under certain circumstances. According to MPEP 402.05(a):
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.
This means that if a new inventor is added to the application and does not provide a power of attorney that matches the existing one, the original power of attorney will be lost when the request to add the inventor is granted. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34 if applicable.
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Adding an inventor to a patent application can potentially affect an existing power of attorney. According to MPEP 402.02(a):
“If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.”
This means that if a new inventor is added to the application and does not provide a power of attorney consistent with the existing one, the original power of attorney will be lost. However, this provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable.
It’s important for applicants and practitioners to be aware of this potential consequence when adding inventors to an application, and to take appropriate steps to maintain or reestablish the desired power of attorney.
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The rules for acting in a representative capacity differ slightly for applications filed before and after September 16, 2012. According to MPEP 402.04:
For applications filed on or after September 16, 2012:
A patent practitioner acting in a representative capacity must submit papers on behalf of all parties identified as the applicant. They cannot represent only some of the applicant parties.
For applications filed before September 16, 2012:
A patent practitioner may act in a representative capacity on behalf of:
- The applicant, or
- The assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73
Additionally, for pre-September 16, 2012 applications, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- An executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed, and
- The patent practitioner was named in the application transmittal papers.
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In pre-AIA patent applications (filed before September 16, 2012), a power of attorney given by the assignee of the entire interest has significant implications for previous powers of attorney. As stated in the MPEP:
A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b).
This means that when the assignee of the entire interest files a new power of attorney, it effectively cancels all previous powers of attorney given by the applicant or any prior assignees. However, the assignee must properly establish their right to take action in the application according to the relevant regulations.
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To show ‘sufficient proprietary interest’ for filing a patent application, an individual or entity must demonstrate a significant legal or equitable interest in the invention. According to MPEP 409.05:
Quote: ‘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.’
To establish sufficient proprietary interest, the applicant must:
- Provide proof of the relevant facts demonstrating their interest in the invention
- Show that filing the application is necessary to preserve the rights of all parties involved
- Submit a petition under 37 CFR 1.46 to the Office of Petitions
The Director of the USPTO will then determine if the evidence sufficiently demonstrates proprietary interest.
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If an inventor becomes legally incapacitated after signing the oath or declaration, the application can still proceed. According to MPEP 409.01:
If an inventor who executed the oath or declaration becomes legally incapacitated after the application is filed but before the patent issues, no substitute oath or declaration is required.
This means that the previously signed oath or declaration remains valid, and the application can continue through the patent process without requiring additional documentation regarding the inventor’s incapacitation.
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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.
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How do I update the list of practitioners associated with a Customer Number?
To update the list of practitioners associated with a Customer Number, follow these steps:
- Complete the Change of Correspondence Address Form (PTO/SB/122)
- Provide the Customer Number and the updated list of registered practitioners
- Submit the form to the USPTO
The MPEP 403 specifies:
‘A request to change the correspondence address or list of registered practitioners associated with a Customer Number must be made in writing.’
It’s important to note that:
- Only registered practitioners can be added to a Customer Number
- Changes will affect all applications associated with the Customer Number
- The USPTO recommends using the online Electronic Business Center (EBC) for faster processing
Keeping the practitioner list up-to-date ensures proper communication and representation for all linked patent applications.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
When filing a patent application, you must specify a correspondence address in one of two ways:
- In an application data sheet (ADS) under 37 CFR 1.76, or
- Elsewhere in the application papers in a clearly identifiable manner
As stated in 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 will be used by the USPTO to send all official communications regarding your application.
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To revoke a power of attorney in a patent application:
- The applicant or assignee of the entire interest must submit a revocation signed by them.
- The revocation should be submitted to the USPTO in writing.
- It can be done by filing a new power of attorney (Form PTO/AIA/82) and checking the revocation box.
- Alternatively, you can submit a document specifically revoking the previous power of attorney.
As stated in the MPEP 402: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ It’s important to note that revoking a power of attorney does not remove attorneys from the list of patent practitioners associated with an application. To do that, you must file a separate request.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
To prove an invention has been assigned in a pre-AIA 37 CFR 1.47(b) application, you must submit the following:
- A copy of the assignment in English
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
According to MPEP 409.03(f):
“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. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324).”
It’s important to note that the assignment must specifically cover the invention described in the application. General assignments may not be sufficient.
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Joint inventors who are the applicant can appoint a power of attorney in a patent application using Form PTO/AIA/81. This form allows joint inventors to give one or more joint inventor-applicants the power of attorney to sign on behalf of all joint inventor-applicants.
According to the MPEP:
“Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by ‘the applicant,’ all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney.”
For example, if there are four joint inventors (A, B, C, and D) who are all applicants, and they wish to appoint inventor-applicant C as having power of attorney, all four inventors (A, B, C, and D) must sign the power of attorney form appointing C.
It’s important to note that all joint inventor-applicants must sign the power of attorney, even those who are being given the power to act on behalf of the others.
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How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
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How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
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.
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To prove that a joint inventor cannot be found or refuses to sign the patent application, you must provide evidence of your diligent efforts. According to MPEP 409.03(a):
“The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers.”
For specific guidance on what constitutes acceptable proof, refer to MPEP 409.03(d). This may include documented attempts to contact the inventor, returned mail, or written statements from the unavailable inventor indicating their refusal to sign.
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The USPTO provides several ways to find a registered patent attorney or agent, as mentioned in MPEP 401:
- Visit the USPTO website: www.uspto.gov/FindPatentAttorney for a searchable listing of registered practitioners.
- Write to the Office of Enrollment and Discipline (OED) to request a list of registered patent practitioners in your area:
Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
These resources can help you locate a qualified patent professional to assist with your patent application.
How can I change the correspondence address for multiple patent applications?
Changing the correspondence address for multiple patent applications can be efficiently done using the USPTO’s Customer Number practice. Here’s how:
- Obtain a customer number if you don’t already have one.
- Associate your patent applications with the customer number.
- Update the address linked to the customer number.
The MPEP explains:
A Customer Number may be used to: … (2) change the correspondence address, fee address, or list of practitioners of record for a plurality of applications or patents through a single request.
(MPEP 403)
This process eliminates the need to file separate change of address forms for each application, saving time and reducing the risk of errors. To make changes, use the USPTO’s Electronic Filing System (EFS-Web) or file a written request with the USPTO.
For more information on Customer Number, visit: Customer Number.
Applicants can find a new registered patent attorney or agent through resources provided by the USPTO. According to MPEP § 407: “Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO website, https://oedci.uspto.gov/OEDCI/, or by calling the Office of Enrollment and Discipline at (571) 272-4097.” These resources allow applicants to search for qualified practitioners who can represent them before the USPTO.
For more information on USPTO Resources, visit: USPTO Resources.
When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:
- Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
- Calling the Office of Enrollment and Discipline at (571) 272-4097
This information is provided in Form Paragraph 4.07 of MPEP § 407.
An heir of a deceased inventor can file a patent application under certain conditions. The MPEP 409.01(b) states:
If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or heirs of the deceased inventor.
To file the application, the heir should:
- Obtain legal recognition as the heir or legal representative
- File the application on behalf of the deceased inventor
- Provide documentation proving their status as heir or legal representative
- Complete the necessary oath or declaration
It’s advisable to consult with a patent attorney to ensure all legal requirements are met.
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An attorney or agent who has been given power of attorney can withdraw by submitting a request to the USPTO. According to MPEP 402.06:
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“A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director.”
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The request should briefly state the reason(s) for withdrawal. If based on issues like lack of compensation, it’s recommended to cite “irreconcilable differences” to maintain client confidentiality. The withdrawal is effective when approved by the USPTO, not when received.
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Practitioners must take steps to protect the client’s interests when withdrawing, such as giving reasonable notice and allowing time to hire new counsel. The Request for Withdrawal As Attorney or Agent form (PTO/AIA/83) can be used.
For more information on patent representation, visit: patent representation.
For more information on power of attorney, visit: power of attorney.
How can an associate power of attorney be given in applications filed before September 16, 2012?
For applications filed before September 16, 2012, an associate power of attorney can be given by a principal attorney or agent to one or more associate attorneys or agents. According to MPEP 402.02(b):
“For applications filed before September 16, 2012, a power of attorney may be given to one or more attorneys or agents. (37 CFR 1.32(c)(1)). A principal attorney or agent may appoint an associate attorney or agent.”
The associate power of attorney must be signed by the principal attorney or agent who was appointed in the application. It’s important to note that the associate power does not have to be approved by the Office and becomes effective upon submission.
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For applications filed on or after September 16, 2012, an assignee must first become the applicant under 37 CFR 1.46(c) to revoke a previously given power of attorney and/or grant a new one. This is because, as stated in the MPEP, any power of attorney must be signed by the applicant or patent owner
. The process involves:
- The assignee becoming the applicant
- Revoking the previous power of attorney
- Granting a new power of attorney
For more details on establishing the right of an assignee to take action, refer to MPEP § 325.
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For applications filed on or after September 16, 2012:
- The other joint inventor(s) may file the application on behalf of themselves and the non-signing inventor.
- A substitute statement can be filed in lieu of an oath or declaration for the non-signing inventor.
As stated in MPEP § 409.02: “If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor.”
For more information on substitute statement, visit: substitute statement.
How can an applicant revoke a power of attorney?
An applicant can revoke a power of attorney by submitting a new power of attorney (Form AIA/82 for applications filed on or after September 16, 2012, or Form PTO/SB/80 for applications filed before September 16, 2012) or by submitting a revocation signed by the applicant. As stated in the MPEP:
“A power of attorney may be revoked at any stage in the proceedings of a case, and an applicant may appoint a new attorney or agent at any stage in the proceedings of the case by filing a new power of attorney.” (MPEP 402)
It’s important to note that the revocation should be clear and unambiguous, and it should be submitted to the USPTO for proper processing.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
For patent applications filed before September 16, 2012, an applicant can revoke a power of attorney using Form PTO/SB/81. According to MPEP 402.05(b), “Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012.” The revocation can be done at any stage of the proceedings by an applicant for patent or an assignee of the entire interest of the applicant.
It’s important to note that fewer than all of the applicants or assignees may revoke the power of attorney only upon showing sufficient cause and paying a petition fee. The patent practitioner will be notified of the revocation, and the notice will be mailed to the correspondence address for the application in effect before the revocation.
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How can an applicant revoke a power of attorney filed on or after September 16, 2012?
An applicant can revoke a power of attorney filed on or after September 16, 2012, by following these steps:
- Submit a new power of attorney (Form AIA/82 or equivalent) that is properly executed by the applicant.
- File a revocation of the previous power of attorney. This can be done using the revocation form PTO/AIA/82A or by submitting a clear instruction to revoke the previous power of attorney.
According to MPEP 402.02(a):
“The power of attorney may be revoked by filing a revocation of power of attorney. The revocation may be signed by the applicant for patent (all parties identified as the applicant or invention) or the patent owner. A new power of attorney from the applicant for patent (all parties identified as the applicant) or the patent owner may also be filed, which will act as a revocation of the previous power.”
It’s important to note that the new power of attorney must be properly executed by all applicants to be effective in revoking the previous power of attorney.
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Under pre-AIA 37 CFR 1.47(b), an applicant can prove irreparable damage by providing a statement that demonstrates the necessity of a filing date. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This statement should explain why obtaining a specific filing date is crucial for preserving the applicant’s rights or preventing significant harm to their interests.
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How can an applicant proceed if an inventor is deceased?
If an inventor is deceased, the applicant can proceed with the patent application by filing a petition under 37 CFR 1.47(b). The MPEP states:
“When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or heir of the inventor upon proper intervention.”
To file the petition, the applicant must:
- Submit the petition fee set forth in 37 CFR 1.17(g)
- Provide proof of the inventor’s death, such as a death certificate
- Include an oath or declaration by the legal representative or heir
The legal representative or heir should state their relationship to the deceased inventor and that they are the legal representative or heir.
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If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:
- Submitting a legal memorandum
- Providing an affidavit or declaration of firsthand knowledge
- Including copies of relevant statutes or court decisions (if non-U.S.)
MPEP 409.03(f) states:
“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”
The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.
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When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP 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.
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Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
A registered patent attorney or agent who has been given a power of attorney can withdraw as attorney or agent of record by following these steps:
- File an application for withdrawal with the USPTO Director
- Obtain approval from the Director
- Provide notice to the client
As stated in 37 CFR 1.36(b): A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent.
It’s important to note that the withdrawal is effective only when approved by the USPTO, not when the request is received.
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How can a practitioner become of record in a patent application filed on or after September 16, 2012?
A practitioner can become of record in a patent application filed on or after September 16, 2012, through the following methods:
- Filing an Application Data Sheet (ADS) that names the practitioner as the representative
- Filing a power of attorney (POA) signed by the applicant
- Filing a patent application transmittal letter signed by the applicant and naming the practitioner as a representative
- Being named as the representative in the oath or declaration
As stated in MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This allows for easier management of multiple practitioners associated with a single customer number.
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A person who shows sufficient proprietary interest in an invention can file a patent application as the applicant. According to MPEP § 409.05, such a person must submit a petition including:
- The fee set forth in 37 CFR 1.17(g)
- A showing of sufficient proprietary interest in the matter
- A statement that making the application on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The proprietary interest can be demonstrated by a legal memorandum showing that a court would likely award title of the invention to the applicant. Supporting facts and documentation should be provided.
For more information on proprietary interest, visit: proprietary interest.
A registered patent attorney or agent who has been given a power of attorney may withdraw as attorney or agent of record by submitting a request to the USPTO. The process involves:
- Filing a request for withdrawal with the USPTO
- Obtaining approval from the Director of the USPTO
- Notifying the applicant or patent owner of the withdrawal
MPEP 402.06 states: “When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request.”
The practitioner must also take steps to protect the client’s interests, such as giving reasonable notice and allowing time for the client to find new representation.
How can a legal representative file a patent application for a deceased inventor?
For patent applications filed on or after September 16, 2012, a legal representative can file a patent application for a deceased inventor by following these steps:
- Submit an Application Data Sheet (ADS) naming the deceased inventor
- Include a substitute statement in lieu of an inventor’s oath or declaration
- Provide documentation showing the legal representative’s authority to act on behalf of the deceased inventor’s estate
The MPEP states: If an inventor dies during the prosecution of an application, or before an application is filed, the legally recognized representative of the inventor may make the substitute statement.
(MPEP 409.01(a))
It’s important to note that the legal representative must have the authority to act on behalf of the deceased inventor’s estate or other legal entity holding the appropriate rights.
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How can a legal representative file a patent application for a deceased inventor after September 16, 2012?
For patent applications filed on or after September 16, 2012, a legal representative can file an application for a deceased inventor by following these steps:
- File the application normally, listing the deceased inventor
- Submit an Application Data Sheet (ADS) identifying the legal representative
- Include a substitute statement in lieu of an inventor’s oath or declaration
According to MPEP 409.01(a): “If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent as provided in 37 CFR 1.43.” The legal representative must provide documentation of their authority to act on behalf of the deceased inventor.
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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.
How can a joint inventor apply for a patent if another joint inventor is deceased or legally incapacitated?
If a joint inventor is deceased or legally incapacitated, the other joint inventor(s) can still apply for a patent by following these steps:
- File the application naming the deceased or legally incapacitated inventor
- Submit a statement identifying the unavailable inventor and their last known address
- Show that the signing inventor is obligated to assign the patent to the same entity as the unavailable inventor, or has sufficient proprietary interest
- Submit the oath or declaration by the available inventor(s)
As stated in MPEP 409.01(a): “In the case of a deceased or legally incapacitated joint inventor, the applicant should identify the unavailable inventor on an application data sheet (ADS) or a substitute statement.”
This process allows the patent application to move forward despite the unavailability of one of the joint inventors.
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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.
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When all inventors are unavailable or unwilling to sign a patent application, there are still options for filing. According to MPEP § 409.03(b) (for applications filed before September 16, 2012) and MPEP § 409.05 (for applications filed on or after September 16, 2012):
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest in the matter may file the application
In such cases, substitute statements would need to be filed in lieu of inventors’ oaths or declarations, along with the necessary petitions and evidence of the applicant’s right to file the application.
For more information on assignee applicant, visit: assignee applicant.
For more information on proprietary interest, visit: proprietary interest.
In a pre-AIA 37 CFR 1.47 application, papers filed by an inventor who did not initially join the application are handled as follows:
“Papers filed by an inventor who did not originally join in the application, and papers relating to its pre-AIA 37 CFR 1.47 status, will be placed in the file wrapper.”
This means that any documents submitted by the previously non-signing inventor, as well as any paperwork related to the application’s pre-AIA 37 CFR 1.47 status, are included in the official application file for record-keeping and potential future reference.
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The USPTO accepts handwritten signatures in patent applications, but they must meet specific requirements:
- The signature must be personally applied by the signer.
- It can be in permanent dark ink or its equivalent.
- The entire signature must be contained within the signature area of the document.
According to MPEP 402.03: A handwritten signature must be personally applied by the signer. See 37 CFR 1.4(d)(1).
It’s important to note that while handwritten signatures are accepted, the USPTO encourages electronic filing and signatures for efficiency and accuracy in processing applications.
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For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.
This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.
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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.
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Pre-AIA 37 CFR 1.47 does not directly apply to deceased inventors. The MPEP clearly states: Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
However, pre-AIA 37 CFR 1.47 does apply in cases where a known legal representative of a deceased inventor:
- Cannot be found or reached after diligent effort, or
- Refuses to make application
In such situations, the last known address of the legal representative must be provided, as per MPEP § 409.03(e).
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Can the USPTO independently verify information provided by patent applicants?
Yes, the USPTO has the authority to independently verify information provided by patent applicants. MPEP 410 states:
“The Office is not the guarantor of the accuracy, correctness or completeness of the information supplied by the applicant.”
This means that while the USPTO relies on the information provided by applicants, it may:
- Conduct its own investigations
- Request additional information or evidence
- Consult external sources to verify claims
Applicants should be aware that the USPTO can and may verify any information submitted during the patent application process. It’s crucial to provide accurate and complete information to avoid potential legal issues or loss of patent rights.
For more information on patent application information, visit: patent application information.
No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:
- A listing is available at www.uspto.gov/FindPatentAttorney
- Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)
Patent practitioners should not rely on information from reserved MPEP sections, as these sections do not contain any official guidance or information. A reserved section, such as MPEP 404, is essentially a placeholder and does not provide any substantive content. Practitioners should instead:
- Refer to active, non-reserved sections of the MPEP
- Consult the most recent USPTO guidelines and notices
- Stay updated on changes to patent laws and regulations
- Seek guidance from official USPTO sources when needed
It’s important to always use the most current and official information when dealing with patent matters.
Can one co-inventor revoke a power of attorney in a patent application?
No, a single co-inventor cannot unilaterally revoke a power of attorney in a patent application. The MPEP 402.10 states:
A power of attorney may not be revoked by less than all of the applicants or owners of the entire interest without good and sufficient reason, and the revocation must be approved by the Director.
This means that to revoke a power of attorney, all co-inventors or owners of the entire interest must agree to the revocation. If a single co-inventor wishes to revoke the power of attorney, they must provide a good and sufficient reason, and the revocation must be approved by the Director of the USPTO.
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Yes, non-US citizens, specifically nonimmigrant aliens residing in the United States, can obtain limited recognition for patent matters under certain conditions. According to MPEP 402.09 and 37 CFR 11.9(b):
A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.
However, it’s important to note that limited recognition is not granted to non-US citizens residing abroad and automatically expires upon the nonimmigrant alien’s departure from the United States.
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No, non-registered representatives should not be contacted for patent application actions, even if they appear to be authorized by the attorney or agent of record. The MPEP clearly states:
In addition, non-registered representatives of the practitioner of record should not be contacted for such actions, even if apparently authorized by the attorney or agent of record.
This restriction helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in critical communications.
Generally, the USPTO maintains only one correspondence address for each patent application. As stated in MPEP 403:
‘The Office will direct all notices, official letters, and other communications relating to the application to a single correspondence address.’
However, there are exceptions:
- Powers of attorney to different practitioners may be present in an application, but only one correspondence address is recognized.
- In reexamination proceedings, a ‘duplicate copy’ may be sent to a different address.
- Maintenance fee reminders may be sent to a ‘fee address’ that differs from the correspondence address.
It’s important to note that while multiple addresses may be associated with an application for specific purposes, the USPTO will generally communicate with only one primary correspondence address.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO, visit: USPTO.
While it’s possible to include multiple correspondence addresses for a single patent application filed after September 16, 2012, the USPTO will ultimately select only one for official use. Here’s what you need to know:
- Multiple addresses can be provided in the application
- The USPTO will choose one address as the official correspondence address
- If a Customer Number is provided, it may be given preference
- Only the selected address will receive official communications
The MPEP 403.01(a) states:
Pursuant to 37 CFR 1.33(a), if an applicant includes more than one correspondence address (37 CFR 1.33(a) ) in a patent application, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
To ensure clear communication, it’s best to designate a single, preferred correspondence address for your application. If you need to change this address later, you can file a request with the USPTO.
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Yes, multiple attorneys can be appointed in a patent application. According to MPEP 402.02:
More than one attorney, agent, or other party may be appointed as representative of the applicant or owner.
When appointing multiple attorneys:
- Use the appropriate power of attorney form (PTO/AIA/82 for applications filed on or after September 16, 2012, or PTO/SB/81 for earlier applications).
- List all attorneys or agents to be appointed.
- Specify if they are to act independently or as a team.
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Can limited recognition be granted to Canadian patent agents?
Yes, limited recognition can be granted to Canadian patent agents. According to MPEP 402.01: Canadian patent agents are not authorized to practice before the Office without proper recognition from the OED Director. Canadian patent agents who are registered and in good standing with the Canadian Patent Office may be granted limited recognition to represent a named applicant in a specific application if the named applicant also appoints a registered U.S. practitioner.
This provision allows Canadian patent agents to participate in specific applications, but with certain restrictions and requirements.
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Yes, individuals granted limited recognition can file certain documents in patent applications. According to the MPEP 402.01:
Persons granted limited recognition are considered practitioners under 37 CFR 11.1 and thus permitted to perform the same patent prosecution functions of registered patent agents and registered patent attorneys when prosecuting a specified patent application or specified patent applications.
Specifically, they can file:
- A power of attorney (37 CFR 1.32(b)(4))
- A document granting access to an application (37 CFR 1.14(c))
- A change of correspondence address (37 CFR 1.33(a))
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for an express abandonment (37 CFR 1.138(b))
However, it’s important to note that these individuals are still subject to the restrictions expressed in their grant, including temporal, employer, and visa limitations.
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Yes, in most cases. According to MPEP 401, “An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office.” However, there are important considerations:
- Juristic entities (e.g., companies) must be represented by a patent practitioner
- Pro se applicants are subject to the same rules and potential sanctions as represented applicants
- Lack of familiarity with patent procedures may result in missed opportunities for optimal protection
Yes, heirs can apply for a patent on behalf of a deceased inventor under certain circumstances. According to MPEP 409.01(b):
“Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.”
In such cases, the heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64. This allows heirs to proceed with the patent application process when no formal legal representative has been appointed.
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Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:
The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.
Can an inventor’s attorney conduct an interview without a power of attorney?
Yes, an inventor’s attorney can conduct an interview without a power of attorney under certain conditions. The MPEP 405 provides guidance on this matter:
Interviews may be granted to an attorney or agent who is not of record in an application if the conditions of 37 CFR 1.33(b)(3) are satisfied.
This means that if the attorney or agent complies with the requirements set forth in 37 CFR 1.33(b)(3), they can conduct an interview even without a formal power of attorney. These requirements typically include providing evidence of their authority to act on behalf of the applicant.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO procedures, visit: USPTO procedures.
No, an inventor cannot authorize another individual to act as their agent to sign the application oath or declaration on their behalf. The MPEP is clear on this point, stating: “An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf.”
This prohibition is supported by legal precedents, as the MPEP cites: “Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm’r Pat. 1973).” These cases reinforce the requirement for the inventor’s personal signature on the oath or declaration.
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Can an attorney withdraw from patent representation without client consent?
While it’s generally preferable to obtain client consent, an attorney can withdraw from patent representation without client consent under certain circumstances. However, they must still follow proper procedures and notify the USPTO. The MPEP 402.06 states:
“The requirements for withdrawal of an attorney or agent are set forth in 37 CFR 1.36. The Office of Enrollment and Discipline (OED) handles withdrawal of entire firms.”
Key points to consider:
- The attorney must provide notice to the client and the USPTO.
- Reasons for withdrawal without consent may include ethical conflicts or non-payment of fees.
- The USPTO may require the attorney to show good cause for withdrawal.
- The withdrawal should not unduly prejudice the client’s interests.
Attorneys should consult 37 CFR 1.36 and applicable state bar rules when considering withdrawal without client consent.
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Can an attorney withdraw from a patent application without the applicant’s consent?
Yes, an attorney can withdraw from a patent application without the applicant’s consent under certain circumstances. However, the withdrawal must be approved by the USPTO. The MPEP 402.06 states:
‘An attorney or agent may withdraw from representing an applicant or assignee in a patent application pending before the USPTO… When appropriate, the Office will require the applicant or assignee to revoke the previous power of attorney and appoint new attorney(s) of record.’
While the applicant’s consent is not explicitly required, the USPTO considers the following factors when deciding whether to approve a withdrawal:
- The reasons for withdrawal
- The stage of prosecution
- The potential impact on the applicant
The USPTO may deny the withdrawal if it would unduly prejudice the applicant or delay the prosecution of the application.
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Can an assignee revoke power of attorney in all types of patent applications?
An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:
“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”
This means assignees can revoke power of attorney in:
- Applications involved in interference or derivation proceedings
- National stage applications under 35 U.S.C. 371
For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.
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In general, an assignee can revoke a power of attorney in most applications. However, there is an exception for certain government-owned applications. The MPEP states:
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.
This implies that in some government-owned applications, an irrevocable right to prosecute may have been granted, which would prevent the assignee from revoking the power of attorney. If you’re dealing with a government-owned application, it’s crucial to check whether such an irrevocable right exists before attempting to revoke a power of attorney.
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Can an assignee revoke a power of attorney given by the applicant in a patent application?
Yes, an assignee can revoke a power of attorney given by the applicant in a patent application, provided certain conditions are met. According to MPEP 402.07:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner.”
This is possible when:
- The assignee has properly become of record pursuant to 37 CFR 3.71.
- The application is involved in an interference or derivation proceeding.
- The application is national stage application filed under 35 U.S.C. 371.
It’s important to note that the assignee must follow proper procedures and file the necessary documents with the USPTO to effectuate this change.
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Yes, for applications filed on or after September 16, 2012, an assignee can file a patent application as the applicant. According to MPEP § 409.05:
“An assignee or obligated assignee may file a patent application as the applicant. An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) as provided for in 37 CFR part 3 no later than the date the issue fee is paid in the application.”
However, to be the sole applicant, the assignee must have been assigned the entire interest in the application.
For more information on patent applicant, visit: patent applicant.
Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:
- The assignee must have originally appointed the withdrawing attorney or agent.
- The assignee becomes recognized by the Office for all purposes in the application.
- The assignee can sign amendments and other papers related to the prosecution.
The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’
It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.
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An assignee’s ability to appoint a power of attorney in a patent application depends on whether the assignee is the applicant. According to the MPEP:
- An assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71.
- An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c), which requires compliance with 37 CFR 3.71 and 3.73.
As stated in the MPEP, “An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71.” However, “An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73).”
It’s important to note that an assignee who is not an applicant cannot revoke or appoint a power of attorney in a patent application without first becoming the applicant.
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Can an applicant communicate directly with the USPTO if they have a registered patent attorney?
Generally, when an applicant is represented by a registered patent attorney or agent, direct communication between the applicant and the USPTO is discouraged. The USPTO has specific rules regarding this situation:
- The USPTO will communicate directly with the registered attorney or agent of record.
- Applicants should channel their communications through their appointed representative.
- Direct communication from the applicant may not be officially recognized or acted upon by the USPTO.
MPEP 403.01 clearly states: “The Office will not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director.” This policy ensures clear and efficient communication channels and prevents potential confusion or contradictory instructions. If an applicant wishes to communicate directly, they should first revoke the power of attorney or authorization of agent on record.
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Yes, an applicant can appoint two patent practitioners for the same application. However, when doing so, it’s important to specify the correspondence address. As stated in the MPEP:
“If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address.”
This ensures clear communication between the USPTO and the applicant’s representatives. For more details, refer to MPEP § 403, MPEP § 403.01(a), and MPEP § 403.01(b).
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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.
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No, a third party or its representative cannot use the provisions of 37 CFR 1.34 to conduct an interview or take other actions not specifically permitted by the rules of practice. MPEP 405 states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that attempting to use 37 CFR 1.34 for unauthorized actions could lead to disciplinary consequences for registered practitioners.
Generally, third parties are not permitted to conduct interviews or take actions in patent applications. The MPEP clearly states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that only authorized representatives (such as registered attorneys or agents with proper authorization) can conduct interviews or take actions on behalf of the applicant. Third parties attempting to do so may face disciplinary action, especially if they are registered practitioners.
For more information on disciplinary action, visit: disciplinary action.
For more information on patent interviews, visit: patent interviews.
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.
Yes, registered patent practitioners can file papers in patent applications and reexamination proceedings without being of record. MPEP 405 states:
Papers may be filed in patent applications and reexamination proceedings by registered attorneys or agents not of record under 37 CFR 1.34. Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the practitioner is implicitly stating they have authorization to act on behalf of the applicant, even if they are not officially recorded as the attorney or agent of record.
Yes, a pre-AIA 37 CFR 1.47 application can be published as a Statutory Invention Registration, but with a specific condition. According to the MPEP:
“An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).”
It’s important to note that this option is only available for requests filed before March 16, 2013, as the America Invents Act eliminated Statutory Invention Registrations for applications filed on or after that date.
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Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:
‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’
This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.
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The USPTO has specific rules regarding withdrawal for practitioners acting in a representative capacity under 37 CFR 1.34:
- The USPTO will not approve withdrawal requests from practitioners acting in a representative capacity.
- These practitioners are responsible for the correspondence they file in the application while acting in a representative capacity.
- There is no need for these practitioners to obtain the USPTO’s permission to withdraw from representation.
However, it’s important to note that practitioners acting in a representative capacity, like those with power of attorney, remain responsible for compliance with 37 CFR 1.56 (duty of disclosure) and 37 CFR 11.18 (signature and certification requirements) for documents they file.
This distinction ensures that practitioners understand their ongoing responsibilities even when acting in a limited representative capacity.
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Can a practitioner act on behalf of an applicant without a power of attorney?
Yes, a practitioner can act on behalf of an applicant without a power of attorney in certain circumstances. According to MPEP 402.04:
‘A practitioner may in some circumstances within the discretion of the Office act without any power of attorney or authorization of agent when it appears necessary to preserve the rights of the applicant.’
This provision allows for urgent action to be taken to protect the applicant’s interests, even if a formal power of attorney is not in place. However, it’s important to note that this is at the discretion of the USPTO and is typically limited to situations where immediate action is necessary to prevent loss of rights.
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Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:
- For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
- For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.
MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”
Can a power of attorney be revoked in applications filed before September 16, 2012?
Yes, a power of attorney can be revoked in applications filed before September 16, 2012. The MPEP 402.02(b) states:
“A power of attorney may be revoked at any stage in the proceedings of a case.”
The revocation process for pre-September 16, 2012 applications involves the following:
- The revocation must be in writing.
- It must be signed by the applicant or the assignee of the entire interest of the applicant.
- The revocation is not effective until it is accepted by the Office.
It’s important to note that revoking a power of attorney does not automatically grant power to a new attorney. A new power of attorney must be filed to appoint a new representative.
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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.
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For more information on revocation, visit: revocation.
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The revocation of a power of attorney must be done in writing and cannot be accomplished through informal means such as telephone or email. The MPEP 402.05 states:
A power of attorney may not be revoked by a telephone call.
While this quote specifically mentions telephone calls, the same principle applies to emails or other informal communications. To properly revoke a power of attorney, applicants must submit a written revocation document or a new power of attorney that complies with the requirements set forth in MPEP 402. This ensures that the revocation is properly documented and effective in the patent application process.
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Yes, a power of attorney can be revoked by fewer than all of the applicants, but with certain conditions. According to MPEP 402.05:
‘A power of attorney may be revoked by fewer than all of the applicants (or fewer than all patent owners in a reexamination proceeding or supplemental examination proceeding) if the power was granted by fewer than all of the applicants or patent owners.’
This means:
- If the original power of attorney was granted by all applicants, it must be revoked by all applicants.
- If the original power was granted by a subset of applicants, that same subset can revoke it.
- In cases of joint inventors, careful consideration must be given to who originally granted the power.
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No, a power of attorney cannot be partially revoked for specific patent applications. The MPEP 402.05 states:
‘A principal cannot revoke selected powers of the power of attorney while leaving other powers in effect.’
This means that when revoking a power of attorney, it must be revoked in its entirety for all applications and patents to which it was applied. If you wish to maintain representation for certain applications while revoking others, you would need to file a new power of attorney for those specific applications you want to keep under representation.
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Can a power of attorney be granted to a foreign patent attorney or agent?
In general, a power of attorney in U.S. patent applications can only be granted to practitioners who are registered to practice before the USPTO. According to MPEP 402.02:
“The Office cannot recognize more than one power of attorney in an application at any given time. However, a registered attorney or agent may be appointed in a representative capacity under 37 CFR 1.34 in addition to any power of attorney that may be in effect.”
While foreign patent attorneys or agents cannot be directly granted power of attorney, they can work with U.S. registered practitioners who can be appointed. Additionally, foreign attorneys can be recognized as representatives under 37 CFR 1.34 for limited purposes, such as filing papers or receiving Office communications.
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Can a power of attorney be granted to a foreign attorney or agent for US patent applications?
A power of attorney for US patent applications can only be granted to individuals who are registered to practice before the USPTO. Foreign attorneys or agents who are not registered with the USPTO cannot be granted power of attorney.
According to MPEP 402: “The Office cannot recognize more than one power of attorney or authorization to act in a representative capacity in a particular application or patent at any given time.” This means that only USPTO-registered practitioners can be given power of attorney.
However, foreign attorneys can work with US-registered patent practitioners who can be granted power of attorney. The foreign attorney can then collaborate with the US-registered practitioner to manage the application.
For more information on power of attorney, visit: power of attorney.
Generally, papers giving or revoking a power of attorney in an application require signatures from all applicants or owners. However, there are exceptions:
- For revocation: A petition under 37 CFR 1.36(a) with a fee and showing of sufficient cause is required.
- For appointment: A petition under 37 CFR 1.183 with a fee, demonstrating an extraordinary situation where justice requires waiver of the requirement in 37 CFR 1.32(b)(4), is necessary.
As stated in the MPEP: “Papers giving or revoking a power of attorney in an application generally require signature by all the applicants or owners of the application.”
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Yes, a petition under 37 CFR 1.47(a) can be filed for multiple unavailable inventors. The MPEP 409.03(b) states:
‘Where there are joint inventors, each nonsigning inventor must be petitioned for separately, even if more than one nonsigning inventor is unavailable.’
This means that while a single petition can cover multiple unavailable inventors, the petition must address each inventor individually, providing specific information and evidence for each one’s unavailability.
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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.
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No, a patent practitioner acting in a representative capacity cannot represent only some of the applicants in a joint application. According to MPEP 402.04, when a patent practitioner files a paper in an application filed on or after September 16, 2012, they must be submitting the paper on behalf of all parties identified as the applicant.
The MPEP explicitly states: “The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant.”
For example, if there are three joint inventors who disagree about how to proceed with the application, a patent practitioner representing only one inventor cannot file papers to the exclusion of the other joint inventors. Similarly, when there are multiple assignees identified as the applicant, a patent practitioner cannot file papers on behalf of only some of the parties.
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Yes, a registered patent practitioner who is not of record can conduct an interview if they have proper authorization from the applicant. According to MPEP 405:
Interviews may be conducted with a registered practitioner who has proper authority from the applicant, or an attorney or agent of record in the form of a power of attorney or authorization to act in a representative capacity, whether or not the practitioner has a copy of the application file.
The practitioner can show authorization by completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A) or using Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’.
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.
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No, a patent practitioner cannot appoint a substitute to take over their cases after death. The MPEP 406 clearly states: “The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.” This means that any arrangements made by a practitioner for a substitute after their death will not be valid in the eyes of the USPTO.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO policy, visit: USPTO policy.
No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.
(MPEP 406)
Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:
Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.
For more information on patent filing, visit: patent filing.
For more information on USPTO procedures, visit: USPTO procedures.
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.
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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.
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Can a patent application be filed if the sole inventor is deceased?
Yes, a patent application can be filed even if the sole inventor is deceased. The MPEP 409.03(b) provides guidance on this situation:
“When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or assignee of the deceased inventor.”
In such cases, the legal representative (such as an executor or administrator of the inventor’s estate) can file the application on behalf of the deceased inventor. They must provide proof of their authority to act on behalf of the deceased inventor’s estate, typically in the form of Letters Testamentary or Letters of Administration.
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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.
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Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
No, a partial assignee cannot file a patent application as the sole applicant. The MPEP clarifies this point:
Because all parties having any portion of ownership in a patent property must act together as a composite entity in patent matters before the Office, a partial assignee (e.g., a party who owns 50% of the interest) cannot on its own file a patent application as the applicant.
This means that if multiple parties have ownership interests in the invention, they must act together to file the patent application. For more information on joint ownership, see MPEP § 301.
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A nonsigning inventor who subsequently joins an application cannot revoke or grant a power of attorney in certain situations. MPEP 402.05(a) explains:
37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
This means that if a nonsigning inventor later submits an oath or declaration in an application filed under specific circumstances (such as joint inventors, deceased or legally incapacitated inventors, or assignee filing), they cannot use this submission to revoke an existing power of attorney or grant a new one.
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In a pre-AIA 37 CFR 1.47 application, a nonsigning inventor has limited rights regarding the power of attorney. According to MPEP 402.05(b):
A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.
This means that while a nonsigning inventor can later join the application by submitting the required oath or declaration, they do not have the authority to unilaterally revoke or grant a power of attorney. Any such action would require the agreement of the original pre-AIA 37 CFR 1.47 applicant.
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Yes, a nonsigning inventor can join a pre-AIA 37 CFR 1.47 application. However, there are specific requirements and limitations to this process.
According to MPEP 409.03(i):
“A nonsigning inventor may join in a pre-AIA 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate pre-AIA 37 CFR 1.63 oath or declaration.”
It’s important to note that even if the nonsigning inventor joins the application, they have limited powers. The MPEP further states:
“Even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the 37 CFR 1.47 applicant.”
This means that while the nonsigning inventor can become part of the application, they do not gain full control over it and must still work in agreement with the original applicant.
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Can a non-inventor appoint a power of attorney in a pre-September 16, 2012 application?
Yes, under certain circumstances, a non-inventor can appoint a power of attorney in applications filed before September 16, 2012. The MPEP 402.02(b) states:
If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.
This means that a non-inventor, such as an assignee or other party with proper authority, can appoint a power of attorney if:
- No power of attorney is currently on file
- They provide proper documentation showing ownership or authority to act on behalf of all applicants
- They follow the same rules that would apply to inventors appointing a power of attorney
It’s important to note that the non-inventor must have the authority to act for all applicants, not just some of them.
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Can a non-attorney represent an applicant before the USPTO?
Yes, a non-attorney can represent an applicant before the USPTO under certain circumstances. According to MPEP 402.04, there are specific provisions for non-attorney representation:
- Patent agents: Registered patent agents who are not attorneys can represent applicants in patent matters before the USPTO.
- Limited recognition: Individuals granted limited recognition by the USPTO Director can represent applicants in specific patent matters.
- Pro se representation: Applicants can represent themselves (pro se) in their own patent applications.
However, it’s important to note that “Effective September 16, 2012, any paper submitted on behalf of a juristic entity must be signed by a patent practitioner.” This means that corporations and other non-human entities must be represented by a registered patent practitioner, who may be either a patent attorney or a patent agent.
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Yes, a new patent practitioner can be appointed after the death of the previous one. The USPTO explicitly states in Form Paragraph 4.03: A new registered attorney or agent may be appointed.
This allows the applicant or patent owner to ensure continued representation in patent matters following the death of their previous practitioner.
Can a legal representative use an S-signature for patent documents?
Yes, a legal representative can use an S-signature for patent documents, provided they meet the following requirements:
- The S-signature must be inserted between forward slash marks
- The signer’s name must be presented in printed or typed form
- The capacity of the signer must be included with the signature
The MPEP 402.03 states: ‘When an S-signature is employed in a document filed with the Office in connection with a patent or application, it must be accompanied by the printed or typed name of the signer. The number and qualification of persons required to execute a particular document are governed by the statute requiring the document and applicable regulations.’
For legal representatives, it’s crucial to include their capacity (e.g., attorney, agent) along with their S-signature to ensure compliance with USPTO requirements.
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Can a legal representative sign the oath or declaration for an unavailable joint inventor?
Yes, in certain circumstances, a legal representative can sign the oath or declaration for an unavailable joint inventor. According to MPEP 409.03(a):
‘If an inventor is deceased or legally incapacitated, the legal representative of the inventor may sign the oath or declaration as the inventor.’
The legal representative must provide proof of their authority to act on behalf of the unavailable inventor. This might include:
- Death certificate and letters testamentary for a deceased inventor
- Court order appointing a guardian for a legally incapacitated inventor
It’s important to note that this provision applies only to deceased or legally incapacitated inventors, not to those who are simply unavailable or unwilling to sign.
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Yes, a legal representative can sign patent documents on behalf of the inventor under certain circumstances. The MPEP 402.03 states:
Where a power of attorney or authorization of agent is given to a customer number, a practitioner must sign the correspondence if an applicant is to be represented.
This means that if a power of attorney has been granted, the authorized practitioner can sign documents on behalf of the inventor. However, it’s important to note that certain documents, such as the inventor’s oath or declaration, must still be signed by the inventor personally unless specific conditions are met (e.g., the inventor is deceased, legally incapacitated, or cannot be found after diligent effort).
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Can a juristic entity appoint a power of attorney in a patent application?
Yes, a juristic entity (such as a corporation or organization) can appoint a power of attorney in a patent application. However, there are specific requirements for doing so:
- The power of attorney must be signed by a person authorized to act on behalf of the juristic entity
- The person signing must have apparent authority to bind the juristic entity
The MPEP provides guidance on this matter:
A power of attorney from a juristic entity must be signed by a person authorized to act on behalf of the juristic entity. […] A power of attorney to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest of the applicant is the power of attorney of the applicant or assignee, not the power of attorney of the practitioner.
(MPEP 402.02(a))
It’s important to note that the power of attorney belongs to the juristic entity, not to the practitioner who is appointed.
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Can a juristic entity applicant sign a power of attorney form for a patent application?
No, a juristic entity applicant (such as a corporation or organization) cannot directly sign a power of attorney form for a patent application. Instead, the power of attorney must be signed by a person authorized to act on behalf of the juristic entity.
According to MPEP 402.02(a):
“A power of attorney must be signed by the applicant for patent (37 CFR 1.42) or the patent owner (for reissue applications or reexamination proceedings). A power of attorney may only be signed by the applicant for patent (37 CFR 1.42) or the patent owner of record of the entire interest or their representative. An applicant for patent that is the assignee must comply with 37 CFR 3.71 and 3.73 to establish ownership of the application.”
For juristic entity applicants, this typically means that an officer or employee of the organization who has the authority to bind the organization must sign the power of attorney. This could be a CEO, president, or other authorized representative of the company.
It’s important to note that the person signing on behalf of a juristic entity should also provide their title or position within the organization to demonstrate their authority to act on behalf of the applicant.
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Can a joint inventor apply for a patent if another joint inventor is unavailable or refuses to join?
Yes, a joint inventor can apply for a patent even if another joint inventor is unavailable or refuses to join the application. The MPEP 409 states: ‘If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor.’
The process involves:
- Filing the application on behalf of all inventors
- Submitting a petition under 37 CFR 1.45
- Providing proof of the unavailability or refusal of the non-signing inventor
- Including an oath or declaration by the participating inventor(s)
This provision ensures that the patent application process can proceed even when not all joint inventors are available or willing to participate.
For more information on joint inventors, visit: joint inventors.
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.
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Can a deceased inventor’s legal representative sign an assignment for a patent application?
Yes, a deceased inventor’s legal representative can sign an assignment for a patent application. According to MPEP 409.01(a):
“The legal representative (executor, administrator, etc.) of a deceased inventor may make an assignment of the deceased inventor’s rights in the application as well as sign the substitute statement. See MPEP § 409.01(b).”
This provision allows the legal representative to manage the deceased inventor’s intellectual property rights, including assigning those rights to other parties. It’s important to note that the legal representative must have proper authority to act on behalf of the deceased inventor’s estate, which typically requires documentation such as letters testamentary or letters of administration.
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Can a Customer Number be used for multiple patent applications?
Yes, a Customer Number can be used for multiple patent applications. This is one of the primary benefits of the Customer Number system. The MPEP 403 states:
‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’
This means that:
- A single Customer Number can be associated with multiple patent applications
- Changes to the correspondence address or list of registered practitioners can be made once and applied to all linked applications
- It simplifies portfolio management for applicants and law firms handling multiple patents
Using a Customer Number for multiple applications streamlines communication with the USPTO and helps ensure consistent handling of related patent matters.
For more information on Customer Number, visit: Customer Number.
Yes, a corporation can file a patent application under pre-AIA 37 CFR 1.47(b). The MPEP explicitly states that “Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration.”
Additionally, “A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf.” However, proper authorization or proof of authority may be required in such cases.
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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.
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Yes, there are significant restrictions on contacting patent practitioners who are not of record for a patent application. According to MPEP § 408, Registered attorneys or agents not of record in a patent application (i.e., there is no power of attorney present in the file that appoints the patent practitioner(s)) and acting in a representative capacity under 37 CFR 1.34 should not be contacted for restriction requirements or approval of examiner’s amendments.
This policy is in place to ensure that only properly authorized representatives are involved in making decisions about patent applications. For more information on interviews with patent practitioners not of record, refer to MPEP § 405.
Yes, there are strict restrictions on communicating with unregistered, suspended, or excluded attorneys regarding patent applications. The MPEP clearly states:
Office employees are forbidden from holding either oral or written communication with an unregistered, suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant.
This rule helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in patent-related communications with the USPTO.
Yes, there are exceptions to the requirement for all applicants to sign power of attorney documents. The MPEP provides one specific exception:
“In an application filed under pre-AIA 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who has signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183.”
This exception applies to applications filed before the America Invents Act (AIA) under specific circumstances. However, it’s important to note that this exception does not apply in all cases. The MPEP also states:
“However, in applications accepted under pre-AIA 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the application will not be granted.”
For more information on these exceptions, refer to MPEP § 402.07 and MPEP § 409.03(i).
To learn more:
Yes, juristic entities (e.g., organizational assignees) must be represented by a patent practitioner. As stated in MPEP 401:
An applicant who is a juristic entity must be represented by a patent practitioner.
This requirement ensures that organizations have proper legal representation when navigating the complex patent application process. Individual inventors and joint inventors, however, may represent themselves if they choose to do so.
For more information on juristic entity, visit: juristic entity.
For more information on organizational assignee, visit: organizational assignee.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.
No, nonsigning inventors are not entitled to a hearing in pre-AIA 37 CFR 1.47 cases. This is explicitly stated in MPEP 409.03(i):
“A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972))”
This precedent, set by the case of Cogar v. Schuyler, establishes that while nonsigning inventors have certain rights, such as inspecting application papers and making their position of record, they do not have the right to a formal hearing in these cases.
Additionally, the MPEP states:
“While the U.S. Patent and Trademark Office will grant the nonsigning inventor access to the application, inter partes proceedings will not be instituted in a pre-AIA 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm’r Pat. 1955).”
This further emphasizes that while nonsigning inventors have access to application information, they cannot initiate inter partes proceedings, which would include hearings, in pre-AIA 37 CFR 1.47 cases.
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MPEP 401 - U.S. Patent and Trademark Office Cannot Aid in Selection of Patent Practitioner (8)
A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:
“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”
However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.
Risks of Self-Representation in Patent Applications
While individuals can file pro se patent applications, there are several risks to consider:
- Lack of expertise: Patent law is complex, and lack of familiarity with examination practices may result in missed opportunities for optimal protection.
- Potential sanctions: According to MPEP 401, pro se applicants are subject to the same certifications and potential sanctions as represented applicants:
In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).
Given these risks, the USPTO may suggest hiring a registered patent practitioner if they notice an applicant is unfamiliar with the process and the application contains potentially patentable subject matter.
For more information on pro se, visit: pro se.
For more information on self-representation, visit: self-representation.
A juristic entity, in the context of patent applications, typically refers to an organizational assignee such as a company or corporation. According to MPEP 401, juristic entities have special requirements:
“An applicant who is a juristic entity must be represented by a patent practitioner.”
This means that companies or other organizational entities cannot represent themselves in patent applications and must hire a registered patent attorney or agent to act on their behalf.
Pro se applicants make important certifications when filing patent applications. According to MPEP 401:
“In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).”
These certifications include statements about the truthfulness of the application, that it is not being presented for improper purposes, and that claims are warranted by existing law or a good faith argument for changing the law.
The USPTO provides several ways to find a registered patent attorney or agent, as mentioned in MPEP 401:
- Visit the USPTO website: www.uspto.gov/FindPatentAttorney for a searchable listing of registered practitioners.
- Write to the Office of Enrollment and Discipline (OED) to request a list of registered patent practitioners in your area:
Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
These resources can help you locate a qualified patent professional to assist with your patent application.
No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:
- A listing is available at www.uspto.gov/FindPatentAttorney
- Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)
Yes, in most cases. According to MPEP 401, “An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office.” However, there are important considerations:
- Juristic entities (e.g., companies) must be represented by a patent practitioner
- Pro se applicants are subject to the same rules and potential sanctions as represented applicants
- Lack of familiarity with patent procedures may result in missed opportunities for optimal protection
Yes, juristic entities (e.g., organizational assignees) must be represented by a patent practitioner. As stated in MPEP 401:
An applicant who is a juristic entity must be represented by a patent practitioner.
This requirement ensures that organizations have proper legal representation when navigating the complex patent application process. Individual inventors and joint inventors, however, may represent themselves if they choose to do so.
For more information on juristic entity, visit: juristic entity.
For more information on organizational assignee, visit: organizational assignee.
MPEP 402 - Power of Attorney; Naming Representative (12)
For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.
As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”
In patent applications, both attorneys and agents can represent applicants before the USPTO, but there are important distinctions:
- Patent Attorney: A lawyer who has passed both a state bar exam and the USPTO’s patent bar exam. They can practice law and provide legal advice beyond patent prosecution.
- Patent Agent: An individual who has passed the USPTO’s patent bar exam but is not a licensed attorney. They can represent clients before the USPTO for patent matters but cannot practice law or provide other legal services.
The MPEP 402 refers to both as ‘patent practitioners’: ‘The term ‘patent practitioner’ as used in this chapter includes patent attorneys and patent agents.’ Both can receive power of attorney and represent applicants in patent matters before the USPTO, but only patent attorneys can offer broader legal counsel.
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
To revoke a power of attorney in a patent application:
- The applicant or assignee of the entire interest must submit a revocation signed by them.
- The revocation should be submitted to the USPTO in writing.
- It can be done by filing a new power of attorney (Form PTO/AIA/82) and checking the revocation box.
- Alternatively, you can submit a document specifically revoking the previous power of attorney.
As stated in the MPEP 402: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ It’s important to note that revoking a power of attorney does not remove attorneys from the list of patent practitioners associated with an application. To do that, you must file a separate request.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
An attorney or agent who has been given power of attorney can withdraw by submitting a request to the USPTO. According to MPEP 402.06:
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“A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director.”
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The request should briefly state the reason(s) for withdrawal. If based on issues like lack of compensation, it’s recommended to cite “irreconcilable differences” to maintain client confidentiality. The withdrawal is effective when approved by the USPTO, not when received.
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Practitioners must take steps to protect the client’s interests when withdrawing, such as giving reasonable notice and allowing time to hire new counsel. The Request for Withdrawal As Attorney or Agent form (PTO/AIA/83) can be used.
For more information on patent representation, visit: patent representation.
For more information on power of attorney, visit: power of attorney.
How can an applicant revoke a power of attorney?
An applicant can revoke a power of attorney by submitting a new power of attorney (Form AIA/82 for applications filed on or after September 16, 2012, or Form PTO/SB/80 for applications filed before September 16, 2012) or by submitting a revocation signed by the applicant. As stated in the MPEP:
“A power of attorney may be revoked at any stage in the proceedings of a case, and an applicant may appoint a new attorney or agent at any stage in the proceedings of the case by filing a new power of attorney.” (MPEP 402)
It’s important to note that the revocation should be clear and unambiguous, and it should be submitted to the USPTO for proper processing.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
A registered patent attorney or agent who has been given a power of attorney may withdraw as attorney or agent of record by submitting a request to the USPTO. The process involves:
- Filing a request for withdrawal with the USPTO
- Obtaining approval from the Director of the USPTO
- Notifying the applicant or patent owner of the withdrawal
MPEP 402.06 states: “When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request.”
The practitioner must also take steps to protect the client’s interests, such as giving reasonable notice and allowing time for the client to find new representation.
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.
Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:
- For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
- For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.
MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”
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 power of attorney be granted to a foreign attorney or agent for US patent applications?
A power of attorney for US patent applications can only be granted to individuals who are registered to practice before the USPTO. Foreign attorneys or agents who are not registered with the USPTO cannot be granted power of attorney.
According to MPEP 402: “The Office cannot recognize more than one power of attorney or authorization to act in a representative capacity in a particular application or patent at any given time.” This means that only USPTO-registered practitioners can be given power of attorney.
However, foreign attorneys can work with US-registered patent practitioners who can be granted power of attorney. The foreign attorney can then collaborate with the US-registered practitioner to manage the application.
For more information on power of attorney, visit: power of attorney.
MPEP 403 - Correspondence — With Whom Held; Customer Number Practice (19)
What is the significance of a customer number in USPTO correspondence?
A customer number is a crucial tool for managing correspondence with the USPTO. According to MPEP 403:
‘A customer number allows an applicant, attorney or agent to easily change the correspondence address for a number of applications or patents by simply requesting a change to the address associated with the customer number.’
Key benefits of using a customer number include:
- Streamlined correspondence management for multiple applications
- Easy updates to address information
- Efficient access to application information through USPTO systems
By using a customer number, patent professionals can significantly simplify their administrative processes when dealing with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
What is the purpose of a Customer Number in USPTO correspondence?
A Customer Number is a unique identifier assigned by the USPTO to simplify and streamline patent correspondence. According to the MPEP 403, ‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’ This system allows for:
- Easy updates to correspondence addresses for multiple applications
- Efficient management of power of attorney
- Simplified access to private PAIR (Patent Application Information Retrieval) for registered practitioners
By using a Customer Number, patent applicants and their representatives can more effectively manage their patent portfolios and communications with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
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.
The Customer Number practice allows applicants to:
- Designate the correspondence address of a patent application or patent
- Designate the fee address of a patent
- Submit a list of practitioners who have power of attorney
Using a Customer Number allows applicants to easily change the correspondence address, fee address, or list of practitioners for multiple applications or patents by simply changing the information associated with the Customer Number.
According to MPEP 403: “A Customer Number (previously a ‘Payor Number’) may be used to: (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i)); (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).”
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.
A customer number is a unique identifier assigned by the USPTO to simplify patent correspondence. According to MPEP 403:
‘A customer number allows a patent applicant, patent owner, or assignee to designate a single correspondence address for all applications and patents associated with that customer number.’
Benefits of using a customer number include:
- Easier management of correspondence addresses for multiple applications
- Simplified process for changing the address or representative for all linked applications
- Improved efficiency in USPTO communications
To obtain a customer number, you need to file a request with the USPTO using the appropriate form.
For more information on Customer Number, visit: Customer Number.
For more information on patent correspondence, visit: patent correspondence.
For more information on USPTO, visit: USPTO.
If a patent application is filed without a correspondence address:
- The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
- If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
- Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
- The applicant has 2 months from the filing date to complete the application before it is abandoned.
According to MPEP 403: “If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. … If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.”
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
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.”
When two patent practitioners are appointed for the same application:
- If appointed simultaneously, the applicant should specify which address to use for correspondence.
- If a second practitioner is added later, correspondence will be sent to the most recently provided correspondence address.
- A new power of attorney appointing only the second practitioner effectively revokes the power of the first practitioner.
According to MPEP 403.02: “If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. … If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. … 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.”
How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?
When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:
- The correspondence address in the ADS takes precedence if filed with the initial application papers.
- A customer number provided in a single paper with a clear power of attorney overrides the ADS.
- If no power of attorney is filed, the correspondence address in the ADS is used.
The MPEP states:
Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record.
(MPEP 403)
It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.
For more information on application data sheet, visit: application data sheet.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO, visit: USPTO.
How does the USPTO handle correspondence for applications with multiple attorneys or agents?
When an application has multiple attorneys or agents of record, the USPTO follows specific guidelines for correspondence:
- The USPTO will direct all correspondence to the first named attorney or agent of record, unless otherwise specified.
- If a customer number is provided, correspondence will be sent to the address associated with that customer number.
- Applicants can designate one or more attorneys or agents to receive correspondence by filing a power of attorney or including the information in an application data sheet.
As stated in the MPEP:
If applicant provides, in a single paper, a list of patent practitioners and a correspondence address without also filing a clear power of attorney to a patent practitioner, the Office will direct all correspondence to the correspondence address pursuant to 37 CFR 1.33(a).
(MPEP 403)
It’s important to clearly designate correspondence preferences to ensure proper communication with the USPTO.
For more information on patent agents, visit: patent agents.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO correspondence, visit: USPTO correspondence.
How does the USPTO handle correspondence for applications with multiple applicants?
The USPTO has specific rules for handling correspondence in applications with multiple applicants:
- For applications filed on or after September 16, 2012, the USPTO will direct correspondence to the first named applicant, unless a practitioner is appointed.
- For applications filed before September 16, 2012, correspondence is sent to the first named inventor, unless a practitioner is of record.
As stated in MPEP 403: ‘Where more than one attorney or agent is of record, the Office will direct correspondence to the first named attorney or agent of record, unless otherwise requested.’ This ensures clear communication channels for multi-applicant applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO has specific procedures for handling changes in power of attorney and correspondence address. According to MPEP 403:
‘A new power of attorney or change of correspondence address filed in a patent application or patent does not change the correspondence address for any other application or patent.’
Key points to remember:
- Each application or patent is treated separately.
- A change in one application doesn’t automatically apply to others, even if filed by the same applicant or assignee.
- To change multiple applications, you must file separate requests for each one.
- Using a customer number can simplify this process for multiple applications.
It’s crucial to ensure that any changes are properly filed and recorded to maintain effective communication with the USPTO.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
How do I update the list of practitioners associated with a Customer Number?
To update the list of practitioners associated with a Customer Number, follow these steps:
- Complete the Change of Correspondence Address Form (PTO/SB/122)
- Provide the Customer Number and the updated list of registered practitioners
- Submit the form to the USPTO
The MPEP 403 specifies:
‘A request to change the correspondence address or list of registered practitioners associated with a Customer Number must be made in writing.’
It’s important to note that:
- Only registered practitioners can be added to a Customer Number
- Changes will affect all applications associated with the Customer Number
- The USPTO recommends using the online Electronic Business Center (EBC) for faster processing
Keeping the practitioner list up-to-date ensures proper communication and representation for all linked patent applications.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
How can I change the correspondence address for multiple patent applications?
Changing the correspondence address for multiple patent applications can be efficiently done using the USPTO’s Customer Number practice. Here’s how:
- Obtain a customer number if you don’t already have one.
- Associate your patent applications with the customer number.
- Update the address linked to the customer number.
The MPEP explains:
A Customer Number may be used to: … (2) change the correspondence address, fee address, or list of practitioners of record for a plurality of applications or patents through a single request.
(MPEP 403)
This process eliminates the need to file separate change of address forms for each application, saving time and reducing the risk of errors. To make changes, use the USPTO’s Electronic Filing System (EFS-Web) or file a written request with the USPTO.
For more information on Customer Number, visit: Customer Number.
Generally, the USPTO maintains only one correspondence address for each patent application. As stated in MPEP 403:
‘The Office will direct all notices, official letters, and other communications relating to the application to a single correspondence address.’
However, there are exceptions:
- Powers of attorney to different practitioners may be present in an application, but only one correspondence address is recognized.
- In reexamination proceedings, a ‘duplicate copy’ may be sent to a different address.
- Maintenance fee reminders may be sent to a ‘fee address’ that differs from the correspondence address.
It’s important to note that while multiple addresses may be associated with an application for specific purposes, the USPTO will generally communicate with only one primary correspondence address.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO, visit: USPTO.
Can a Customer Number be used for multiple patent applications?
Yes, a Customer Number can be used for multiple patent applications. This is one of the primary benefits of the Customer Number system. The MPEP 403 states:
‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’
This means that:
- A single Customer Number can be associated with multiple patent applications
- Changes to the correspondence address or list of registered practitioners can be made once and applied to all linked applications
- It simplifies portfolio management for applicants and law firms handling multiple patents
Using a Customer Number for multiple applications streamlines communication with the USPTO and helps ensure consistent handling of related patent matters.
For more information on Customer Number, visit: Customer Number.
MPEP 404 - [Reserved] (6)
Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:
- To maintain consistent numbering across editions
- To allow for future expansion of content
- To accommodate planned updates or revisions
- To serve as placeholders for potential new topics or guidance
This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.
If you need information related to a topic that corresponds to a reserved MPEP section, such as MPEP 404, follow these steps:
- Check other relevant sections of the MPEP that may cover related topics
- Consult the USPTO’s official website for guidance documents and notices
- Review recent patent laws and regulations that may address the topic
- Contact the USPTO’s Patent Electronic Business Center for assistance
- Consult with a registered patent attorney or agent for professional advice
Remember that reserved sections do not contain any official information, so it’s crucial to seek guidance from active, authoritative sources.
MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.
The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:
- Changes in patent laws or regulations
- New court decisions affecting patent examination
- Evolving USPTO policies and procedures
- Feedback from patent examiners and practitioners
Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.
The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:
- They maintain consistent numbering in the MPEP, aiding navigation and referencing
- They allow for future expansion of examination guidelines without major restructuring
- They serve as potential indicators of areas where the USPTO may develop new policies or procedures
Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.
Patent practitioners should not rely on information from reserved MPEP sections, as these sections do not contain any official guidance or information. A reserved section, such as MPEP 404, is essentially a placeholder and does not provide any substantive content. Practitioners should instead:
- Refer to active, non-reserved sections of the MPEP
- Consult the most recent USPTO guidelines and notices
- Stay updated on changes to patent laws and regulations
- Seek guidance from official USPTO sources when needed
It’s important to always use the most current and official information when dealing with patent matters.
MPEP 405 - Interviews With Patent Practitioner Not of Record (13)
The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:
See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.
This reference to MPEP § 402.03 suggests that there are certain circumstances where an attorney or agent not of record may be allowed to change the correspondence address or grant access to application information. For specific details, it’s recommended to consult MPEP § 402.03 directly.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO procedures, visit: USPTO procedures.
What is the procedure for an examiner to verify an attorney’s authority during an interview?
When conducting an interview with an attorney or agent who is not of record, the examiner must follow a specific procedure to verify their authority. According to MPEP 405:
If an attorney or agent not of record in an application contacts an examiner for an interview, the examiner may grant the interview if the attorney or agent presents an authorization from the practitioner of record, or presents a signed power of attorney or a paper authorizing them to act as associate or agent.
The examiner should:
- Ask for an authorization from the practitioner of record
- Accept a signed power of attorney
- Accept a paper authorizing the attorney or agent to act as an associate or agent
If none of these are available, the examiner should decline the interview unless the attorney or agent is willing to conduct the interview with the inventor present.
For more information on USPTO procedures, visit: USPTO procedures.
Unpublished patent applications are subject to confidentiality requirements under 35 U.S.C. 122(a). MPEP 405 addresses this in the context of interviews:
However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the authorized attorney or agent to maintain confidentiality.
There are two main forms that can be used to authorize a patent practitioner for an interview:
- Applicant Initiated Interview Request Form (PTOL-413A)
- Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’
According to MPEP 405:
Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
Additionally:
Alternatively, Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ which is available from the USPTO website at www.uspto.gov/sites/default/files/web/forms/sb0084.pdf may be used to establish the authority to conduct an interview.
What are the requirements for a registered practitioner to obtain access to an application?
According to MPEP 405, a registered practitioner may obtain access to an application if they fulfill the following requirements:
- The practitioner must be acting in a representative capacity
- The practitioner must have proper authority from the applicant or attorney or agent of record
- Written consent from the applicant, attorney, or agent of record must be provided
The MPEP states: ‘Access will be given to the entire application file history in the absence of a specific request from the authorizing party for only a portion of the file.’ This means that unless specified otherwise, the practitioner will be granted full access to the application file.
For more information on application access, visit: application access.
For more information on registered practitioner, visit: registered practitioner.
For more information on USPTO procedures, visit: USPTO procedures.
For unpublished patent applications, confidentiality is a critical concern. The MPEP states:
An interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the attorney or agent to maintain confidentiality. The examiner cannot disclose any information from the application file that hasn’t been supplied by the practitioner.
For more information on unpublished applications, visit: unpublished applications.
Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
Can an inventor’s attorney conduct an interview without a power of attorney?
Yes, an inventor’s attorney can conduct an interview without a power of attorney under certain conditions. The MPEP 405 provides guidance on this matter:
Interviews may be granted to an attorney or agent who is not of record in an application if the conditions of 37 CFR 1.33(b)(3) are satisfied.
This means that if the attorney or agent complies with the requirements set forth in 37 CFR 1.33(b)(3), they can conduct an interview even without a formal power of attorney. These requirements typically include providing evidence of their authority to act on behalf of the applicant.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO procedures, visit: USPTO procedures.
No, a third party or its representative cannot use the provisions of 37 CFR 1.34 to conduct an interview or take other actions not specifically permitted by the rules of practice. MPEP 405 states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that attempting to use 37 CFR 1.34 for unauthorized actions could lead to disciplinary consequences for registered practitioners.
Generally, third parties are not permitted to conduct interviews or take actions in patent applications. The MPEP clearly states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that only authorized representatives (such as registered attorneys or agents with proper authorization) can conduct interviews or take actions on behalf of the applicant. Third parties attempting to do so may face disciplinary action, especially if they are registered practitioners.
For more information on disciplinary action, visit: disciplinary action.
For more information on patent interviews, visit: patent interviews.
Yes, registered patent practitioners can file papers in patent applications and reexamination proceedings without being of record. MPEP 405 states:
Papers may be filed in patent applications and reexamination proceedings by registered attorneys or agents not of record under 37 CFR 1.34. Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the practitioner is implicitly stating they have authorization to act on behalf of the applicant, even if they are not officially recorded as the attorney or agent of record.
Yes, a registered patent practitioner who is not of record can conduct an interview if they have proper authorization from the applicant. According to MPEP 405:
Interviews may be conducted with a registered practitioner who has proper authority from the applicant, or an attorney or agent of record in the form of a power of attorney or authorization to act in a representative capacity, whether or not the practitioner has a copy of the application file.
The practitioner can show authorization by completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A) or using Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’.
Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:
Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.
For more information on patent filing, visit: patent filing.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 406 - Death of Patent Practitioner (13)
After the USPTO is notified of a patent practitioner’s death, correspondence is sent to two parties:
- The office of the deceased practitioner
- The person who originally appointed the deceased patent practitioner
This dual notification ensures that both the practitioner’s office and the original appointer are aware of ongoing patent matters and can take appropriate action.
When issuing Office actions after being notified of a patent practitioner’s death, the USPTO includes a special notation. The MPEP 406 instructs examiners to add form paragraph 4.03, which states:
“Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.”
This notation informs all parties of the practitioner’s death and the need for new representation.
For more information on Form Paragraph 4.03, visit: Form Paragraph 4.03.
The USPTO, through its Office of Enrollment and Discipline, provides valuable resources to client-applicants when their patent practitioner dies. The MPEP 406 states:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This list serves as a crucial resource, helping client-applicants find new representation to continue their patent prosecution process without significant delays.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO Resources, visit: USPTO Resources.
Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
When a patent practitioner dies, their power of attorney is automatically revoked or terminated. According to the MPEP, The power of attorney of a patent practitioner will be revoked or terminated by his or her death.
(MPEP 406)
When a patent practitioner dies, the law firm should take the following actions:
- Promptly notify the USPTO’s Office of Enrollment and Discipline (OED) of the practitioner’s death.
- Inform clients with pending applications about the situation and the need to appoint a new representative.
- Assist clients in filing new powers of attorney or authorizations of agent for pending applications.
- Provide the USPTO with updated correspondence addresses for affected applications.
The MPEP 406 states: ‘When it is known that the attorney or agent of record in an application is deceased, the Office should be promptly notified.’ This notification helps ensure a smooth transition and continued proper handling of patent applications.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
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.
According to MPEP 406, the USPTO follows a specific procedure to notify client-applicants:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This notification ensures that the client-applicant is aware of the situation and has resources to find new representation if needed.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.
No, a patent practitioner cannot appoint a substitute to take over their cases after death. The MPEP 406 clearly states: “The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.” This means that any arrangements made by a practitioner for a substitute after their death will not be valid in the eyes of the USPTO.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO policy, visit: USPTO policy.
No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.
(MPEP 406)
Yes, a new patent practitioner can be appointed after the death of the previous one. The USPTO explicitly states in Form Paragraph 4.03: A new registered attorney or agent may be appointed.
This allows the applicant or patent owner to ensure continued representation in patent matters following the death of their previous practitioner.
MPEP 407 - Suspended or Excluded Patent Practitioner (15)
When there’s no attorney of record, the signatories for patent application papers depend on the filing date and the applicant type. For applications filed before September 16, 2012, MPEP § 407 states: “All papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34.”
For applications filed on or after September 16, 2012: “All papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.”
When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:
For applications filed before September 16, 2012:
- All named applicants
- Assignee of record of an undivided part interest, along with named applicants retaining an interest
- Assignee of the entire interest
- A registered patent attorney or agent not of record acting under 37 CFR 1.34
For applications filed on or after September 16, 2012:
- A patent practitioner of record
- A patent practitioner not of record acting under 37 CFR 1.34
- The applicant (except for juristic entity applicants, which require a patent practitioner)
This information is provided in Form Paragraph 4.07 of MPEP § 407.
If an applicant’s patent attorney or agent is suspended, they should take the following steps:
- File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
- Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
- If necessary, find a new registered patent attorney or agent using USPTO resources.
- Update the correspondence address for the application if it was previously associated with the suspended practitioner.
It’s important to act promptly to ensure continued proper representation and communication with the USPTO.
What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:
- Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
- Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.
The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’
When one of multiple practitioners of record is suspended, the USPTO continues to communicate with the remaining unsuspended practitioners. MPEP § 407 provides guidance for this situation: “This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice.” The Office action is mailed to the first named unsuspended registered practitioner at their address of record. Additionally, to ensure timely receipt, a copy is also sent to the first named applicant’s address of record.
For more information on USPTO communication, visit: USPTO communication.
What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
A power of attorney given to a suspended or disbarred patent practitioner becomes ineffective. The MPEP states: ‘Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent matters.’ (MPEP § 407)
What actions can a suspended or excluded practitioner take during the 30-day limited recognition period?
During the 30-day limited recognition period, suspended or excluded practitioners are allowed to perform specific actions to protect their clients’ interests. According to MPEP 407:
“During the 30-day period of limited recognition, the suspended or excluded practitioner may conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of suspension or exclusion.”
Specifically, the practitioner may:
- Receive and forward correspondence related to pending matters
- Make appropriate filings to protect the client’s rights
- Conclude or withdraw from representation in pending proceedings
- Perform limited actions necessary to transfer the client’s case to another registered practitioner
It’s important to note that this limited recognition does not allow the practitioner to take on new clients or file new patent applications during this period.
How does the USPTO notify applicants of their practitioner’s suspension or exclusion?
The USPTO has a specific process for notifying applicants when their patent practitioner has been suspended or excluded. The MPEP 407 outlines this process:
“The OED Director will… notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner. The notification will be sent to the address of record in the application.”
This notification serves several purposes:
- Informs the applicant of their practitioner’s status change
- Advises the applicant of the practitioner’s limited recognition period
- Allows the applicant to take necessary actions to protect their patent application
It’s crucial for applicants to promptly respond to such notifications to ensure their patent applications are not adversely affected by their practitioner’s disciplinary status.
For more information on USPTO notification, visit: USPTO notification.
The USPTO takes specific actions regarding powers of attorney granted to suspended or excluded practitioners. According to MPEP 407:
The Office of Enrollment and Discipline (OED) Director will contact the Director of the Technology Center (TC) managing the application when a practitioner has been suspended or excluded from practice. The OED Director will request that the TC Director review a pending application to determine whether the practitioner has been granted a power of attorney. If the suspended or excluded practitioner was given a power of attorney, the TC Director will notify the applicant and request a new power of attorney.
The process typically involves:
- Identification of affected applications by the OED Director
- Review of power of attorney status by the TC Director
- Notification to the applicant if a power of attorney exists
- Request for a new power of attorney from the applicant
- Potential application abandonment if no response is received within 30 days
For more information on power of attorney, visit: power of attorney.
When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:
- For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
- For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.
This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.
Applicants can find a new registered patent attorney or agent through resources provided by the USPTO. According to MPEP § 407: “Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO website, https://oedci.uspto.gov/OEDCI/, or by calling the Office of Enrollment and Discipline at (571) 272-4097.” These resources allow applicants to search for qualified practitioners who can represent them before the USPTO.
For more information on USPTO Resources, visit: USPTO Resources.
When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:
- Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
- Calling the Office of Enrollment and Discipline at (571) 272-4097
This information is provided in Form Paragraph 4.07 of MPEP § 407.
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.
MPEP 408 - Interviews With Patent Practitioner of Record (17)
According to the MPEP, an examiner can contact the patent practitioner of record in the application for interviews. The MPEP states:
When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
It’s important to note that registered attorneys or agents not of record should not be contacted for certain actions, such as restriction requirements or approval of examiner’s amendments.
What is the role of a patent practitioner during an interview with the USPTO?
A patent practitioner plays a crucial role during an interview with the USPTO. According to MPEP 408, the practitioner is responsible for:
- Representing the applicant or patent owner
- Discussing the merits of the application or patent
- Providing clarifications on the invention
- Negotiating potential claim amendments
- Addressing any concerns raised by the examiner
The MPEP states: ‘Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference centers.’ This underscores the formal nature of these interactions and the importance of the practitioner’s role in facilitating productive discussions with the examiner.
For more information on patent examination, visit: patent examination.
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
The Applicant Initiated Interview Request form (PTOL-413A) should include specific information to facilitate the interview process. According to MPEP 408:
This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.
Providing this information helps the examiner prepare adequately for the interview and ensures that all necessary parties are involved in the discussion of relevant issues.
When an applicant is initiating an interview request, they should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner. The MPEP provides the following guidance:
When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This form helps streamline the interview process by providing the examiner with essential information about the proposed interview.
When conducting interviews with patent practitioners in foreign countries, examiners must follow specific guidelines:
- Interviews must be conducted via video conference or telephone.
- In-person interviews in foreign countries are not permitted.
- The same interview policies and procedures apply as for domestic interviews.
As stated in the MPEP 408: ‘For patent practitioners in foreign countries, interviews must be scheduled to be conducted by video conference or telephone. Examiners may not hold in-person interviews with patent practitioners in foreign countries.’
What are the restrictions on registered practitioners not of record during USPTO interviews?
Registered practitioners who are not of record for a specific patent application face certain restrictions when attending USPTO interviews. According to MPEP 408:
‘The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This means that while a practitioner not of record may accompany the practitioner of record to an interview, their participation is limited. They cannot actively engage in the discussion or negotiation process without explicit authorization from the patent applicant. This restriction is in place to ensure that the applicant’s interests are properly represented by their chosen practitioner of record and to maintain the integrity of the interview process.
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
For more information on registered practitioner, visit: registered practitioner.
When conducting interviews with inventors or assignees, examiners must adhere to specific requirements:
- The practitioner of record must authorize and be present for the interview.
- Inventors or assignees cannot participate without the practitioner’s presence.
- Examiners should not conduct interviews directly with inventors or assignees alone.
According to the MPEP 408: ‘Interviews with inventors or assignees and/or their attorneys or agents of record must be authorized by the practitioners of record. The practitioner of record must be present and an examiner may not conduct an interview with an inventor or assignee unless the practitioner is present.’
For more information on patent examination, visit: patent examination.
When handling interview requests from practitioners not of record, examiners should follow these guidelines:
- Verify the requester’s authority to conduct the interview.
- Ensure the practitioner of record has authorized the interview.
- If authorization is not provided, decline the interview request.
The MPEP 408 states: ‘Interviews with practitioners not of record should be conducted only with the consent of the practitioner of record.’ It further advises: ‘An examiner should not conduct an interview with an attorney or agent who is not of record unless the attorney or agent presents either a power of attorney or a letter signed by the attorney or agent of record authorizing the interview.’
For more information on patent examination, visit: patent examination.
When handling interview requests from multiple attorneys or agents, examiners should follow these guidelines:
- Generally, only one interview is granted per application.
- If multiple practitioners request interviews, coordinate with the practitioner of record.
- Additional interviews may be granted at the examiner’s discretion.
The MPEP 408 states: ‘An interview should normally be conducted with the attorney or agent of record in an application.’ It further advises: ‘If more than one attorney or agent request an interview in an application, it is the responsibility of the attorney or agent of record to resolve any conflict.’
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
How does the USPTO handle interviews for applications with multiple practitioners of record?
The USPTO has specific guidelines for handling interviews when multiple practitioners are of record for a patent application. MPEP 408 provides guidance on this situation:
‘Where a registered practitioner has been given a power of attorney or authorization of agent, only that practitioner, a practitioner appointed in an associate power of attorney or authorization of agent, or another registered practitioner who has the permission of one of the aforementioned practitioners may conduct an interview.’
This means that when multiple practitioners are of record, any one of them can conduct the interview. However, it’s important to note that clear communication between the practitioners is crucial to ensure consistent representation of the applicant’s interests. The USPTO typically communicates with the practitioner who initiated the interview or the one designated as the primary contact for the application.
For more information on patent examination, visit: patent examination.
For more information on power of attorney, visit: power of attorney.
The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution.
When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.
To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
No, non-registered representatives should not be contacted for patent application actions, even if they appear to be authorized by the attorney or agent of record. The MPEP clearly states:
In addition, non-registered representatives of the practitioner of record should not be contacted for such actions, even if apparently authorized by the attorney or agent of record.
This restriction helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in critical communications.
Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:
The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.
Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
Yes, there are significant restrictions on contacting patent practitioners who are not of record for a patent application. According to MPEP § 408, Registered attorneys or agents not of record in a patent application (i.e., there is no power of attorney present in the file that appoints the patent practitioner(s)) and acting in a representative capacity under 37 CFR 1.34 should not be contacted for restriction requirements or approval of examiner’s amendments.
This policy is in place to ensure that only properly authorized representatives are involved in making decisions about patent applications. For more information on interviews with patent practitioners not of record, refer to MPEP § 405.
Yes, there are strict restrictions on communicating with unregistered, suspended, or excluded attorneys regarding patent applications. The MPEP clearly states:
Office employees are forbidden from holding either oral or written communication with an unregistered, suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant.
This rule helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in patent-related communications with the USPTO.
MPEP 410 - Representations to the U.S. Patent and Trademark Office (11)
What is the duty of disclosure in patent applications?
The duty of disclosure is a fundamental obligation in the patent application process. As outlined in MPEP 410:
“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”
This duty requires applicants and their representatives to:
- Disclose all known material information
- Submit information disclosure statements (IDS)
- Update the USPTO with new material information throughout the application process
Failing to comply with the duty of disclosure can result in charges of inequitable conduct, which may render a patent unenforceable. It’s crucial for applicants to err on the side of disclosure when in doubt about the materiality of information.
For more information on USPTO, visit: USPTO.
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.
When submitting papers to the USPTO, two key certifications are made under 37 CFR 11.18(b):
- Statements made are subject to the declaration clause of 37 CFR 1.68
- The certification required for papers filed in federal court under Rule 11(b) of the Federal Rules of Civil Procedure
Specifically, 37 CFR 11.18(b) states that by presenting any paper to the USPTO, the party certifies that:
‘All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute’
This applies to both practitioners and non-practitioners submitting papers to the USPTO.
The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
Violating the certification requirements when submitting papers to the USPTO can have serious consequences. According to 37 CFR 11.18(c), violations may result in:
- Striking the offending paper
- Referring a practitioner’s conduct to the Office of Enrollment and Discipline
- Precluding a party or practitioner from submitting papers or contesting issues
- Affecting the weight given to the offending paper
- Terminating proceedings in the Office
Additionally, 37 CFR 11.18(d) states that practitioners violating these provisions may be subject to disciplinary action. The USPTO Director determines appropriate sanctions after notice and opportunity to respond.
It’s important to note that violations can jeopardize the validity of applications, documents, patents, and trademark registrations. As stated in the MPEP:
‘The submission by an applicant of misleading or inaccurate statements of facts during the prosecution of applications for patent has resulted in the patents issuing on such applications being held unenforceable.’
Several court cases are cited demonstrating how false statements have led to patents being unenforceable.
What are the consequences of knowingly submitting false statements to the USPTO?
Submitting false statements to the USPTO can have serious consequences. According to MPEP 410:
“Knowingly submitting false statements or withholding material information from the Office in connection with a patent application or patent may be punishable by fine or imprisonment.”
The MPEP further states that such actions may result in:
- Invalidation of patents
- Unenforceability of patents
- Criminal prosecution
- Disciplinary action against practitioners
It’s crucial for applicants and their representatives to maintain honesty and transparency in all communications with the USPTO to avoid these severe consequences.
For more information on USPTO, visit: USPTO.
No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:
‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’
This is supported by several court cases cited in the MPEP, including:
- Nordberg, Inc. v. Telsmith, Inc.
- FMC Corp. v. Hennessy Indus., Inc.
- American Hoist & Derrick Co. v. Sowa & Sons, Inc.
The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.
How does the USPTO handle inequitable conduct in patent applications?
The USPTO takes inequitable conduct in patent applications very seriously. According to MPEP 410:
“[T]he Office will consider equitable and public policy principles in assessing whether to issue a patent to an applicant who has engaged in inequitable conduct.”
Inequitable conduct typically involves:
- Failure to disclose material information
- Submitting false material information
- Intentional misrepresentation of facts
If inequitable conduct is found, the consequences may include:
- Rejection of the patent application
- Invalidation of an issued patent
- Disciplinary action against registered practitioners
The USPTO may also refer cases of suspected fraud to the U.S. Department of Justice for potential criminal prosecution. It’s crucial for applicants and their representatives to maintain honesty and transparency throughout the patent application process.
For more information on fraud, visit: fraud.
For more information on USPTO, visit: USPTO.
How does the USPTO define ‘material information’ in patent applications?
The USPTO considers information to be material if it affects the patentability of an invention. According to MPEP 410:
“Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.”
In simpler terms, material information includes any facts that could affect the USPTO’s decision to grant a patent. This may include prior art, conflicting statements, or any other information that could impact the novelty or non-obviousness of the claimed invention.
For more information on prior art, visit: prior art.
For more information on USPTO, visit: USPTO.
Can the USPTO independently verify information provided by patent applicants?
Yes, the USPTO has the authority to independently verify information provided by patent applicants. MPEP 410 states:
“The Office is not the guarantor of the accuracy, correctness or completeness of the information supplied by the applicant.”
This means that while the USPTO relies on the information provided by applicants, it may:
- Conduct its own investigations
- Request additional information or evidence
- Consult external sources to verify claims
Applicants should be aware that the USPTO can and may verify any information submitted during the patent application process. It’s crucial to provide accurate and complete information to avoid potential legal issues or loss of patent rights.
For more information on patent application information, visit: patent application information.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.
Patent Law (419)
Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:
- To maintain consistent numbering across editions
- To allow for future expansion of content
- To accommodate planned updates or revisions
- To serve as placeholders for potential new topics or guidance
This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.
In patent applications filed before September 16, 2012, the power of attorney can be signed by either the inventor(s) or the assignee of the entire interest. However, the MPEP recommends that the assignee sign the power of attorney when one exists. As stated in the MPEP:
While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client.
This recommendation aims to avoid potential conflicts and ensure clear representation in cases where the relationship between the assignee and inventors may deteriorate.
To learn more:
After the USPTO is notified of a patent practitioner’s death, correspondence is sent to two parties:
- The office of the deceased practitioner
- The person who originally appointed the deceased patent practitioner
This dual notification ensures that both the practitioner’s office and the original appointer are aware of ongoing patent matters and can take appropriate action.
Both practitioners and non-practitioners are responsible for ensuring compliance with USPTO signature and certification requirements when filing papers. According to 37 CFR 11.18(b):
“By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—”
This means that anyone submitting papers to the USPTO, including independent inventors, corporate representatives, and patent attorneys, is responsible for ensuring that the submissions meet the signature and certification requirements. Practitioners have additional responsibilities and may face disciplinary action for violations as specified in 37 CFR 11.18(d).
To learn more:
During interference or derivation proceedings, power of attorney changes are handled by a specific entity within the USPTO. According to MPEP 402.08:
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
This means that the Patent Trial and Appeal Board (PTAB) is responsible for considering and processing any changes to power of attorney during these special proceedings. This differs from the normal procedure for regular patent applications, where such changes would typically be handled by the Office of Patent Application Processing or the examining corps.
To learn more:
When there’s no attorney of record, the signatories for patent application papers depend on the filing date and the applicant type. For applications filed before September 16, 2012, MPEP § 407 states: “All papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34.”
For applications filed on or after September 16, 2012: “All papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.”
When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:
For applications filed before September 16, 2012:
- All named applicants
- Assignee of record of an undivided part interest, along with named applicants retaining an interest
- Assignee of the entire interest
- A registered patent attorney or agent not of record acting under 37 CFR 1.34
For applications filed on or after September 16, 2012:
- A patent practitioner of record
- A patent practitioner not of record acting under 37 CFR 1.34
- The applicant (except for juristic entity applicants, which require a patent practitioner)
This information is provided in Form Paragraph 4.07 of MPEP § 407.
Who can sign a substitute statement for a deceased or incapacitated inventor?
In cases where an inventor is deceased or legally incapacitated, specific parties are authorized to sign a substitute statement. According to MPEP 409.01(a):
“A substitute statement under 37 CFR 1.64 may be signed by the applicant or an assignee of the entire interest on behalf of a deceased or legally incapacitated inventor.”
The following parties can sign a substitute statement:
- The applicant (if different from the inventor)
- An assignee of the entire interest
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
It’s important to note that the person signing the substitute statement must have the legal authority to act on behalf of the deceased or incapacitated inventor. This ensures that the patent application can proceed even when the original inventor is unable to participate in the process.
To learn more:
According to MPEP 402.09, applicants in international patent applications can be represented by:
- Attorneys or agents registered to practice before the USPTO
- An applicant appointed as a common representative
- An attorney or agent with the right to practice before the national office where the international application is filed (for specific authorities)
As stated in 37 CFR 1.455(a): Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9).
To learn more:
According to MPEP 409.01(a), several parties can file a patent application on behalf of a deceased or legally incapacitated inventor:
- Legal representative:
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor.
- Assignee or obligated assignee:
Under 37 CFR 1.46, a person to whom the inventor assigned (‘assignee’), to whom the inventor was under an obligation to assign (‘obligated assignee’), or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of the deceased or legally incapacitated inventor.
- Administrator or executor: These parties can also file an application, but may need to obtain new letters of administration if they have been discharged from their duties.
It’s important to note that proof of authority is not required by the USPTO, but any person acting as a legal representative should ensure they are properly authorized to do so.
To learn more:
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.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
The regulation states: 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.
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The correspondence address in a patent application can be changed by specific parties as outlined in 37 CFR 1.33(a):
- A patent practitioner of record (37 CFR 1.33(b)(1))
- The applicant (37 CFR 1.33(b)(3))
- Prior to the appointment of any power of attorney, any patent practitioner named in the application transmittal papers who acts in a representative capacity under 37 CFR 1.34
It’s important to note that after a power of attorney has been appointed, a practitioner acting in a representative capacity cannot change the correspondence address until after the patent has issued, and only with proper notice to the patentee or owner.
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Limited recognition for patent matters can be granted to two main categories of individuals:
- Non-registered individuals: As per 37 CFR 11.9(a), individuals not registered under § 11.6 may be granted limited recognition under certain circumstances.
- Nonimmigrant aliens: According to 37 CFR 11.9(b):
A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.
It’s important to note that limited recognition is granted on a case-by-case basis and is subject to specific restrictions and conditions.
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Under pre-AIA 37 CFR 1.47(b), the term ‘person’ is broadly interpreted. The MPEP states that “The word ‘person’ has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation.” This means that both individuals and legal entities can potentially file an application under this provision, provided they meet the other requirements.
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For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.
As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”
According to the MPEP, an examiner can contact the patent practitioner of record in the application for interviews. The MPEP states:
When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
It’s important to note that registered attorneys or agents not of record should not be contacted for certain actions, such as restriction requirements or approval of examiner’s amendments.
A revocation of power of attorney becomes effective on the date it is received by the USPTO, not on the date it is accepted. As stated in MPEP 402.05: Revocation of a power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE).
The Office will send an appropriate notification upon revocation.
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The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:
See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.
This reference to MPEP § 402.03 suggests that there are certain circumstances where an attorney or agent not of record may be allowed to change the correspondence address or grant access to application information. For specific details, it’s recommended to consult MPEP § 402.03 directly.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO procedures, visit: USPTO procedures.
A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:
“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”
However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.
According to MPEP 409.03(d), acceptable evidence to prove inventor unavailability or refusal can include:
- Copies of letters or email messages sent to the inventor requesting their signature
- Returned receipt indicating the inventor’s refusal to accept mail
- Statements from people who have attempted to contact the inventor
- Evidence of the inventor’s mental or physical incapacity
- Evidence of the inventor’s unavailability due to absence
- Other pertinent evidence that demonstrates the inventor’s unavailability or refusal
The MPEP states: ‘The proof of unavailability or refusal will be examined by the Office.’ This means that the USPTO will carefully evaluate the submitted evidence to determine if it sufficiently demonstrates the inventor’s unavailability or refusal.
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The MPEP provides specific guidance on the type of address that should be provided for the nonsigning inventor in pre-AIA 37 CFR 1.47 applications:
‘That address should be the last known address at which the inventor customarily receives mail.’
This typically means providing the most recent address where the inventor is known to receive correspondence. It’s important to provide an address where the USPTO’s communications are most likely to reach the nonsigning inventor.
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When dealing with a nonsigning inventor under pre-AIA 37 CFR 1.47, the following steps should be taken to present application papers:
- Send a copy of the application papers to the last known address of the nonsigning inventor.
- If the inventor is represented by counsel, send the papers to the inventor’s attorney’s address.
- Ensure that the inventor is given the opportunity to review the complete application, unless they have assigned their interest and the assignee has requested otherwise.
The MPEP emphasizes:
‘It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed.’
This process is crucial to establish that a bona fide attempt was made to present the application papers to the nonsigning inventor.
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When terminating representation, a practitioner must take several steps to protect the client’s interests, as outlined in 37 CFR 11.116(d):
- Give reasonable notice to the client
- Allow time for the client to employ other counsel
- Surrender papers and property to which the client is entitled
- Refund any advance payment of fees or expenses that have not been earned or incurred
Additionally, the practitioner must comply with applicable laws requiring notice to or permission from a tribunal when terminating representation, as per 37 CFR 11.116(c).
The USPTO provides forms (PTO/SB/83 or PTO/AIA/83) that include a section for practitioners to certify the completion of these necessary activities. Practitioners can also file a Web-based e-petition for withdrawal.
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When issuing Office actions after being notified of a patent practitioner’s death, the USPTO includes a special notation. The MPEP 406 instructs examiners to add form paragraph 4.03, which states:
“Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.”
This notation informs all parties of the practitioner’s death and the need for new representation.
For more information on Form Paragraph 4.03, visit: Form Paragraph 4.03.
If you need information related to a topic that corresponds to a reserved MPEP section, such as MPEP 404, follow these steps:
- Check other relevant sections of the MPEP that may cover related topics
- Consult the USPTO’s official website for guidance documents and notices
- Review recent patent laws and regulations that may address the topic
- Contact the USPTO’s Patent Electronic Business Center for assistance
- Consult with a registered patent attorney or agent for professional advice
Remember that reserved sections do not contain any official information, so it’s crucial to seek guidance from active, authoritative sources.
If a legal representative of a deceased inventor refuses to make application, the procedure depends on when the application was filed:
- For applications filed before September 16, 2012: Pre-AIA 37 CFR 1.47 applies. The MPEP states:
pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application.
- In this case, you should:
- Document the refusal and the efforts made to reach the legal representative.
- Provide the last known address of the legal representative, as per MPEP § 409.03(e).
- File the application under pre-AIA 37 CFR 1.47, explaining the situation.
- For applications filed on or after September 16, 2012: Different procedures apply, which are not covered in this specific MPEP section. Consult the current USPTO regulations and guidelines for the appropriate course of action.
It’s important to note that these procedures are specific to cases where there is a known legal representative who is refusing to cooperate. Different rules may apply in other scenarios involving deceased inventors.
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If an applicant’s patent attorney or agent is suspended, they should take the following steps:
- File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
- Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
- If necessary, find a new registered patent attorney or agent using USPTO resources.
- Update the correspondence address for the application if it was previously associated with the suspended practitioner.
It’s important to act promptly to ensure continued proper representation and communication with the USPTO.
When an examiner receives a pre-AIA 37 CFR 1.47 application, they must follow these steps:
“When an examiner receives an application in which a petition under pre-AIA 37 CFR 1.47 has been filed, he or she must check the file to determine that the petition has been decided by the Office of Petitions. If the petition has not been decided by the Office of Petitions, the application, or an electronic message concerning the petition, must be forwarded to the Office of Petitions for appropriate action.”
In essence, the examiner must verify that the Office of Petitions has made a decision on the pre-AIA 37 CFR 1.47 petition. If not, the examiner must forward the application or relevant information to the Office of Petitions for further processing.
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Risks of Self-Representation in Patent Applications
While individuals can file pro se patent applications, there are several risks to consider:
- Lack of expertise: Patent law is complex, and lack of familiarity with examination practices may result in missed opportunities for optimal protection.
- Potential sanctions: According to MPEP 401, pro se applicants are subject to the same certifications and potential sanctions as represented applicants:
In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).
Given these risks, the USPTO may suggest hiring a registered patent practitioner if they notice an applicant is unfamiliar with the process and the application contains potentially patentable subject matter.
For more information on pro se, visit: pro se.
For more information on self-representation, visit: self-representation.
A nonsigning inventor in a pre-AIA 37 CFR 1.47 application retains certain rights, as outlined in MPEP 409.03(i):
- May protest their designation as an inventor
- Can inspect any paper in the application
- May order copies of application documents
- Can make their position of record in the application file
- Has the option to join the application later by filing an oath/declaration
- Retains inventor rights for patent issuance
However, the nonsigning inventor cannot:
- Prosecute the application if status under 37 CFR 1.47 is accorded
- Revoke power of attorney without agreement of the 37 CFR 1.47 applicant
The MPEP states: 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.
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A nonsigning inventor, also known as an ‘inventor designee,’ has several rights in a patent application filed under pre-AIA 37 CFR 1.47. These rights include:
- The right to protest their designation as an inventor
- The right to inspect any paper in the application
- The right to order copies of application documents at the price set forth in 37 CFR 1.19
- The right to make their position of record in the file wrapper of the application
As stated in MPEP 409.03(i): “The nonsigning inventor is entitled to inspect any paper in the application, order copies thereof at the price set forth in 37 CFR 1.19, and make his or her position of record in the file wrapper of the application.”
It’s important to note that while these rights are granted, the nonsigning inventor is not entitled to prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded.
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The USPTO, through its Office of Enrollment and Discipline, provides valuable resources to client-applicants when their patent practitioner dies. The MPEP 406 states:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This list serves as a crucial resource, helping client-applicants find new representation to continue their patent prosecution process without significant delays.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO Resources, visit: USPTO Resources.
For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:
- The invention has been assigned to the applicant
- The inventor has agreed in writing to assign the invention to the applicant
- The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application
As stated in MPEP 409.03(f):
“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”
The specific documentation required depends on which of these conditions is being met.
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When filing under pre-AIA 37 CFR 1.47, the applicant must provide proof that the nonsigning inventor is unavailable or refusing to sign. According to MPEP 409.03(d):
- For an unavailable inventor, submit a statement of facts describing the diligent efforts made to find or reach the inventor. Include documentary evidence like Internet searches, certified mail receipts, etc.
- For a refusing inventor, provide evidence that the application was presented to the inventor for signature and they refused. This can include:
- A statement detailing the circumstances of the presentation and refusal
- Documentary evidence of written refusal
- Statement of the reasons given by the inventor for refusing
The section states: Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.
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For applications filed on or after September 16, 2012:
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor
- The applicant may file a substitute statement in lieu of an inventor’s oath or declaration if the inventor has refused to execute the oath or declaration
For applications filed before September 16, 2012, a petition under pre-AIA 37 CFR 1.47 could be filed.
For applications filed on or after September 16, 2012, if an inventor is deceased or legally incapacitated:
- The legal representative of the inventor may make the application for patent on behalf of the inventor.
- An assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest may file the application as the applicant.
As stated in MPEP § 409.01(a): “If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”
For more information on legal representative, visit: legal representative.
When filing under pre-AIA 37 CFR 1.47(b), an applicant must prove that the filing of the application is necessary for specific reasons. The MPEP outlines two primary justifications:
- To preserve the rights of the parties
- To prevent irreparable damage
Specifically, the MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage.”
This requirement ensures that the use of pre-AIA 37 CFR 1.47(b) is justified and not merely a matter of convenience. For more detailed information on proving necessity, refer to MPEP § 409.03(g).
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What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”
This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.
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The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
This means:
- For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
- For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.
This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.
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The filing date is crucial in relation to irreparable damage because it can determine whether an applicant’s rights are preserved or lost. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This means that the filing date can be critical for:
- Establishing priority over other potential patent applications
- Avoiding statutory bars to patentability
- Preserving international filing rights
- Preventing public disclosure that could jeopardize patent rights
Therefore, proving that a specific filing date is necessary can be essential to prevent irreparable damage to an applicant’s patent rights.
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What is the significance of the AIA (America Invents Act) for patent application correspondence?
The America Invents Act (AIA) brought significant changes to patent application correspondence, particularly for applications filed on or after September 16, 2012. Key changes include:
- New rules for who can file patent applications
- Changes in correspondence procedures
- Updated requirements for patent practitioners’ authority
According to MPEP 403.01(a): “The provisions of 37 CFR 1.33(b) for patent applications filed on or after September 16, 2012 differ from the provisions of pre-AIA 37 CFR 1.33(b) for patent applications filed prior to September 16, 2012.” This highlights the importance of understanding the specific rules that apply based on the application’s filing date.
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What is the significance of the ‘correspondence address’ in USPTO patent applications?
The correspondence address is crucial in USPTO patent applications for several reasons:
- It determines where the USPTO sends all official communications regarding the application.
- It can be used to designate a specific attorney or agent to receive correspondence.
- Changes to the correspondence address must be made in writing to ensure proper routing of communications.
According to MPEP 403.01: “The correspondence address is used by the Office for mailing notices, actions, and other communications relating to the application.” Additionally, the MPEP states: “A change of correspondence address may be filed with the USPTO during the pendency of an application, and in a patent file.” This emphasizes the importance of keeping the correspondence address up-to-date to ensure timely receipt of important USPTO communications.
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What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?
The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.
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Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
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MPEP 402.08 has important implications for independent inventors involved in interference proceedings. The key provision states:
For independent inventors, this means:
- Changes in legal representation during an interference proceeding must be approved by the PTAB.
- There may be additional complexity and potential delays in changing attorneys.
- Inventors should carefully consider the timing of any representation changes.
- Direct communication with the PTAB may be necessary regarding power of attorney matters.
Independent inventors should be aware of these special procedures to navigate interference proceedings effectively and ensure proper legal representation throughout the process.
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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.
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What is the significance of a customer number in USPTO correspondence?
A customer number is a crucial tool for managing correspondence with the USPTO. According to MPEP 403:
‘A customer number allows an applicant, attorney or agent to easily change the correspondence address for a number of applications or patents by simply requesting a change to the address associated with the customer number.’
Key benefits of using a customer number include:
- Streamlined correspondence management for multiple applications
- Easy updates to address information
- Efficient access to application information through USPTO systems
By using a customer number, patent professionals can significantly simplify their administrative processes when dealing with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
What is the significance of a customer number in patent applications filed after September 16, 2012?
A customer number holds significant importance in patent applications filed after September 16, 2012, particularly for managing practitioner representation. Here’s why:
- It allows for efficient management of multiple practitioners
- Power of attorney can be given to a customer number
- It simplifies the process of adding or removing practitioners
- Correspondence address can be associated with a customer number
According to MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This provision streamlines the process of managing representation for applicants and practitioners alike.
Furthermore, the MPEP states: ‘If a practitioner is not of record, correspondence will be sent to the applicant’s correspondence address as shown in the application or the Patent Application Locating and Monitoring (PALM) system.’ This underscores the importance of keeping the customer number and associated information up to date.
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A Customer Number is a unique identifier assigned by the USPTO that can be associated with a correspondence address. It offers several advantages in managing patent application correspondence:
- Simplified address changes: You can update the address for multiple applications at once by changing the address associated with the Customer Number.
- Priority in address selection: When multiple addresses are provided, the USPTO may prioritize the address associated with a Customer Number.
- Easier access to Patent Application Information Retrieval (PAIR) system: Customer Numbers can be used to access multiple applications in PAIR.
37 CFR 1.33(a) states: If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
Using a Customer Number can streamline communication with the USPTO and make it easier to manage multiple patent applications.
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37 CFR 11.18 is a crucial regulation that governs signature and certification requirements for correspondence filed with the USPTO. Its significance includes:
- Establishing signature requirements for practitioners
- Defining certifications made when submitting papers
- Setting standards for truthfulness and proper purpose in filings
- Outlining potential consequences for violations
The MPEP emphasizes its importance: “The certifications in 37 CFR 11.18(b) apply to all papers filed in the Office, including allegations of improper conduct made by a registered practitioner in any Office proceeding.”
This regulation helps maintain the integrity of the patent application process and ensures that all parties involved are held to high ethical and legal standards.
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‘Limited recognition’ is a specific status granted by the USPTO that allows certain individuals to practice patent law in a restricted capacity. Its significance includes:
- Allowing non-registered practitioners to represent applicants in specific circumstances.
- Providing a pathway for Canadian patent agents to represent Canadian applicants.
- Restricting the scope of practice to specific types of applications or applicants.
The MPEP 402.01 states: Limited recognition to practice in patent cases means recognition to practice before the Office in patent cases, or in a limited capacity as a patent agent, as appropriate…
This status ensures that certain practitioners can assist applicants while maintaining the integrity of the USPTO’s registration system.
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What is the significance of ‘facts showing the right’ in proving proprietary interest?
The phrase ‘facts showing the right’ is crucial in proving proprietary interest for patent applications. According to MPEP 409.03(f):
‘Facts showing the right or authority to make the petition must be proved in accordance with 37 CFR 1.46.’
This means that:
- Applicants must provide concrete evidence demonstrating their right to file and prosecute the patent application.
- The evidence should clearly establish the applicant’s legal authority or ownership of the invention.
- These facts are essential for the USPTO to determine if the applicant has the proper standing to proceed with the application.
Examples of such facts might include:
- Documentation of employment agreements assigning invention rights to an employer
- Contracts showing transfer of rights from inventors to the applicant
- Court orders establishing ownership in cases of disputes
The significance of these ‘facts showing the right’ is that they protect the interests of all parties involved and ensure that patent rights are granted to the rightful owners or their authorized representatives.
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An affidavit plays a crucial role in proving the unavailability or refusal of a non-signing inventor. The MPEP 409.03(d) states:
An affidavit or declaration of the applicant, or his/her attorney or agent, explaining the situation and stating the last known address of the non-signing inventor, may be sufficient to establish that the inventor cannot be found or reached after diligent effort or has refused to execute the application papers.
The affidavit should:
- Provide a detailed account of efforts to locate or communicate with the inventor
- Include dates, methods of contact attempted, and results
- Explain any refusal circumstances if applicable
- Be signed under oath or declaration
This sworn statement serves as a formal record of the applicant’s diligent efforts and is considered by the USPTO in determining the validity of the proof of unavailability or refusal.
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An administrator plays a crucial role in filing a patent application for a deceased inventor. According to MPEP 409.01(b):
If the inventor was not of sound mind and legally incapacitated at the time the application was made, it may be signed by a legal representative (e.g., guardian), the inventor’s legal representative (e.g., executor, administrator, etc.), or someone acting on behalf of the inventor or legal representative.
The administrator’s responsibilities include:
- Representing the deceased inventor’s estate
- Signing necessary documents on behalf of the deceased inventor
- Providing proof of their authority to act as administrator
- Ensuring the application process complies with legal requirements
It’s important to note that the administrator must have the legal authority to act on behalf of the deceased inventor’s estate.
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An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:
- They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
- They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.
The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.
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What is the role of a patent practitioner during an interview with the USPTO?
A patent practitioner plays a crucial role during an interview with the USPTO. According to MPEP 408, the practitioner is responsible for:
- Representing the applicant or patent owner
- Discussing the merits of the application or patent
- Providing clarifications on the invention
- Negotiating potential claim amendments
- Addressing any concerns raised by the examiner
The MPEP states: ‘Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference centers.’ This underscores the formal nature of these interactions and the importance of the practitioner’s role in facilitating productive discussions with the examiner.
For more information on patent examination, visit: patent examination.
What is the role of a legal representative in filing a patent application for a deceased inventor?
What is the role of a legal representative in filing a patent application for a deceased inventor?
A legal representative plays a crucial role in filing a patent application for a deceased inventor. According to MPEP 409.03(b):
“The legal representative (executor, administrator, etc.) of a deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative’s responsibilities include:
- Executing the necessary oath or declaration on behalf of the deceased inventor
- Providing proof of their authority to act (e.g., Letters Testamentary or Letters of Administration)
- Submitting the patent application and all required documents to the USPTO
- Corresponding with the USPTO throughout the application process
- Potentially assigning the patent rights if required by the deceased inventor’s will or other legal arrangements
It’s important to note that the legal representative must act in accordance with the law and the best interests of the deceased inventor’s estate.
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The legal representative of a deceased inventor plays a crucial role in the patent application process. According to MPEP 409.01:
If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or representatives of the deceased inventor.
The legal representative’s responsibilities include:
- Executing the oath or declaration on behalf of the deceased inventor
- Providing documentation of their authority to act on behalf of the deceased inventor’s estate
- Continuing the prosecution of the patent application
- Receiving the granted patent on behalf of the deceased inventor’s estate
It’s important to note that the legal representative must be properly appointed according to state laws governing estate administration.
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In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states:
‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’
This requirement ensures that the USPTO can attempt to contact the nonsigning inventor regarding the application filed on their behalf.
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MPEP 409.03(f) is not applicable to patent applications filed on or after September 16, 2012. This is clearly stated at the beginning of the section:
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012. See MPEP §§ 325, 409.05, and 605 for information pertaining to applications for patent filed on or after September 16, 2012 by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.]”
For applications filed on or after September 16, 2012, applicants should refer to:
- MPEP § 325 – Assignment of ownership rights
- MPEP § 409.05 – Applications filed on or after September 16, 2012
- MPEP § 605 – Applicant
These sections provide guidance on how assignees, obligated assignees, or persons with sufficient proprietary interest can file patent applications under the current law.
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Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.
It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.
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MPEP 409.03(f) – Proof of Proprietary Interest outlines the requirements for establishing proprietary interest in a patent application when an inventor refuses to execute an oath or declaration. The section states:
‘If an inventor refuses to execute an oath or declaration under 37 CFR 1.63, the party to whom the inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent as provided in 37 CFR 1.46.’
This section provides guidance on how to prove sufficient proprietary interest, which is crucial for applicants who need to file a patent application without the inventor’s cooperation.
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MPEP 409.03 provides guidance on how to handle patent applications filed before September 16, 2012 when an inventor is unavailable or unwilling to sign the application. It outlines the procedures for filing an application under pre-AIA 37 CFR 1.47 when:
- A joint inventor refuses to join in an application or cannot be found/reached after diligent effort
- All inventors are unavailable
- A legal representative of a deceased inventor is unavailable
The section details the requirements, evidence needed, and process for submitting and processing these types of applications.
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What is the purpose of limited recognition in patent matters?
The purpose of limited recognition in patent matters is to allow certain individuals who are not fully registered patent practitioners to represent patent applicants before the USPTO in specific situations. As stated in MPEP 402.01:
‘Limited recognition to practice before the Office in patent matters may also be granted in appropriate circumstances to an individual who is not registered to practice before the Office.’
This provision serves several purposes:
- Allows qualified scientists and engineers to assist in patent matters
- Facilitates international cooperation through reciprocal agreements (e.g., with Canadian patent agents)
- Provides flexibility for the USPTO to address specific needs or situations
- Enables representation in cases where full registration may not be necessary or practical
Limited recognition ensures that patent applicants have access to appropriate representation while maintaining the integrity of the patent system.
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What is the purpose of a Customer Number in USPTO correspondence?
A Customer Number is a unique identifier assigned by the USPTO to simplify and streamline patent correspondence. According to the MPEP 403, ‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’ This system allows for:
- Easy updates to correspondence addresses for multiple applications
- Efficient management of power of attorney
- Simplified access to private PAIR (Patent Application Information Retrieval) for registered practitioners
By using a Customer Number, patent applicants and their representatives can more effectively manage their patent portfolios and communications with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
The process for revoking power of attorney during an interference proceeding differs from the standard procedure. According to MPEP 402.08:
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
To revoke power of attorney during an interference proceeding:
- Prepare the revocation document as you normally would.
- Instead of submitting it through regular channels, forward the revocation to the Patent Trial and Appeal Board (PTAB).
- The PTAB will consider the revocation within the context of the ongoing interference proceeding.
- Wait for the PTAB’s decision before considering the revocation effective.
This special handling ensures that changes in representation are properly managed within the complex context of an interference proceeding.
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What is the process for filing a patent application if an inventor is legally incapacitated?
When an inventor is legally incapacitated, the patent application can be filed by the legal representative of the incapacitated inventor. According to MPEP 409.03(b):
“If an inventor is legally incapacitated, the legal representative of the inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The process involves:
- Filing a petition under 37 CFR 1.47(b)
- Paying the petition fee set forth in 37 CFR 1.17(g)
- Providing proof of the inventor’s incapacity (e.g., court order)
- Submitting an oath or declaration by the legal representative
The legal representative should state their relationship to the incapacitated inventor and provide evidence of their authority to act on behalf of the inventor.
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What is the procedure for an examiner to verify an attorney’s authority during an interview?
When conducting an interview with an attorney or agent who is not of record, the examiner must follow a specific procedure to verify their authority. According to MPEP 405:
If an attorney or agent not of record in an application contacts an examiner for an interview, the examiner may grant the interview if the attorney or agent presents an authorization from the practitioner of record, or presents a signed power of attorney or a paper authorizing them to act as associate or agent.
The examiner should:
- Ask for an authorization from the practitioner of record
- Accept a signed power of attorney
- Accept a paper authorizing the attorney or agent to act as an associate or agent
If none of these are available, the examiner should decline the interview unless the attorney or agent is willing to conduct the interview with the inventor present.
For more information on USPTO procedures, visit: USPTO procedures.
What is the duty of disclosure in patent applications?
The duty of disclosure is a fundamental obligation in the patent application process. As outlined in MPEP 410:
“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”
This duty requires applicants and their representatives to:
- Disclose all known material information
- Submit information disclosure statements (IDS)
- Update the USPTO with new material information throughout the application process
Failing to comply with the duty of disclosure can result in charges of inequitable conduct, which may render a patent unenforceable. It’s crucial for applicants to err on the side of disclosure when in doubt about the materiality of information.
For more information on USPTO, visit: USPTO.
What is the duration of limited recognition granted by the OED Director?
The duration of limited recognition granted by the OED Director is not explicitly specified in MPEP 402.01. However, the section states: Limited recognition is granted for a period consistent with the employment situation for which the individual is granted limited recognition.
This suggests that the duration is tailored to each individual’s specific employment situation and may vary case by case. It’s important to note that limited recognition can be withdrawn by the OED Director at any time.
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What is the duration of limited recognition for foreign patent agents?
Limited recognition for foreign patent agents is typically granted for a period of 5 years. According to the MPEP, Recognition of a foreign patent agent for the limited purpose of representing applicants before the USPTO in the presentation and prosecution of applications for patent is granted for a period of 5 years.
(MPEP 402.01) This means that foreign patent agents must renew their limited recognition status every 5 years to continue practicing before the USPTO.
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The main difference in power of attorney revocation between pre-AIA (before September 16, 2012) and post-AIA (on or after September 16, 2012) applications lies in who can sign the power of attorney and the process for revocation:
- Post-AIA (on or after September 16, 2012): The power of attorney must be signed by the applicant or patent owner. For an assignee to revoke a power of attorney, they must first become the applicant under 37 CFR 1.46(c).
- Pre-AIA (before September 16, 2012): The assignee of record of the entire interest can revoke the power of attorney of the applicant directly, provided they establish their right to take action under pre-AIA 37 CFR 3.73(b).
This change reflects the shift in USPTO regulations to give more control to the applicant in post-AIA applications, while pre-AIA rules allowed more direct action by assignees.
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Pre-AIA 37 CFR 1.42 and pre-AIA 37 CFR 1.47 serve different purposes in relation to deceased inventors:
- Pre-AIA 37 CFR 1.42: This regulation specifically addresses the situation of a deceased inventor. It allows the legal representative (executor or administrator of the estate) to make an application on behalf of the deceased inventor.
- Pre-AIA 37 CFR 1.47: This regulation is not intended for deceased inventors directly. As stated in the MPEP,
Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
However, pre-AIA 37 CFR 1.47 does apply in cases where:
- A known legal representative of a deceased inventor cannot be found or reached after diligent effort, or
- The legal representative refuses to make the application
In such cases, the last known address of the legal representative must be provided, as per MPEP § 409.03(e).
It’s important to note that these regulations apply to applications filed before September 16, 2012. For applications filed on or after that date, different procedures may apply.
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In patent applications, both attorneys and agents can represent applicants before the USPTO, but there are important distinctions:
- Patent Attorney: A lawyer who has passed both a state bar exam and the USPTO’s patent bar exam. They can practice law and provide legal advice beyond patent prosecution.
- Patent Agent: An individual who has passed the USPTO’s patent bar exam but is not a licensed attorney. They can represent clients before the USPTO for patent matters but cannot practice law or provide other legal services.
The MPEP 402 refers to both as ‘patent practitioners’: ‘The term ‘patent practitioner’ as used in this chapter includes patent attorneys and patent agents.’ Both can receive power of attorney and represent applicants in patent matters before the USPTO, but only patent attorneys can offer broader legal counsel.
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.
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In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
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While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:
- Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
- Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.
The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’
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.
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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.
For assignee applicants, there is a specific deadline for recording documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that assignees or obligated assignees should ensure that their documentary evidence of ownership is recorded with the USPTO, as specified in 37 CFR Part 3, by the time they pay the issue fee for the patent application. Failing to record this evidence by the deadline could potentially cause complications in establishing ownership of the patent.
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The Customer Number practice allows applicants to:
- Designate the correspondence address of a patent application or patent
- Designate the fee address of a patent
- Submit a list of practitioners who have power of attorney
Using a Customer Number allows applicants to easily change the correspondence address, fee address, or list of practitioners for multiple applications or patents by simply changing the information associated with the Customer Number.
According to MPEP 403: “A Customer Number (previously a ‘Payor Number’) may be used to: (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i)); (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).”
What is the Customer Number Practice for power of attorney in patent applications?
The Customer Number Practice is a system used by the USPTO to simplify the process of changing the correspondence address or power of attorney for multiple patent applications. Here’s how it works:
- Practitioners are associated with a Customer Number
- The Customer Number can be used to grant power of attorney in applications
- Changes to the Customer Number automatically update all associated applications
According to the MPEP:
The Customer Number Practice permits applicants, attorneys, and agents of record to expressly request that the USPTO use a Customer Number to associate a power of attorney with a particular application.
(MPEP 402.02(a))
This practice streamlines the process of managing power of attorney and correspondence addresses for multiple applications, making it more efficient for both applicants and the USPTO.
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What is the Customer Number practice at the USPTO for patent applications?
The Customer Number practice at the USPTO is a system that simplifies the process of managing correspondence addresses for patent applicants and practitioners. Key aspects of this practice include:
- A Customer Number is a unique identifier assigned by the USPTO to a specific address.
- It allows for easy updating of correspondence information for multiple applications.
- Customer Numbers can be associated with Power of Attorney forms.
According to MPEP 403.01(a): ‘The Customer Number practice permits a patent applicant, assignee or practitioner of record to change the correspondence address for a number of applications or patents with one change of address filed in one location.’
To use the Customer Number practice:
- Request a Customer Number from the USPTO using the Customer Number Request form (PTO/SB/125A).
- Associate the Customer Number with your applications using the appropriate forms or through the USPTO’s electronic filing system.
- Update your correspondence address by modifying the Customer Number information, which will automatically update all associated applications.
This practice significantly streamlines the process of managing correspondence for multiple patent applications, making it easier for applicants and practitioners to maintain up-to-date contact information with the USPTO.
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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.
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Unpublished patent applications are subject to confidentiality requirements under 35 U.S.C. 122(a). MPEP 405 addresses this in the context of interviews:
However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the authorized attorney or agent to maintain confidentiality.
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 required for a person with ‘sufficient proprietary interest’ to file a patent application?
A person who shows sufficient proprietary interest in the matter can file a patent application, but must submit a petition as outlined in 37 CFR 1.46(b)(2). The petition must include:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The MPEP further explains that a proprietary interest can be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant.
This should be supported by an affidavit or declaration and prepared by an attorney familiar with the relevant jurisdiction’s law.
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Limited recognition in patent matters is a provision that allows certain individuals who are not registered patent practitioners to prosecute specific patent applications before the United States Patent and Trademark Office (USPTO). According to 37 CFR 11.9(a):
Any individual not registered under § 11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications.
This means that under certain circumstances, individuals who are not registered patent attorneys or agents may be granted permission to work on specific patent applications.
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Irreparable damage, in the context of patent applications, refers to a situation where a filing date is crucial to preserve the rights of an applicant or to prevent severe harm. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This means that an applicant can demonstrate irreparable damage by providing a statement explaining why obtaining a specific filing date is essential to protect their rights or avoid significant harm.
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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.
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Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
What is considered a ‘good and sufficient reason’ to revoke a power of attorney by less than all applicants?
The USPTO does not provide a specific definition of what constitutes a ‘good and sufficient reason’ to revoke a power of attorney by less than all applicants. According to MPEP 402.10:
A power of attorney may not be revoked by less than all of the applicants or owners of the entire interest without good and sufficient reason, and the revocation must be approved by the Director.
The determination of what qualifies as a ‘good and sufficient reason’ is made on a case-by-case basis by the Director of the USPTO. Some potential reasons could include:
- Evidence of misconduct or negligence by the current attorney
- Irreconcilable differences between the applicant(s) and the attorney
- Inability of the attorney to continue representation due to health issues or other circumstances
Applicants seeking to revoke a power of attorney with less than all signatures should provide a detailed explanation of their reasons for the request.
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Proof of unavailability for a non-signing inventor can include various forms of evidence. According to MPEP 409.03(d):
In the case of unavailability, proof of the inability to find or reach the non-signing inventor after diligent effort must be submitted.
This proof may include:
- Returned correspondence
- Copies of email or other communication attempts
- Statements from people with knowledge of the inventor’s unavailability
- Documentation of searches or inquiries made to locate the inventor
The key is to demonstrate a diligent effort to locate and communicate with the non-signing inventor.
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What is considered ‘diligent effort’ when trying to contact an inventor for joint invention?
When attempting to contact a joint inventor for patent application purposes, ‘diligent effort’ typically involves:
- Multiple attempts to reach the inventor through various communication methods (e.g., phone, email, postal mail)
- Reasonable time intervals between attempts
- Documenting all contact attempts and responses (or lack thereof)
- Exploring alternative contact methods if initial attempts fail
The MPEP 409.03(d) states: ‘Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47(b), a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’ This emphasizes the importance of thoroughly documenting all efforts made to contact the inventor.
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An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:
‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’
The ADS must include:
- The name of the inventor(s)
- A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
- If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention
The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.
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An ‘obligated assignee’ in patent applications refers to a person or entity who is under an obligation to assign the invention but has not yet executed an assignment. This concept is important in the context of MPEP 409.05, which states:
An assignee or obligated assignee who is the applicant may execute a substitute statement under 37 CFR 1.64 in lieu of an inventor’s oath or declaration.
This provision allows an obligated assignee to file a patent application and execute certain documents on behalf of the inventor, even if the formal assignment has not yet been completed.
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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.
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What is a substitute statement for a deceased inventor and when is it required?
A substitute statement is a document that replaces the inventor’s oath or declaration when the inventor is deceased, legally incapacitated, or otherwise unavailable. For a deceased inventor, it is required when filing a patent application on or after September 16, 2012.
According to MPEP 409.01(a):
The substitute statement must comply with the requirements of 35 U.S.C. 115(d) and 37 CFR 1.64.
The substitute statement must:
- Identify the inventor to whom it applies
- Identify the person executing the substitute statement
- Include a statement that the person executing the substitute statement believes the named inventor to be the original inventor
- State the circumstances permitting the person to execute the substitute statement (e.g., the inventor’s death)
This statement allows the patent application process to proceed in cases where the inventor cannot personally execute the required oath or declaration.
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A substitute statement is a document that can be used in place of an inventor’s oath or declaration under certain circumstances. According to 37 CFR 1.64, an applicant may execute a substitute statement if the inventor:
- Is deceased
- Is under a legal incapacity
- Has refused to execute the oath or declaration
- Cannot be found or reached after diligent effort
The substitute statement must comply with specific requirements outlined in 37 CFR 1.64(b), including identifying the inventor, the person executing the statement, and the circumstances permitting its use. For more details on substitute statements, see MPEP § 604.
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A substitute statement is a document that can be used in lieu of an inventor’s oath or declaration under certain circumstances. According to MPEP § 409.05, a substitute statement can be used when the inventor:
- Is deceased
- Is under a legal incapacity
- Cannot be found or reached after diligent effort
- Has refused to execute the oath or declaration
The substitute statement must comply with the requirements of 37 CFR 1.64, including identifying the inventor, the person executing the statement, and the circumstances permitting its use.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on substitute statement, visit: substitute statement.
A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.
According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met.
This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.
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A juristic entity, in the context of patent applications, typically refers to an organizational assignee such as a company or corporation. According to MPEP 401, juristic entities have special requirements:
“An applicant who is a juristic entity must be represented by a patent practitioner.”
This means that companies or other organizational entities cannot represent themselves in patent applications and must hire a registered patent attorney or agent to act on their behalf.
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.
A customer number is a unique identifier assigned by the USPTO to simplify patent correspondence. According to MPEP 403:
‘A customer number allows a patent applicant, patent owner, or assignee to designate a single correspondence address for all applications and patents associated with that customer number.’
Benefits of using a customer number include:
- Easier management of correspondence addresses for multiple applications
- Simplified process for changing the address or representative for all linked applications
- Improved efficiency in USPTO communications
To obtain a customer number, you need to file a request with the USPTO using the appropriate form.
For more information on Customer Number, visit: Customer Number.
For more information on patent correspondence, visit: patent correspondence.
For more information on USPTO, visit: USPTO.
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.
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The Applicant Initiated Interview Request form (PTOL-413A) should include specific information to facilitate the interview process. According to MPEP 408:
This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.
Providing this information helps the examiner prepare adequately for the interview and ensures that all necessary parties are involved in the discussion of relevant issues.
When an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b), the declaration must include specific information about the non-signing inventor. According to the MPEP, the declaration must state:
- The full name of the non-signing inventor
- The residence of the non-signing inventor
- The post office address of the non-signing inventor
- The citizenship of the non-signing inventor
Additionally, “the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).” This ensures that the person signing has the authority to do so on behalf of the corporation.
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When a patent application is filed by someone other than the inventor under 37 CFR 1.46, the application must contain an application data sheet (ADS) with specific information. According to 37 CFR 1.46(b), the ADS must specify in the applicant information section:
- The assignee
- The person to whom the inventor is under an obligation to assign the invention
- The person who otherwise shows sufficient proprietary interest in the matter
This information should be provided in the applicant information section of the ADS, as specified in 37 CFR 1.76(b)(7). Ensuring this information is correctly included in the ADS is crucial for establishing the proper applicant for the patent application.
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What information must be included in an oath or declaration for an unavailable joint inventor?
When filing an oath or declaration for an unavailable joint inventor, specific information must be included. According to MPEP 409.03(a), the oath or declaration must contain:
- The name of the unavailable inventor
- A statement that the inventor is unavailable and the reason for unavailability
- The last known address of the unavailable inventor
Additionally, the MPEP states:
‘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.’
It’s crucial to provide as much detail as possible about the efforts made to contact the unavailable inventor and any responses received. This information helps the USPTO understand the situation and process the application appropriately.
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What information must be included in a substitute statement for a deceased or incapacitated inventor?
When filing a substitute statement for a deceased or legally incapacitated inventor, specific information must be included to ensure its validity. According to MPEP 409.01(a) and 37 CFR 1.64, a substitute statement must contain:
- Identification of the inventor to whom the substitute statement applies
- The circumstances permitting the use of a substitute statement (e.g., death, legal incapacity)
- A statement that the person signing:
- Has reviewed and understands the contents of the application
- Believes the named inventor to be the original inventor of the claimed invention
- Acknowledges the duty to disclose information material to patentability
- The relationship of the person signing to the inventor
Additionally, the substitute statement must:
- Identify the person executing the substitute statement and the capacity in which they are signing
- Be signed in accordance with 37 CFR 1.64(a)
Ensuring all required information is included in the substitute statement is crucial for the proper processing of the patent application in cases where the inventor is unavailable.
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When filing papers in a representative capacity, a patent practitioner must provide specific information to identify themselves and establish their authority. According to MPEP 402.04:
- Registration number
- Name
- Signature
The MPEP states: “In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.”
This requirement applies even when the practitioner is not of record in the application. It helps facilitate replies on behalf of applicants and eliminates the need for filing powers of attorney in individual applications when there are changes in law firms or corporate patent staffs.
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When a pre-AIA 37 CFR 1.47 application is found acceptable, certain information is published in the Official Gazette. According to the MPEP: A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).
This publication serves several purposes:
- It provides public notice of the application’s existence.
- It identifies the nonsigning inventors, which may be important for legal or intellectual property reasons.
- It establishes a clear record of the application’s status under pre-AIA 37 CFR 1.47.
This publication is an important step in the processing of these special applications and ensures transparency in the patent application process.
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When filing a patent application with an unavailable joint inventor, you must include the last known address of the nonsigning inventor. As stated in MPEP 409.03(a):
“The last known address of the nonsigning joint inventor must be stated.”
For more details on providing this information, refer to MPEP 409.03(e). This requirement helps the USPTO in potential future communications and establishes that efforts were made to locate the inventor.
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When one of multiple practitioners of record is suspended, the USPTO continues to communicate with the remaining unsuspended practitioners. MPEP § 407 provides guidance for this situation: “This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice.” The Office action is mailed to the first named unsuspended registered practitioner at their address of record. Additionally, to ensure timely receipt, a copy is also sent to the first named applicant’s address of record.
For more information on USPTO communication, visit: USPTO communication.
When a power of attorney is accepted from less than all applicants or owners, it results in multiple parties prosecuting the application simultaneously. The MPEP states:
“The acceptance of such papers by petition under 37 CFR 1.36(a) or 1.183 will result in more than one attorney, agent, applicant, or owner prosecuting the application at the same time. Therefore, each of these parties must sign all subsequent replies submitted to the Office.”
This means:
- All involved parties must sign subsequent documents.
- The USPTO will indicate who must sign future replies.
- Double correspondence is not permitted.
- Correspondence will be mailed to the attorney or agent if one is involved.
- If multiple attorneys are involved, correspondence goes to the first-named attorney unless all parties agree otherwise.
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When an inventor is added to a pre-AIA patent application through a 37 CFR 1.48 request, it can affect the existing power of attorney. According to MPEP 402.05(b):
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.
This means that if a new inventor is added and doesn’t provide a power of attorney consistent with the original one, the original power of attorney is lost. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34, which allows for acting in a representative capacity.
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The death of an inventor (or one of the joint inventors) typically terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012, unless the power of attorney is coupled with an interest (e.g., the patent practitioner is an assignee or part-assignee). As stated in MPEP 409.01(b):
“Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012.”
In such cases, a new power of attorney from the heirs, administrators, executors, or assignees is necessary if the deceased inventor was the sole inventor or if all powers of attorney in the application have been terminated.
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After acceptance of a Pre-AIA 37 CFR 1.47 application, the non-signing inventor retains certain rights and responsibilities:
- They are considered a joint inventor and will be named on any patent that may issue.
- They have the right to access the application file and receive notices from the USPTO.
- They can still submit an executed oath or declaration, which would then be entered into the file.
As stated in MPEP 409.03(j): ‘The fact that an application was accepted and prosecuted pursuant to 37 CFR 1.47 does not alter the rights or obligations of any of the inventors with regard to the application or any patent issuing thereon.’
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What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
In a pre-AIA 37 CFR 1.47 application, nonsigning inventors are notified of the application filing. The MPEP states: The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s).
This notification process ensures that all inventors, even those who didn’t sign the application, are aware of the patent application filed using their invention. It’s important to note that this notification is a courtesy and doesn’t require a response from the nonsigning inventor for the application to proceed.
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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.
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The death of a named principal or assignee can have significant implications for an existing power of attorney in a patent application. According to MPEP 402.05:
The death of the principal may terminate the power of attorney given by him or her depending on the circumstances.
This means that the power of attorney may automatically terminate upon the death of the principal. However, the specific circumstances of each case must be considered. In cases where there are multiple applicants or assignees, the power of attorney may remain in effect for the surviving parties. It’s crucial to notify the USPTO of any changes in the status of the applicant or assignee to ensure proper representation in the patent application process. If necessary, a new power of attorney should be filed by the appropriate party, such as the executor of the deceased’s estate or the remaining applicants.
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For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
A power of attorney given to a suspended or disbarred patent practitioner becomes ineffective. The MPEP states: ‘Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent matters.’ (MPEP § 407)
During an interference or derivation proceeding, any changes to the power of attorney must be forwarded to a specific board for review. As stated in MPEP 402.05: While an application is involved in an interference or derivation proceeding, any power of attorney or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
This ensures that the appropriate authority handles changes in representation during these specialized proceedings.
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When a patent practitioner dies, their power of attorney is automatically revoked or terminated. According to the MPEP, The power of attorney of a patent practitioner will be revoked or terminated by his or her death.
(MPEP 406)
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.
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When an inventor dies before filing a patent application, the legal representative (executor, administrator, etc.) of the deceased inventor can make the necessary oath or declaration and apply for the patent. This is specified in 37 CFR 1.42 (pre-AIA), which states:
“In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative must comply with the same requirements and conditions that would have been applicable to the inventor.
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If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):
“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”
However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:
“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”
This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.
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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.
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When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
When the legal representative of a deceased inventor is unavailable, the process depends on whether the application was filed before or after September 16, 2012:
- For applications filed before September 16, 2012: If the legal representative cannot be found or reached after diligent effort, or refuses to make application, pre-AIA 37 CFR 1.47 applies. In such cases, the last known address of the legal representative must be provided.
- For applications filed on or after September 16, 2012: The provisions of pre-AIA 37 CFR 1.47 do not apply. Instead, refer to current USPTO regulations and procedures.
It’s important to note that pre-AIA 37 CFR 1.47 is not an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 for deceased inventors. As stated in the MPEP, Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
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If the last-known address of an unavailable inventor is invalid, the petitioner must make a diligent effort to find a valid address. According to MPEP 409.03(b):
‘If the last known address of the nonsigning inventor(s) is invalid, petitioner must state what efforts were made to find a current address.’
This means the petitioner should document their attempts to locate the inventor, which may include searching public records, contacting former employers, or using people-finding services. If all efforts fail, this should be clearly stated in the petition.
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What happens if not all joint inventors sign a power of attorney in a patent application?
If not all joint inventors sign a power of attorney in a patent application, the power of attorney is not effective. According to MPEP 402.10:
A power of attorney must be signed by all of the applicants, or all of the assignees of the entire interest, or all parties entitled to prosecute the application, unless otherwise specified.
This means that for the power of attorney to be valid, it must be signed by all parties with the right to prosecute the application. If some inventors haven’t signed, the USPTO will treat the application as if no power of attorney has been appointed.
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What happens if not all inventors sign the power of attorney in a pre-September 16, 2012 application?
For applications filed before September 16, 2012, it’s crucial that all inventors who have not assigned their rights sign the power of attorney. According to MPEP 402.02(b):
If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.
If not all inventors sign, the power of attorney may be considered incomplete or invalid. In such cases, the USPTO may require a new power of attorney signed by all parties with the right to prosecute the application, or may accept communications only from the inventors themselves until the issue is resolved.
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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.
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What happens if an inventor dies or becomes legally incapacitated after an application is filed?
If an inventor dies or becomes legally incapacitated after an application is filed, the legal representative of the deceased or incapacitated inventor may make an oath or declaration in compliance with 37 CFR 1.64. The MPEP 409.01(a) states:
“If an inventor dies after an application naming the inventor is filed, the personal representative of the inventor’s estate may make an oath or declaration in compliance with 37 CFR 1.64.”
This process ensures that the application can continue to be prosecuted even if the inventor is no longer able to participate. The legal representative must provide evidence of their authority to act on behalf of the deceased or incapacitated inventor.
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What happens if an inventor becomes legally incapacitated during the patent application process?
If an inventor becomes legally incapacitated during the patent application process, the application can still proceed. According to MPEP 409, ‘If an inventor is legally incapacitated, the legal representative of the inventor may make an application for patent on behalf of the inventor.’ This means that a court-appointed guardian or conservator can act on behalf of the incapacitated inventor to continue the patent application process.
The legal representative must provide evidence of their authority to act for the inventor, such as a court order appointing them as guardian. They can then sign necessary documents and make decisions regarding the patent application on behalf of the incapacitated inventor.
For more information on legal representative, visit: legal representative.
If an inventor becomes available after a 37 CFR 1.47(a) petition is granted, they should be given the opportunity to join the application. The MPEP 409.03(b) provides guidance:
‘If a nonsigning inventor subsequently joins in the application, the applicant may file a petition under 37 CFR 1.182 to withdraw the 37 CFR 1.47 petition.’
This process involves:
- The newly available inventor signing the necessary oath or declaration.
- Filing a petition under 37 CFR 1.182 to withdraw the previous 1.47 petition.
- Paying any required fees for the new petition.
- Updating the application to reflect the inventor’s participation.
It’s important to address this situation promptly to ensure the application accurately reflects all participating inventors.
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What happens if an attorney or agent withdraws without notifying the USPTO?
If an attorney or agent withdraws from representation without notifying the USPTO, it can lead to several issues:
- The USPTO will continue to recognize the attorney or agent as the representative of record.
- Official correspondence will still be sent to the attorney or agent, potentially causing delays or missed deadlines.
- The applicant may not receive important communications about their application.
According to MPEP 402.06: “A registered attorney or agent who has been given a power of attorney and who withdraws from the application without relinquishing the power of attorney to the USPTO is still considered to be the attorney or agent of record.” To properly withdraw, the attorney or agent should follow the procedures outlined in 37 CFR 1.36 and notify the USPTO in writing.
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What happens if an attorney or agent withdraws from representation in a patent application?
When an attorney or agent withdraws from representation in a patent application, the following occurs:
- The USPTO will correspond directly with the applicant until a new Power of Attorney or address change is filed.
- The withdrawal is effective when approved by the Office, not when received.
- The Office may require the applicant or assignee to revoke the previous Power of Attorney and appoint a new representative.
As stated in MPEP 402.06: ‘In the event the power of attorney is withdrawn, the Office will communicate directly with the applicant… until a new registered attorney or agent is appointed.’
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If a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application, they can do so by filing the appropriate documentation. The MPEP states:
“In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.”
This means that if the inventor who initially did not sign the application later chooses to participate, they can submit a properly executed oath or declaration. This document will then be added to the official application file, effectively joining them to the application.
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If a patent application is filed without a correspondence address:
- The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
- If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
- Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
- The applicant has 2 months from the filing date to complete the application before it is abandoned.
According to MPEP 403: “If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. … If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.”
If a nonsigning inventor believes they are the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application where they are named as a joint inventor, they have a specific course of action available to them.
According to MPEP 409.03(i):
“If a nonsigning inventor feels that he or she is the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application naming him or her as a joint inventor, the nonsigning inventor may file his or her own application and request that his or her application be placed in interference with the pre-AIA 37 CFR 1.47 application.”
This means that the nonsigning inventor can:
- File their own separate patent application for the invention
- Request that their application be placed in interference with the pre-AIA 37 CFR 1.47 application
The MPEP further states: “If the claims in both the nonsigning inventor’s application and the pre-AIA 37 CFR 1.47 application are otherwise found allowable, an interference may be declared.”
An interference proceeding is a process used to determine which party has the right to a patent when two or more parties claim the same invention.
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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.
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If a legal representative hasn’t been appointed for a deceased inventor in an application filed before September 16, 2012, the situation can be complex. According to MPEP 409.01(b):
If no legal representative has been appointed, the examiner will reject the application under 35 U.S.C. 102(f) on the basis that the applicant is not the inventor and/or on the basis that there is no right to apply in any person other than the inventor.
This means that without a legal representative, the application may face rejection. It’s crucial to appoint a legal representative as soon as possible to avoid this outcome.
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What happens if a foreign patent agent’s limited recognition expires?
If a foreign patent agent’s limited recognition expires, they are no longer authorized to represent applicants before the USPTO. The MPEP states, A foreign patent agent granted limited recognition may continue to represent applicants for the remainder of any time period previously set by the USPTO for taking an action, which period is still outstanding at the expiration of the 5-year period of recognition.
(MPEP 402.01) This means that if there are any ongoing actions with set deadlines, the agent can complete those, but they cannot take on new representations or continue general practice until they renew their limited recognition status.
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After an application filed under pre-AIA 37 CFR 1.47 is accepted by the USPTO, the examiner proceeds with the application as usual. As stated in the MPEP:
“After an application deposited pursuant to pre-AIA 37 CFR 1.47 is found acceptable by the Office, the examiner will act on the application in the usual manner.”
This means that the application will be examined and processed like any other patent application, despite its initial filing under special circumstances.
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For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.
Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.
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There are two main forms that can be used to authorize a patent practitioner for an interview:
- Applicant Initiated Interview Request Form (PTOL-413A)
- Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’
According to MPEP 405:
Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
Additionally:
Alternatively, Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ which is available from the USPTO website at www.uspto.gov/sites/default/files/web/forms/sb0084.pdf may be used to establish the authority to conduct an interview.
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:
Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.
The process involves:
- The assignee signing the power of attorney (Form PTO/SB/80)
- Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)
Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.
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The USPTO provides several forms for appointing a power of attorney in patent applications filed on or after September 16, 2012. These forms are available on the USPTO website and include:
- PTO/AIA/80: For use by assignees who are either the named applicant or are becoming the applicant.
- PTO/AIA/81: For use by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney.
- PTO/AIA/82: For use by the applicant for patent to appoint one or more patent practitioners.
- PTO/AIA/81A: For use in appointing a power of attorney in a patent resulting from an application filed on or after September 16, 2012.
Each form has specific uses and requirements. For example, Form PTO/AIA/80 must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) and must be signed by the named assignee or a person authorized to act on behalf of the assignee.
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When an applicant is initiating an interview request, they should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner. The MPEP provides the following guidance:
When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This form helps streamline the interview process by providing the examiner with essential information about the proposed interview.
To support a petition under pre-AIA 37 CFR 1.47, the following evidence is typically required:
- A statement of facts signed by someone with firsthand knowledge
- Documentary evidence such as Internet searches, certified mail return receipts, cover letters of instructions, or telegrams
- Details of steps taken to locate the nonsigning inventor
The MPEP emphasizes:
‘The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted.’
It’s crucial to provide facts rather than conclusions in the statement.
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To show an inventor is unavailable or refuses to sign, the petitioner must provide substantial evidence. According to MPEP 409.03(b):
‘The fact that an inventor is unavailable or refuses to join in an application must be established by satisfactory proof… such as inability to find him or reach him after diligent effort.’
Evidence may include:
- Copies of correspondence sent to the last known address with no response
- Returned mail showing the inventor is no longer at the address
- Affidavits from people with knowledge of the inventor’s unavailability
- Documentation of attempts to contact the inventor through various means
For refusal to sign, direct evidence such as a written statement from the inventor expressing their refusal would be ideal. In the absence of such direct evidence, circumstantial evidence showing implied refusal may be considered.
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What evidence is required to prove an inventor’s refusal to sign a patent application?
When an inventor refuses to sign a patent application, specific evidence is required to proceed without their signature. The MPEP 409.03(d) outlines the necessary proof:
‘Where refusal of the inventor to sign the application papers is the reason for filing under pre-AIA 37 CFR 1.47(b), the applicant should make reasonable efforts to contact the inventor and to secure the inventor’s signature.’
Evidence of refusal typically includes:
- Documented attempts to contact the inventor (emails, letters, phone logs)
- Any written responses from the inventor indicating refusal
- Witness statements corroborating the inventor’s refusal
- A detailed explanation of the circumstances surrounding the refusal
The USPTO requires a thorough statement of facts describing the situation and efforts made to obtain the inventor’s signature. It’s crucial to demonstrate that the inventor was fully informed about the patent application and explicitly refused to sign, rather than simply being unresponsive.
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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.
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MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.
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.”
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What documents can serve as proof of proprietary interest for joint inventors?
For joint inventors, proof of proprietary interest can be established through various documents. According to MPEP 409.03(f), acceptable forms of proof include:
- An assignment for the entire right, title, and interest in the application from all inventors to one or more joint inventors
- Written statements from all inventors that they have assigned their rights in the application to one or more joint inventors
- Other evidence showing that one or more joint inventors are the only inventor(s) who have the right to prosecute the application
The MPEP states: ‘Where one of several joint inventors is deceased or cannot be reached, a statement by the prosecuting inventor as to the facts, including the names of the other joint inventors, may be accepted as sufficient proof of proprietary interest.’ This provision allows for flexibility in cases where obtaining documentation from all inventors is challenging.
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According to MPEP 402.04, there are several important documents that a person acting in a representative capacity generally cannot sign. These include:
- A power of attorney (37 CFR 1.32)
- A document granting access to an application
- A change of correspondence address
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for express abandonment without filing a continuing application (37 CFR 1.138(b))
However, there are some exceptions for applications filed on or after September 16, 2012. In these cases, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- A power of attorney has not been appointed under 37 CFR 1.32(b), and
- The patent practitioner was named in the application transmittal papers.
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When a legal representative takes over a patent application for a deceased inventor, specific documents are required:
- Proof of authority to act on behalf of the deceased inventor’s estate (e.g., Letters Testamentary, Letters of Administration)
- A new oath or declaration by the legal representative
- Any necessary assignments or other documents to establish ownership rights
According to MPEP 409.01: “The Office no longer requires proof of authority of the legal representative to prosecute the application. However, any necessary documentary evidence of the legal representative’s authority to act on behalf of the deceased inventor’s estate, such as Letters Testamentary, Letters of Administration, or a Certificate of Heirship, should be kept in the application file.”
It’s important to note that while the USPTO doesn’t require submission of proof of authority, it’s advisable to keep such documentation readily available in case it’s requested.
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What documents are required for an assignee to revoke power of attorney in a patent application?
To revoke power of attorney in a patent application, an assignee must submit specific documents to the USPTO. According to MPEP 402.07, the required documents are:
- Statement under 37 CFR 3.73(c): This establishes the assignee’s ownership.
- Revocation of the existing power of attorney
- New power of attorney from the assignee
The MPEP states:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner. The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”
It’s crucial to ensure all documents are properly executed and filed with the USPTO to effectively change the power of attorney.
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What documentation is required when filing a patent application for a deceased or legally incapacitated inventor?
When filing a patent application for a deceased or legally incapacitated inventor, specific documentation is required. According to MPEP 409.03(b), the following documentation is typically necessary:
- For deceased inventors:
- Death certificate of the inventor
- Letters Testamentary or Letters of Administration proving the legal representative’s authority
- For legally incapacitated inventors:
- Court order declaring the inventor legally incapacitated
- Guardianship or conservatorship papers demonstrating the legal representative’s authority
- For both cases:
- Oath or declaration executed by the legal representative
- Application Data Sheet (ADS) listing the inventor and indicating their status (deceased or legally incapacitated)
- Power of Attorney from the legal representative, if applicable
The MPEP states: “Proof of the authority of the legal representative must be provided to the Office.” This ensures that the person acting on behalf of the inventor has the legal right to do so.
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When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
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What documentation is required when an inventor dies during the patent application process?
When an inventor dies during the patent application process, specific documentation is required to continue the application. According to MPEP 409, the following documents are typically needed:
- A copy of the inventor’s death certificate
- Legal documentation showing the authority of the legal representative (e.g., executor of the estate)
- An oath or declaration by the legal representative
The MPEP states: ‘If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.’ This means that the executor or administrator of the deceased inventor’s estate can step in to complete the patent application process.
It’s important to note that the legal representative must provide evidence of their authority to act on behalf of the deceased inventor’s estate, such as letters testamentary or letters of administration issued by a probate court.
For more information on documentation, visit: documentation.
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What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
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What documentation is required for a legal representative to file a patent application for a deceased inventor?
When filing a patent application for a deceased inventor, a legal representative must provide specific documentation to establish their authority. According to MPEP 409.01(a):
“If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent as provided in 37 CFR 1.43. In accordance with 37 CFR 1.43, the legal representative must provide proof of authority…”
The required documentation typically includes:
- A copy of the deceased inventor’s death certificate
- Proof of the legal representative’s authority (e.g., court appointment as executor or administrator of the estate)
- A substitute statement in lieu of an inventor’s oath or declaration
- An Application Data Sheet (ADS) identifying the legal representative
It’s important to note that the specific requirements may vary depending on the circumstances and jurisdiction. Consulting with a patent attorney is advisable to ensure all necessary documentation is properly prepared and submitted.
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To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide:
- A copy of the written agreement to assign the invention
- If the agreement is conditional, a statement of facts showing the conditions have been met
MPEP 409.03(f) states:
“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. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met.”
A common example is an employment agreement. In such cases, you must provide evidence that the invention was made during the course of employment, typically through a statement from someone with firsthand knowledge of the circumstances.
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What documentation is needed to prove authority as a legal representative for a deceased or incapacitated inventor?
When filing a patent application on behalf of a deceased or legally incapacitated inventor, it’s crucial to provide documentation that proves your authority as a legal representative. The specific documentation required can vary based on the circumstances, but generally includes:
- For a deceased inventor: Death certificate and letters testamentary or letters of administration
- For an incapacitated inventor: Court order declaring incapacity and appointing a legal guardian or conservator
- Power of attorney or other legal document granting authority to act on behalf of the inventor or their estate
The MPEP 409.01(a) states:
Office personnel will not question whether the person executing the substitute statement is authorized to act on behalf of the deceased inventor’s estate or legal entity unless there is evidence to the contrary.
While the USPTO generally accepts the substitute statement without questioning the authority, it’s important to have proper documentation available in case it’s requested or if legal issues arise later. Always consult with a patent attorney to ensure you have the correct documentation for your specific situation.
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What documentation is needed for a legal representative to act on behalf of a deceased or incapacitated inventor?
To act on behalf of a deceased or incapacitated inventor, a legal representative must provide appropriate documentation to the USPTO. The MPEP 409.01(a) states:
“Office personnel will not question whether the person signing the oath or declaration is in fact a person authorized to make the statement, and will not require proof of the authority of the person making the statement.”
However, it’s important to note that while the USPTO does not require proof upfront, the legal representative should still have proper documentation, such as:
- For a deceased inventor: Letters testamentary, letters of administration, or other court documents establishing authority over the estate.
- For an incapacitated inventor: Court order appointing a guardian or conservator.
These documents may be required if the authority is later questioned or in other legal proceedings related to the patent application.
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A valid reason for filing under pre-AIA 37 CFR 1.47 requires a diligent effort to locate or reach a nonsigning inventor. The MPEP states:
‘Where inability to find or reach a nonsigning inventor “after diligent effort” is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’
It’s important to note that temporary unavailability, such as being on vacation or out of town, is not considered an acceptable reason. Additionally, hospitalization or unconsciousness are not valid reasons under this rule, but may be addressed under pre-AIA 37 CFR 1.43.
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The MPEP 409.03(g) section on proof of irreparable damage is not applicable to patent applications filed on or after September 16, 2012. This change is due to the implementation of the America Invents Act (AIA), which brought significant reforms to the U.S. patent system. Key changes include:
- Transition from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system
- New procedures for challenging patents at the USPTO
- Expanded definition of prior art
- Changes to inventor oath and declaration requirements
For applications filed on or after September 16, 2012, different rules and procedures apply regarding the representation of applicants and the handling of situations that might have previously fallen under the irreparable damage provisions.
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Pro se applicants make important certifications when filing patent applications. According to MPEP 401:
“In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).”
These certifications include statements about the truthfulness of the application, that it is not being presented for improper purposes, and that claims are warranted by existing law or a good faith argument for changing the law.
When submitting papers to the USPTO, two key certifications are made under 37 CFR 11.18(b):
- Statements made are subject to the declaration clause of 37 CFR 1.68
- The certification required for papers filed in federal court under Rule 11(b) of the Federal Rules of Civil Procedure
Specifically, 37 CFR 11.18(b) states that by presenting any paper to the USPTO, the party certifies that:
‘All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute’
This applies to both practitioners and non-practitioners submitting papers to the USPTO.
When presenting any paper to the USPTO, the party (whether a practitioner or non-practitioner) is making important certifications as outlined in 37 CFR 11.18(b):
- All statements made of the party’s own knowledge are true.
- Statements made on information and belief are believed to be true.
- The paper is not being presented for any improper purpose (e.g., harassment, delay).
- Legal contentions are warranted by existing law or non-frivolous arguments for changes in the law.
- Factual contentions have or are likely to have evidentiary support.
- Denials of factual contentions are warranted or based on lack of information or belief.
The MPEP notes: “37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or non-practitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure.”
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If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, 37 CFR 1.45(a) provides a solution. It states:
“If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor.”
In such cases, the other joint inventor(s) can proceed with the application and execute a substitute statement in lieu of an oath or declaration from the unavailable inventor, as outlined in 37 CFR 1.64. For more information on substitute statements, refer to MPEP § 604.
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The timing of filing a request to withdraw as a patent practitioner is crucial. According to the MPEP:
- The USPTO will review and decide on withdrawal requests filed before the expiration of a time period for reply or before the expiration of a time period that can be extended under 37 CFR 1.136(a).
- Requests filed after these deadlines will be placed in the application file but will not be treated on their merits.
- Revocations of power of attorney filed after these deadlines will also simply be placed in the application file, with the exception of those accompanied by a petition to revive.
It’s important to note that the USPTO may render a decision on a timely filed request even after the stated period for reply, after the application is abandoned, or after proceedings have terminated.
For reexamination proceedings, practitioners should refer to MPEP § 2223 for specific guidance on withdrawal.
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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.
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When multiple parties are prosecuting a patent application, there are specific signature requirements for replies to the USPTO. The MPEP provides clear guidance:
“Each of these parties must sign all subsequent replies submitted to the Office.”
The MPEP also provides examples to illustrate these requirements:
- “If coinventor A has given a power of attorney to a patent practitioner and coinventor B has not, replies must be signed by the patent practitioner of A and by coinventor B.”
- “If coinventors A and B have each appointed their own patent practitioner, replies must be signed by both patent practitioners.”
These examples demonstrate that all parties involved in prosecuting the application must sign subsequent replies, whether they are inventors, attorneys, or agents. This ensures that all parties are aware of and agree to the content of communications with the USPTO.
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According to 37 CFR 11.18(a), all documents filed in the USPTO for patent matters must bear a signature, with some exceptions:
- Documents that are required to be signed by the applicant or party do not need a practitioner’s signature.
- For all other documents, each piece of correspondence filed by a practitioner must be personally signed or have their signature inserted in compliance with 37 CFR 1.4(d).
The MPEP states: “37 CFR 11.18(a) emphasizes that every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party.”
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What are the signature requirements for papers filed by a juristic entity in a patent application?
For papers filed by a juristic entity (e.g., corporation) in a patent application:
- A person authorized to act on behalf of the juristic entity must sign.
- The signer’s name and title must be included.
- The papers must state the signer’s capacity to sign for the juristic entity.
The MPEP states: Papers filed on behalf of juristic entities must be signed by a patent practitioner. 37 CFR 1.33(b)(3).
(MPEP 402.03)
For example, a proper signature might look like: ‘John Smith, President, Corporation XYZ, authorized to sign on behalf of Corporation XYZ’.
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For documents submitted through EFS-Web, the USPTO accepts electronic signatures. According to MPEP 402.03:
Any paper filed in the Office in a patent application, patent file, or other proceeding which is not signed as required by 37 CFR 1.4(d) or (e) will be considered unsigned, and will be treated in accordance with 37 CFR 1.4(d)(1).
The USPTO specifically recognizes S-signatures for EFS-Web submissions. An S-signature is a signature inserted between forward slash marks, like so: /John Smith/. It’s important to note that the signer must manually type their name or use a facsimile or handwritten signature inserted between the slashes.
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S-signatures, or electronic signatures, must meet specific requirements for patent applications:
- Inserted between forward slash marks (//).
- Include the signer’s name.
- Be reasonably specific to identify the signer.
- Be handwritten or a facsimile of a handwritten signature.
According to MPEP 402.03: ‘The signature must consist only of letters, or Arabic numerals, or both. The S-signature must be signed in permanent dark ink or its equivalent.’
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When conducting interviews with patent practitioners in foreign countries, examiners must follow specific guidelines:
- Interviews must be conducted via video conference or telephone.
- In-person interviews in foreign countries are not permitted.
- The same interview policies and procedures apply as for domestic interviews.
As stated in the MPEP 408: ‘For patent practitioners in foreign countries, interviews must be scheduled to be conducted by video conference or telephone. Examiners may not hold in-person interviews with patent practitioners in foreign countries.’
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).
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A non-signing inventor, also known as an “inventor designee,” has certain rights in a patent application filed without their signature. According to MPEP § 409.03(i) (for applications filed before September 16, 2012):
- The non-signing inventor may protest their designation as an inventor
- They are entitled to inspect any paper in the application and order copies
- They can make their position of record in the file wrapper of the application
- They may arrange to do any of the above through a registered patent attorney or agent
However, the non-signing inventor is not entitled to a hearing and cannot prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded or if the proprietary interest of the pre-AIA 37 CFR 1.47(b) applicant has been shown.
For applications filed on or after September 16, 2012, similar principles apply, but the specific procedures may differ.
What are the restrictions on registered practitioners not of record during USPTO interviews?
Registered practitioners who are not of record for a specific patent application face certain restrictions when attending USPTO interviews. According to MPEP 408:
‘The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This means that while a practitioner not of record may accompany the practitioner of record to an interview, their participation is limited. They cannot actively engage in the discussion or negotiation process without explicit authorization from the patent applicant. This restriction is in place to ensure that the applicant’s interests are properly represented by their chosen practitioner of record and to maintain the integrity of the interview process.
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
For more information on registered practitioner, visit: registered practitioner.
What are the requirements for signing patent documents on behalf of juristic entities?
The requirements for signing patent documents on behalf of juristic entities (such as corporations, universities, or other organizations) are specific and strict. According to MPEP 402.04:
“Effective September 16, 2012, any paper submitted on behalf of a juristic entity must be signed by a patent practitioner.”
This means that for juristic entities:
- All patent documents must be signed by a registered patent practitioner (either a patent attorney or a patent agent).
- Employees or officers of the juristic entity cannot sign patent documents, even if they are the inventors.
- The patent practitioner must be officially appointed to represent the juristic entity before the USPTO.
This requirement ensures that juristic entities are properly represented in patent matters and helps maintain the integrity of the patent application process. It’s important for juristic entities to work with qualified patent practitioners to handle their patent applications and related documents.
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Amendments and other papers filed in a patent application must be signed by specific individuals as outlined in 37 CFR 1.33(b):
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
- The applicant (37 CFR 1.42)
It’s important to note that for juristic entities (e.g., corporations), 37 CFR 1.33(b)(3) specifies:
“Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.”
This requirement ensures that juristic entities are properly represented in patent proceedings.
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The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
S-signatures, or electronic signatures, are accepted by the USPTO for patent applications. The requirements for S-signatures include:
- The signature must be between forward slash marks (//).
- The signer’s name must be provided in printed or typed form preferably immediately below or adjacent to the S-signature.
- The S-signature may be any combination of letters, numbers, spaces, and punctuation marks.
The MPEP 402.03 states: An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./).
It’s important to note that the S-signature must be inserted by the person signing the document, not by someone else on their behalf.
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The requirements for representing applicants before international patent authorities vary depending on the specific authority. According to MPEP 402.09 and 37 CFR 11.9(c):
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.
This means that representation rights depend on the specific authority and the individual’s right to practice before the relevant national office or the International Bureau.
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What are the requirements for limited recognition to practice before the USPTO?
To obtain limited recognition to practice before the USPTO in patent matters, an individual must meet the following requirements:
- Be a scientist or engineer with a bachelor’s degree in a recognized technical subject
- Demonstrate scientific and technical training
- Possess good moral character and reputation
- Be competent to advise and assist patent applicants
As stated in MPEP 402.01: ‘The OED Director may grant limited recognition to practice before the Office in patent matters to an individual not registered to practice before the Office.’ This limited recognition is subject to the conditions specified by the OED Director.
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To file an application under pre-AIA 37 CFR 1.47(a) when at least one joint inventor is available, the following requirements must be met:
- All available joint inventors must make an oath/declaration for themselves and on behalf of the nonsigning inventor
- Proof that the nonsigning inventor cannot be found/reached after diligent effort or refuses to execute the application
- The last known address of the nonsigning inventor must be stated
As stated in MPEP 409.03(a): In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements…
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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When conducting interviews with inventors or assignees, examiners must adhere to specific requirements:
- The practitioner of record must authorize and be present for the interview.
- Inventors or assignees cannot participate without the practitioner’s presence.
- Examiners should not conduct interviews directly with inventors or assignees alone.
According to the MPEP 408: ‘Interviews with inventors or assignees and/or their attorneys or agents of record must be authorized by the practitioners of record. The practitioner of record must be present and an examiner may not conduct an interview with an inventor or assignee unless the practitioner is present.’
For more information on patent examination, visit: patent examination.
What are the requirements for a registered practitioner to obtain access to an application?
According to MPEP 405, a registered practitioner may obtain access to an application if they fulfill the following requirements:
- The practitioner must be acting in a representative capacity
- The practitioner must have proper authority from the applicant or attorney or agent of record
- Written consent from the applicant, attorney, or agent of record must be provided
The MPEP states: ‘Access will be given to the entire application file history in the absence of a specific request from the authorizing party for only a portion of the file.’ This means that unless specified otherwise, the practitioner will be granted full access to the application file.
For more information on application access, visit: application access.
For more information on registered practitioner, visit: registered practitioner.
For more information on USPTO procedures, visit: USPTO procedures.
What are the requirements for a power of attorney to be valid in patent applications?
For a power of attorney to be valid in patent applications, it must meet the following requirements:
- It must be signed by the applicant for patent (e.g., the inventor) or the assignee of the entire interest.
- It must be in writing.
- It must name one or more representatives to act on behalf of the principal.
As stated in MPEP 402.04: ‘The power of attorney must be signed by the applicant for patent (e.g., the inventor(s)) or the assignee of the entire interest of the applicant.’ This ensures that only authorized individuals can appoint representatives to act on behalf of the applicant or assignee in patent matters.
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What are the requirements for a power of attorney in applications filed before September 16, 2012?
What are the requirements for a power of attorney in applications filed before September 16, 2012?
For applications filed before September 16, 2012, there are specific requirements for a valid power of attorney. According to MPEP 402.02(b):
“For applications filed before September 16, 2012, the power of attorney must be signed by (1) the applicant, where the inventor is the applicant, or (2) the assignee of the entire interest of the applicant.”
Additionally, the power of attorney must:
- Be in writing
- Name one or more attorneys or agents
- Be signed by the applicant for patent (i.e., all of the inventors) or the assignee of the entire interest of the applicant
It’s important to note that for applications filed before September 16, 2012, a power of attorney may be incorporated in the oath or declaration form if the power of attorney is included in the same document.
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What are the requirements for a patent practitioner to withdraw from representation?
A patent practitioner who wishes to withdraw from representation must follow specific procedures. According to MPEP 403.01(a): A registered patent practitioner acting in a representative capacity in an application filed on or after September 16, 2012, may not withdraw from representation in that application without leave of the Office.
The process for withdrawal typically involves:
- Filing a request to withdraw as attorney or agent of record
- Providing reasons for the withdrawal
- Ensuring that the applicant is notified of the request
- Obtaining Office approval before ceasing representation
For detailed instructions on the withdrawal process, refer to MPEP 402.06. It’s crucial to follow these procedures to ensure a proper transition and to maintain compliance with USPTO regulations.
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What are the requirements for a non-registered individual to obtain limited recognition?
For a non-registered individual to obtain limited recognition, several requirements must be met as outlined in MPEP 402.01:
- The individual must be an attorney who is not registered to practice before the Office.
- They must show that they are acting only as an attorney for a particular named applicant.
- The attorney must be authorized to practice before a court of general jurisdiction of the state where they reside or are employed.
- The OED Director must find that the attorney possesses the scientific and technical qualifications necessary to render valuable service to the applicant.
- The attorney must apply for and be granted limited recognition by the OED Director.
It’s important to note that limited recognition is granted for a specific purpose and duration, and can be withdrawn by the OED Director at any time.
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According to 37 CFR 11.116(b), a practitioner may withdraw from representing a client for several reasons, including:
- Withdrawal can be accomplished without material adverse effect on the client’s interests
- The client persists in a course of action the practitioner reasonably believes is criminal or fraudulent
- The client has used the practitioner’s services to perpetrate a crime or fraud
- The client insists on taking action the practitioner considers repugnant or fundamentally disagrees with
- The client fails to fulfill an obligation regarding the practitioner’s services after reasonable warning
- The representation results in an unreasonable financial burden or has been rendered unreasonably difficult by the client
- Other good cause for withdrawal exists
It’s important to note that when requesting withdrawal, practitioners should be mindful of client confidentiality as required by 37 CFR 11.106. In cases involving sensitive reasons for withdrawal, practitioners should cite ‘irreconcilable differences’ and submit supporting evidence as proprietary material.
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Violations of USPTO signature and certification requirements can result in serious consequences as outlined in 37 CFR 11.18(c) and (d):
- Striking the offending paper
- Referral to the Office of Enrollment and Discipline
- Preclusion from submitting papers or contesting issues
- Affecting the weight given to the offending paper
- Termination of proceedings
- Disciplinary action against practitioners
The MPEP states: “37 CFR 11.18(d) provides that any practitioner violating the provisions of 37 CFR 11.18 may also be subject to disciplinary action, thus clarifying that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 11.18(c) for violations of 37 CFR 11.18.”
Additionally, knowingly making false statements can lead to criminal penalties under 18 U.S.C. 1001.
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Limited recognition in patent matters comes with several restrictions:
- Scope limitation: As stated in 37 CFR 11.9(a), ‘Limited recognition under this paragraph shall not extend further than the application or applications specified.’
- Duration for nonimmigrant aliens: According to 37 CFR 11.9(b), ‘Limited recognition shall be granted for a period consistent with the terms of authorized employment or training.’
- Geographical restrictions: The same regulation states, ‘Limited recognition shall not be granted or extended to a non-United States citizen residing abroad.’
- Automatic expiration: For nonimmigrant aliens, ‘Limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.’
These limitations ensure that limited recognition is granted only for specific circumstances and does not provide the same broad authority as full registration as a patent practitioner.
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For patent applications filed on or after September 16, 2012, the general requirements for powers of attorney are:
- The power of attorney must be in writing.
- It must name one or more representatives.
- It must give the representative power to act on behalf of the principal.
- It must be signed by the applicant for patent or the patent owner.
According to 37 CFR 1.32(b)(4), “A power of attorney must: […] (4) Be signed by the applicant for patent (§ 1.42) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.”
It’s important to note that an assignee who is not an applicant cannot revoke or appoint a power of attorney in a patent application.
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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.
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Violating the certification requirements when submitting papers to the USPTO can have serious consequences. According to 37 CFR 11.18(c), violations may result in:
- Striking the offending paper
- Referring a practitioner’s conduct to the Office of Enrollment and Discipline
- Precluding a party or practitioner from submitting papers or contesting issues
- Affecting the weight given to the offending paper
- Terminating proceedings in the Office
Additionally, 37 CFR 11.18(d) states that practitioners violating these provisions may be subject to disciplinary action. The USPTO Director determines appropriate sanctions after notice and opportunity to respond.
It’s important to note that violations can jeopardize the validity of applications, documents, patents, and trademark registrations. As stated in the MPEP:
‘The submission by an applicant of misleading or inaccurate statements of facts during the prosecution of applications for patent has resulted in the patents issuing on such applications being held unenforceable.’
Several court cases are cited demonstrating how false statements have led to patents being unenforceable.
Submitting unauthorized correspondence to the USPTO for patent applications filed after September 16, 2012, can have serious consequences:
- The correspondence may be returned or not entered into the application
- It could cause delays in the processing of the application
- Important deadlines might be missed, potentially leading to abandonment of the application
- There may be additional fees or costs to rectify the situation
The USPTO has strict rules about who can correspond on behalf of applicants. According to MPEP 403.01(a):
Pursuant to 37 CFR 1.33(a), if an applicant includes more than one correspondence address (37 CFR 1.33(a) ) in a patent application, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
To avoid these issues, ensure that all correspondence is submitted by authorized individuals or entities as specified in the MPEP and relevant USPTO regulations.
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What are the consequences of knowingly submitting false statements to the USPTO?
Submitting false statements to the USPTO can have serious consequences. According to MPEP 410:
“Knowingly submitting false statements or withholding material information from the Office in connection with a patent application or patent may be punishable by fine or imprisonment.”
The MPEP further states that such actions may result in:
- Invalidation of patents
- Unenforceability of patents
- Criminal prosecution
- Disciplinary action against practitioners
It’s crucial for applicants and their representatives to maintain honesty and transparency in all communications with the USPTO to avoid these severe consequences.
For more information on USPTO, visit: USPTO.
Improper signatures on patent documents can have serious consequences:
- The document may be considered unsigned and therefore ineffective.
- It could lead to delays in the patent application process.
- In some cases, it might result in the loss of rights or benefits.
- The USPTO may require a new submission with proper signatures.
MPEP 402.03 states: ‘Signatures on any paper filed in the Office relating to patents must be permanent. The Office will accept and consider electronically submitted papers bearing S-signatures or handwritten signatures.’
To avoid these issues, ensure all signatures meet USPTO requirements and are made by authorized individuals.
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For unpublished patent applications, confidentiality is a critical concern. The MPEP states:
An interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the attorney or agent to maintain confidentiality. The examiner cannot disclose any information from the application file that hasn’t been supplied by the practitioner.
For more information on unpublished applications, visit: unpublished applications.
When a patent practitioner dies, the law firm should take the following actions:
- Promptly notify the USPTO’s Office of Enrollment and Discipline (OED) of the practitioner’s death.
- Inform clients with pending applications about the situation and the need to appoint a new representative.
- Assist clients in filing new powers of attorney or authorizations of agent for pending applications.
- Provide the USPTO with updated correspondence addresses for affected applications.
The MPEP 406 states: ‘When it is known that the attorney or agent of record in an application is deceased, the Office should be promptly notified.’ This notification helps ensure a smooth transition and continued proper handling of patent applications.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
What actions can a suspended or excluded practitioner take during the 30-day limited recognition period?
During the 30-day limited recognition period, suspended or excluded practitioners are allowed to perform specific actions to protect their clients’ interests. According to MPEP 407:
“During the 30-day period of limited recognition, the suspended or excluded practitioner may conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of suspension or exclusion.”
Specifically, the practitioner may:
- Receive and forward correspondence related to pending matters
- Make appropriate filings to protect the client’s rights
- Conclude or withdraw from representation in pending proceedings
- Perform limited actions necessary to transfer the client’s case to another registered practitioner
It’s important to note that this limited recognition does not allow the practitioner to take on new clients or file new patent applications during this period.
What actions can a practitioner take to preserve an applicant’s rights without a power of attorney?
A practitioner can take certain actions to preserve an applicant’s rights without a formal power of attorney, but these are generally limited to urgent situations. The MPEP 402.04 provides some examples:
- Filing a patent application to prevent statutory bar
- Filing a response to an Office action with a nearing deadline
- Filing a notice of appeal when the period for appeal is about to expire
The MPEP states: ‘Such actions, if taken by a registered patent practitioner, will be accepted by the Office if submitted in a timely manner.’ However, it’s important to note that these actions are typically allowed only in emergencies to prevent the loss of patent rights. The practitioner should follow up with proper documentation of authority as soon as possible after taking such actions.
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While providing the last known address where the nonsigning inventor customarily receives mail is the primary requirement, the MPEP suggests that additional addresses may be beneficial:
‘Inasmuch as a nonsigning inventor is notified that an application pursuant to pre-AIA 37 CFR 1.47 has been filed on his or her behalf, other addresses at which the nonsigning inventor may be reached should also be given.’
This recommendation aims to increase the chances of successfully notifying the nonsigning inventor about the application. If you’re aware of multiple addresses where the inventor might be reached, it’s advisable to include them all.
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While the last known residence is often the appropriate address to provide, it’s not always the case. The MPEP states:
‘Ordinarily, the last known address will be the last known residence of the nonsigning inventor.’
However, the key is to provide the address where the inventor customarily receives mail. If this differs from their residence, the mailing address should be provided instead. The goal is to increase the likelihood that the nonsigning inventor will receive any USPTO communications.
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The United States Patent and Trademark Office (USPTO) does not require proof of authority to be filed by a legal representative of a deceased or incapacitated inventor. MPEP 409.01(b) states:
“Proof of authority of the legal representative of a deceased or incapacitated inventor is not required.”
However, it’s important to note that while the USPTO doesn’t require this proof, the legal representative should ensure they are properly acting in such a capacity. The MPEP advises:
“Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.”
This means that while formal proof isn’t needed for USPTO purposes, the legal representative should be prepared to demonstrate their authority if challenged in other legal contexts.
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No, MPEP 409.03(g) is not applicable to all patent applications. As stated in the editor’s note at the beginning of the section:
This MPEP section is not applicable to applications filed on or after September 16, 2012.
This means that the guidance provided in MPEP 409.03(g) regarding proof of irreparable damage only applies to patent applications filed before September 16, 2012. For applications filed on or after that date, different rules and procedures may apply.
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No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:
‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’
This is supported by several court cases cited in the MPEP, including:
- Nordberg, Inc. v. Telsmith, Inc.
- FMC Corp. v. Hennessy Indus., Inc.
- American Hoist & Derrick Co. v. Sowa & Sons, Inc.
The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.
When handling interview requests from practitioners not of record, examiners should follow these guidelines:
- Verify the requester’s authority to conduct the interview.
- Ensure the practitioner of record has authorized the interview.
- If authorization is not provided, decline the interview request.
The MPEP 408 states: ‘Interviews with practitioners not of record should be conducted only with the consent of the practitioner of record.’ It further advises: ‘An examiner should not conduct an interview with an attorney or agent who is not of record unless the attorney or agent presents either a power of attorney or a letter signed by the attorney or agent of record authorizing the interview.’
For more information on patent examination, visit: patent examination.
When handling interview requests from multiple attorneys or agents, examiners should follow these guidelines:
- Generally, only one interview is granted per application.
- If multiple practitioners request interviews, coordinate with the practitioner of record.
- Additional interviews may be granted at the examiner’s discretion.
The MPEP 408 states: ‘An interview should normally be conducted with the attorney or agent of record in an application.’ It further advises: ‘If more than one attorney or agent request an interview in an application, it is the responsibility of the attorney or agent of record to resolve any conflict.’
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:
- Changes in patent laws or regulations
- New court decisions affecting patent examination
- Evolving USPTO policies and procedures
- Feedback from patent examiners and practitioners
Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.
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.
For continuing applications where application papers from a prior application are used, special attention must be paid to the correspondence address. According to 37 CFR 1.33(f):
“Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.”
This means that applicants must explicitly specify the desired correspondence address for the continuing application to ensure proper communication with the USPTO.
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Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations:
- The inventor must be presented with the application papers.
- The inventor must understand what they are being asked to sign.
- The inventor must expressly refuse to accept the application papers.
The MPEP states:
‘A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers.’
It’s important to document the circumstances of the presentation and refusal, including time, place, and any written evidence of refusal.
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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.”
When two patent practitioners are appointed, the handling of correspondence depends on how and when they were appointed. According to MPEP 403.02:
“If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record.”
This means that the USPTO will use the most recently provided correspondence address. It’s important to note that this is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets.
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When two patent practitioners are appointed for the same application:
- If appointed simultaneously, the applicant should specify which address to use for correspondence.
- If a second practitioner is added later, correspondence will be sent to the most recently provided correspondence address.
- A new power of attorney appointing only the second practitioner effectively revokes the power of the first practitioner.
According to MPEP 403.02: “If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. … If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. … 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.”
When multiple parties are prosecuting a patent application, the USPTO has specific procedures for handling correspondence. The MPEP states:
“Double correspondence will still not be permitted. Accordingly, when the acceptance of such papers results in an attorney or agent and at least one applicant or owner prosecuting the application, correspondence will be mailed to the attorney or agent.”
Furthermore, when multiple attorneys or agents are involved:
“When the acceptance of such papers results in more than one attorney or agent prosecuting the application, the correspondence address will continue to be that of the attorney or agent first named in the application, unless all parties agree to a different correspondence address.”
Key points to remember:
- Correspondence is typically sent to the attorney or agent if one is involved.
- If multiple attorneys are prosecuting, the first-named attorney receives correspondence unless otherwise agreed.
- Each attorney or agent must indicate whom they represent in subsequent papers.
- All parties involved must sign replies to the USPTO.
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The processing of a pre-AIA 37 CFR 1.47 application involves several steps:
- A filing date is assigned if the application meets the requirements of 37 CFR 1.53(b).
- A filing receipt is sent to the applicant.
- The application or an electronic message about the petition is forwarded to the Office of Petitions.
- If the papers are found acceptable, the Office of Petitions enters a decision in the file.
- A notice is published in the Official Gazette with application details.
- The USPTO notifies the nonsigning inventor(s) or legal representative(s) by letter.
As stated in the MPEP, When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).
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In international patent applications, a common representative can be appointed in several ways. According to MPEP 402.09 and 37 CFR 1.455(b):
Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
If no specific appointment is made and there are multiple applicants, the first named applicant who is entitled to file with the U.S. Receiving Office is considered the common representative by default, as stated in 37 CFR 1.455(a).
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When a practitioner withdraws and the correspondence address will change as a result, the withdrawing practitioner(s) must request that the USPTO direct all future correspondence to one of the following:
- The first named inventor or assignee that has properly made itself of record (for applications filed before September 16, 2012)
- The applicant (for applications filed on or after September 16, 2012)
- The assignee of record (for proceedings involving issued patents)
Practitioners can specify either the correspondence address or the address associated with the Customer Number of the appropriate party. It’s important to note that withdrawing practitioners cannot change the correspondence address to another law firm’s Customer Number or any other address except those mentioned above.
This ensures that the patent application or proceeding remains properly managed after the practitioner’s withdrawal.
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The USPTO has specific methods to verify the authenticity of S-signatures:
- Comparison with other documents: The USPTO may compare the S-signature with other signatures from the same person in their records.
- Certification statement: MPEP 402.03 states: ‘The person inserting a permanent S-signature must present a statement certifying that the inserted signature is his or her own signature.’
- Audit trail: Electronic filing systems may maintain an audit trail of who submitted the document.
- Additional verification: In case of doubt, the USPTO may request additional verification or clarification.
While the USPTO generally presumes the authenticity of signatures, it’s crucial to ensure all S-signatures are genuine and properly certified to avoid potential legal issues.
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According to MPEP 406, the USPTO follows a specific procedure to notify client-applicants:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This notification ensures that the client-applicant is aware of the situation and has resources to find new representation if needed.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
How does the USPTO notify applicants of their practitioner’s suspension or exclusion?
The USPTO has a specific process for notifying applicants when their patent practitioner has been suspended or excluded. The MPEP 407 outlines this process:
“The OED Director will… notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner. The notification will be sent to the address of record in the application.”
This notification serves several purposes:
- Informs the applicant of their practitioner’s status change
- Advises the applicant of the practitioner’s limited recognition period
- Allows the applicant to take necessary actions to protect their patent application
It’s crucial for applicants to promptly respond to such notifications to ensure their patent applications are not adversely affected by their practitioner’s disciplinary status.
For more information on USPTO notification, visit: USPTO notification.
When an inventor is deceased, the MPEP 409.03(d) provides specific guidance:
In the case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may sign the necessary oath or declaration.
This means that:
- The legal representative of the deceased inventor can sign the required oath or declaration
- Proof of the inventor’s death and the legal representative’s authority should be provided
- The application can proceed with the legal representative acting on behalf of the deceased inventor
It’s important to note that the legal representative must have the authority to act on behalf of the deceased inventor’s estate. This typically requires documentation such as a death certificate and letters of administration or executorship.
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The USPTO has specific rules for representation by foreign attorneys or agents:
- Foreign attorneys or agents who are not registered to practice before the USPTO and do not reside in the U.S. are not permitted to represent patent applicants before the USPTO.
- There is an exception for Canadian patent agents under limited recognition.
- Applicants may be represented by a registered attorney or agent who is not residing in the United States.
According to MPEP 402.01: No attorney or agent residing in a foreign country may be registered to practice before the United States Patent and Trademark Office.
This emphasizes the importance of proper registration and residency for patent practitioners.
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The USPTO has specific guidelines for handling proof of refusal from a non-signing inventor. According to MPEP 409.03(d):
In the case of refusal, the proof that a bona fide attempt was made to present a copy of the application papers to the non-signing inventor for signature, but the inventor refused to sign the papers, must be submitted.
To demonstrate proof of refusal, an applicant should:
- Provide evidence of attempts to present the application to the inventor
- Document the inventor’s explicit refusal to sign
- Include any communication or statements from the inventor indicating refusal
- Submit an affidavit or declaration detailing the refusal circumstances
The USPTO will review this evidence to determine if it constitutes a valid proof of refusal.
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How does the USPTO handle proof of proprietary interest for deceased inventors?
The USPTO has specific provisions for handling proof of proprietary interest when an inventor is deceased. According to MPEP 409.03(f):
‘In the case of a deceased inventor, the proof of proprietary interest must be signed by the legal representative (executor, administrator, etc.) of the deceased inventor’s estate.’
This means that:
- The legal representative of the deceased inventor’s estate must provide the necessary documentation.
- This could be an executor or administrator appointed by the court.
- The proof should demonstrate that the legal representative has the authority to act on behalf of the deceased inventor’s estate in matters related to the patent application.
It’s important to note that the USPTO requires proper documentation to ensure that the rights of the deceased inventor are properly represented and that the application is prosecuted by those with legitimate authority to do so.
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The USPTO takes specific actions regarding powers of attorney granted to suspended or excluded practitioners. According to MPEP 407:
The Office of Enrollment and Discipline (OED) Director will contact the Director of the Technology Center (TC) managing the application when a practitioner has been suspended or excluded from practice. The OED Director will request that the TC Director review a pending application to determine whether the practitioner has been granted a power of attorney. If the suspended or excluded practitioner was given a power of attorney, the TC Director will notify the applicant and request a new power of attorney.
The process typically involves:
- Identification of affected applications by the OED Director
- Review of power of attorney status by the TC Director
- Notification to the applicant if a power of attorney exists
- Request for a new power of attorney from the applicant
- Potential application abandonment if no response is received within 30 days
For more information on power of attorney, visit: power of attorney.
How does the USPTO handle patent applications when an inventor is legally incapacitated?
The USPTO has provisions for handling patent applications when an inventor is legally incapacitated. The MPEP 409.03(b) states:
“If a person is legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
In these cases:
- The legal guardian or conservator acts on behalf of the incapacitated inventor
- They must provide proof of their legal authority to represent the incapacitated inventor
- The guardian or conservator executes the necessary oath or declaration
- They handle all aspects of the patent application process on behalf of the inventor
This approach ensures that the intellectual property rights of legally incapacitated inventors are protected and that their inventions can still be patented.
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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.”
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When multiple correspondence addresses are provided, the USPTO has a specific process for selection. According to 37 CFR 1.33(a):
“If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.”
This means that the USPTO will choose one address for all official communications, with a preference for Customer Number addresses if provided. Applicants should be aware of this to ensure they provide the most appropriate address for correspondence.
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How does the USPTO handle interviews for applications with multiple practitioners of record?
The USPTO has specific guidelines for handling interviews when multiple practitioners are of record for a patent application. MPEP 408 provides guidance on this situation:
‘Where a registered practitioner has been given a power of attorney or authorization of agent, only that practitioner, a practitioner appointed in an associate power of attorney or authorization of agent, or another registered practitioner who has the permission of one of the aforementioned practitioners may conduct an interview.’
This means that when multiple practitioners are of record, any one of them can conduct the interview. However, it’s important to note that clear communication between the practitioners is crucial to ensure consistent representation of the applicant’s interests. The USPTO typically communicates with the practitioner who initiated the interview or the one designated as the primary contact for the application.
For more information on patent examination, visit: patent examination.
For more information on power of attorney, visit: power of attorney.
How does the USPTO handle inequitable conduct in patent applications?
The USPTO takes inequitable conduct in patent applications very seriously. According to MPEP 410:
“[T]he Office will consider equitable and public policy principles in assessing whether to issue a patent to an applicant who has engaged in inequitable conduct.”
Inequitable conduct typically involves:
- Failure to disclose material information
- Submitting false material information
- Intentional misrepresentation of facts
If inequitable conduct is found, the consequences may include:
- Rejection of the patent application
- Invalidation of an issued patent
- Disciplinary action against registered practitioners
The USPTO may also refer cases of suspected fraud to the U.S. Department of Justice for potential criminal prosecution. It’s crucial for applicants and their representatives to maintain honesty and transparency throughout the patent application process.
For more information on fraud, visit: fraud.
For more information on USPTO, visit: USPTO.
How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?
When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:
- The correspondence address in the ADS takes precedence if filed with the initial application papers.
- A customer number provided in a single paper with a clear power of attorney overrides the ADS.
- If no power of attorney is filed, the correspondence address in the ADS is used.
The MPEP states:
Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record.
(MPEP 403)
It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.
For more information on application data sheet, visit: application data sheet.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO, visit: USPTO.
In a Pre-AIA 37 CFR 1.47 application, the USPTO follows specific procedures for handling correspondence. According to MPEP 409.03(j):
‘The Notice of Acceptance under 37 CFR 1.47 should remind the applicant that the nonsigning inventor has access to the application papers. Applicant may petition under 37 CFR 1.14(e) for access restriction. See MPEP § 104.’
This means that:
- The USPTO will send a Notice of Acceptance to the applicant.
- The non-signing inventor has the right to access application papers.
- The applicant can petition for access restriction if necessary.
- Regular correspondence will be sent to the applicant or their representative.
It’s important to note that while the application is prosecuted by the applicant under 37 CFR 1.47, the non-signing inventor retains certain rights, including access to the application file.
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How does the USPTO handle correspondence if no practitioner is of record in a patent application?
When no practitioner is of record in a patent application, the USPTO follows specific procedures for handling correspondence. Here’s what you need to know:
- Correspondence is sent to the applicant’s correspondence address
- The address used is the one shown in the application or the Patent Application Locating and Monitoring (PALM) system
- It’s crucial for applicants to keep their correspondence information up to date
As stated in MPEP 403.01(a): ‘If a practitioner is not of record, correspondence will be sent to the applicant’s correspondence address as shown in the application or the Patent Application Locating and Monitoring (PALM) system.’
This policy ensures that even without a practitioner of record, the USPTO can maintain communication with the applicant. It’s important for applicants to regularly check and update their correspondence information to avoid missing critical communications from the USPTO.
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How does the USPTO handle correspondence from multiple patent practitioners?
When multiple patent practitioners are involved in an application, the USPTO has specific rules for handling correspondence. MPEP 403.01(a) states: Where more than one practitioner is of record in an application, the Office will direct correspondence to the practitioner first named in the request for representation unless the request for representation specifies otherwise.
This means:
- The USPTO will typically communicate with the first-named practitioner.
- Applicants can specify a different practitioner for correspondence if desired.
- All practitioners of record have the authority to act on behalf of the applicant.
It’s important for the applicant and all involved practitioners to clearly communicate their roles and preferences for correspondence to ensure smooth communication with the USPTO. For more information on correspondence procedures, visit the USPTO’s MPEP 403 page.
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How does the USPTO handle correspondence from multiple attorneys in a patent application?
The USPTO has specific guidelines for handling correspondence from multiple attorneys in a patent application:
- If multiple attorneys are listed on the Power of Attorney form, the USPTO will direct all correspondence to the first listed attorney.
- The first listed attorney is considered the ‘correspondence address’ for official communications.
- As stated in MPEP 403.01(a): ‘If more than one attorney is of record, the Office will direct correspondence to the first listed attorney in the Power of Attorney.’
- Other listed attorneys can still communicate with the USPTO, but official correspondence will be sent to the designated address.
This approach ensures clear communication channels and prevents confusion in multi-attorney cases.
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For juristic entities (e.g., corporations, organizations), the USPTO has specific requirements for correspondence and signatures. According to 37 CFR 1.33(b)(3):
Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
This means that:
- A juristic entity must prosecute a patent application through a registered patent practitioner.
- All correspondence, amendments, and other papers must be signed by a patent practitioner on behalf of the juristic entity.
- The juristic entity cannot directly correspond with the USPTO or sign documents without representation by a patent practitioner.
This requirement ensures that juristic entities have proper legal representation in patent matters, which can be complex and have significant legal implications.
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How does the USPTO handle correspondence for applications with multiple attorneys or agents?
When an application has multiple attorneys or agents of record, the USPTO follows specific guidelines for correspondence:
- The USPTO will direct all correspondence to the first named attorney or agent of record, unless otherwise specified.
- If a customer number is provided, correspondence will be sent to the address associated with that customer number.
- Applicants can designate one or more attorneys or agents to receive correspondence by filing a power of attorney or including the information in an application data sheet.
As stated in the MPEP:
If applicant provides, in a single paper, a list of patent practitioners and a correspondence address without also filing a clear power of attorney to a patent practitioner, the Office will direct all correspondence to the correspondence address pursuant to 37 CFR 1.33(a).
(MPEP 403)
It’s important to clearly designate correspondence preferences to ensure proper communication with the USPTO.
For more information on patent agents, visit: patent agents.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO correspondence, visit: USPTO correspondence.
How does the USPTO handle correspondence for applications with multiple applicants?
The USPTO has specific rules for handling correspondence in applications with multiple applicants:
- For applications filed on or after September 16, 2012, the USPTO will direct correspondence to the first named applicant, unless a practitioner is appointed.
- For applications filed before September 16, 2012, correspondence is sent to the first named inventor, unless a practitioner is of record.
As stated in MPEP 403: ‘Where more than one attorney or agent is of record, the Office will direct correspondence to the first named attorney or agent of record, unless otherwise requested.’ This ensures clear communication channels for multi-applicant applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.
How does the USPTO handle conflicting powers of attorney in a patent application?
When conflicting powers of attorney are submitted in a patent application, the USPTO follows specific procedures to resolve the conflict. According to MPEP 402.10:
Where a written power of attorney is submitted in an application without the signature of one or more inventors or assignees, the power of attorney is not accepted until either (1) the nonsigning inventor or assignee provides a power of attorney consistent with the power of attorney provided by the other parties, or (2) the nonsigning inventor or assignee is removed from the application.
In practice, this means:
- The USPTO will not accept a power of attorney unless it is signed by all parties or consistent with previously filed powers.
- If conflicting powers are received, the Office will contact the applicants to resolve the discrepancy.
- The application may be delayed until the conflict is resolved.
- In some cases, the nonsigning inventor or assignee may need to be removed from the application for prosecution to proceed.
It’s crucial for applicants to coordinate and agree on representation to avoid such conflicts and potential delays in the patent application process.
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How does the USPTO handle conflicting instructions from multiple representatives?
When multiple representatives are authorized to act on behalf of an applicant or assignee, conflicts may arise if they provide contradictory instructions. The USPTO has a clear procedure for handling such situations. According to MPEP 402.04, “Where an applicant is represented by more than one practitioner, the Office will direct all communications to the first named representative (the representative of record) in absence of a request to the contrary or in absence of revocation of power of attorney.” This means that if conflicting instructions are received, the USPTO will generally follow the guidance provided by the representative of record, ensuring a clear line of communication and decision-making.
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The USPTO handles confidentiality in 37 CFR 1.47(a) petitions with care, recognizing the sensitive nature of the information provided. The MPEP 409.03(b) states:
‘Petitions under 37 CFR 1.47 are not available to the public since they are contained in the application file… The petition will be available to the nonsigning inventor upon request.’
This means:
- Petition documents are kept confidential as part of the non-public application file.
- The general public cannot access these petitions.
- The nonsigning inventor has the right to request and view the petition.
- The USPTO balances the need for transparency with the protection of potentially sensitive information.
Applicants should be aware that while the petition is generally confidential, the nonsigning inventor may still access it, which could affect strategies for presenting information in the petition.
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After an attorney withdraws from a patent application, the USPTO adjusts its communication process as follows:
- The Office communicates directly with the applicant or assignee.
- This direct communication continues until a new registered patent practitioner is appointed.
- The applicant or assignee who originally appointed the withdrawing attorney becomes the point of contact for all purposes in the application.
According to MPEP 402.06: ‘For applications in which the attorney or agent has withdrawn from representation, the Office will communicate directly with the applicant … until such time as a new attorney or agent is appointed.’
It’s crucial for applicants to stay responsive and consider appointing new representation promptly to ensure smooth prosecution of their patent application.
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The USPTO has specific procedures for handling changes in power of attorney and correspondence address. According to MPEP 403:
‘A new power of attorney or change of correspondence address filed in a patent application or patent does not change the correspondence address for any other application or patent.’
Key points to remember:
- Each application or patent is treated separately.
- A change in one application doesn’t automatically apply to others, even if filed by the same applicant or assignee.
- To change multiple applications, you must file separate requests for each one.
- Using a customer number can simplify this process for multiple applications.
It’s crucial to ensure that any changes are properly filed and recorded to maintain effective communication with the USPTO.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
How does the USPTO handle applications filed before September 16, 2012?
Applications filed before September 16, 2012, are subject to different correspondence rules. As stated in MPEP 403.01(a): For applications filed before September 16, 2012, pre-AIA 37 CFR 1.33(a) applies.
This means that for these older applications, the correspondence rules and procedures outlined in pre-AIA 37 CFR 1.33(a) are still in effect. It’s important to check the filing date of your application to determine which set of rules applies.
For more detailed information on pre-AIA rules, you can refer to MPEP 403 which covers correspondence for applications filed before September 16, 2012.
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The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution.
When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.
To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
The USPTO determines the correspondence address based on the most recent information provided. According to MPEP 403.02:
“If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record.”
This means that the USPTO will use the most recently provided correspondence address, regardless of which practitioner it is associated with. This practice is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets. It’s crucial for applicants and practitioners to keep the correspondence address up to date to ensure proper communication with the USPTO.
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How does the USPTO define ‘material information’ in patent applications?
The USPTO considers information to be material if it affects the patentability of an invention. According to MPEP 410:
“Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.”
In simpler terms, material information includes any facts that could affect the USPTO’s decision to grant a patent. This may include prior art, conflicting statements, or any other information that could impact the novelty or non-obviousness of the claimed invention.
For more information on prior art, visit: prior art.
For more information on USPTO, visit: USPTO.
When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:
- For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
- For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.
This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.
For international patent applications filed by non-inventor applicants, there are specific requirements outlined in 37 CFR 1.46(b):
If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
This means that for PCT applications entering the U.S. national stage or for international design applications, the non-inventor applicant must have been properly identified as the applicant for the United States during the international phase or in the international registration publication.
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The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:
- They maintain consistent numbering in the MPEP, aiding navigation and referencing
- They allow for future expansion of examination guidelines without major restructuring
- They serve as potential indicators of areas where the USPTO may develop new policies or procedures
Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.
The Manual of Patent Examining Procedure (MPEP) addresses the issue of unavailable joint inventors for applications filed on or after September 16, 2012, in section 409.02. This section provides guidance on how to proceed when a joint inventor is unavailable or unwilling to participate in the patent application process.
Key points from MPEP 409.02 include:
- Joint inventors must apply for a patent jointly and each must make an inventor’s oath or declaration.
- If a joint inventor refuses to join or cannot be found after diligent effort, the other joint inventor(s) may proceed with the application.
- A substitute statement can be executed in lieu of an oath or declaration from the unavailable inventor.
For applications filed before September 16, 2012, different procedures apply, which are covered in MPEP § 409.03 et seq.
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The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f):
“An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).”
This means that even if an original application has been assigned, and that assignment includes language covering continuations and divisions, it does not automatically cover a continuation-in-part application. This is because a CIP application, by definition, contains new matter not present in the original application.
When dealing with a CIP application under pre-AIA 37 CFR 1.47(b), applicants need to ensure that the assignment or proof of proprietary interest specifically covers the new matter included in the CIP. A new assignment or demonstration of proprietary interest may be necessary for the portions of the CIP that were not present in the original application.
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The death of an inventor can have significant implications for power of attorney in a patent application. According to MPEP 409.01(a):
Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of an inventor who is an applicant party terminates the power of attorney given by the deceased inventor in an application filed on or after September 16, 2012.
This means that in most cases, when an inventor who is also an applicant dies, any power of attorney they had given is automatically terminated. As a result:
- If the deceased inventor was the sole inventor-applicant, a new power of attorney is necessary.
- If all powers of attorney in the application have been terminated due to the inventor’s death, a new power of attorney is required.
- The new power of attorney must come from the heirs, administrators, executors, or assignees of the deceased inventor.
It’s important for legal representatives and other parties involved in the patent application to be aware of this and take appropriate action to ensure the application can continue to be prosecuted effectively.
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How does the AIA impact power of attorney for applications filed before September 16, 2012?
The America Invents Act (AIA) does not significantly change the power of attorney requirements for applications filed before September 16, 2012. As stated in MPEP 402.02(b):
For applications filed before September 16, 2012, all parties having the right to prosecute the application at the time of filing the power of attorney must act together in appointing a power of attorney.
This means that the pre-AIA rules continue to apply for these older applications. However, it’s important to note that any new applications filed on or after September 16, 2012, are subject to the updated AIA rules regarding power of attorney.
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How does the AIA change the process for applications with deceased or incapacitated inventors?
The America Invents Act (AIA) introduced significant changes to the patent application process, including how applications with deceased or legally incapacitated inventors are handled. According to MPEP 409.01(a):
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent.”
Key changes under the AIA include:
- Allowing assignees or those with sufficient proprietary interest to file applications
- Introduction of the substitute statement to replace inventor oaths in certain circumstances
- Simplified process for continuing prosecution when an inventor becomes unavailable
- Removal of the need for heirs or legal representatives to expressly petition to file on behalf of a deceased inventor
These changes streamline the application process and provide more flexibility when dealing with situations involving deceased or incapacitated inventors, making it easier for the remaining inventors or interested parties to pursue patent protection.
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When a power of attorney is revoked, it affects pending applications as follows:
- The revocation is effective upon receipt in the USPTO.
- It applies to all pending applications in which the attorney or agent was appointed, unless specifically limited.
- The Office will not communicate further with the revoked attorney/agent.
- The applicant must appoint a new representative or correspond directly with the Office.
As stated in MPEP 402.05: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ This means the revocation can occur at any point during the patent application process.
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When a power of attorney is revoked, it’s important to understand its impact on pending amendments in a patent application. According to MPEP 402.05:
Any amendments made in an application after the filing date of the application will not be effective to revoke a power of attorney.
This means that if an applicant submits an amendment to revoke a power of attorney after the application’s filing date, that amendment will not be effective in revoking the power of attorney. To properly revoke a power of attorney, the applicant must follow the specific procedures outlined in the MPEP, such as submitting a separate revocation document or a new power of attorney.
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MPEP 409.03(f) provides guidance on handling patent applications when an inventor is deceased or legally incapacitated. The section states:
‘When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or assignee on compliance with the foregoing provisions.’
This means that in cases of a deceased inventor, the patent can still be issued to their legal representative or assignee, provided they comply with the requirements for proving proprietary interest. For legally incapacitated inventors, similar provisions apply, allowing the legal guardian or other authorized representative to act on behalf of the inventor in patent matters.
It’s important to note that in these situations, additional documentation such as death certificates or court orders establishing legal guardianship may be required to establish the authority of the person acting on behalf of the inventor.
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MPEP 402.08 has significant implications for patent attorneys involved in derivation proceedings. The key provision states:
For patent attorneys, this means:
- Any changes in representation must go through the PTAB, not regular USPTO channels.
- There may be delays in processing power of attorney changes due to PTAB review.
- Attorneys must be prepared to justify changes in representation to the PTAB if necessary.
- The timing of representation changes may be influenced by the ongoing derivation proceeding.
Patent attorneys should be aware of these special procedures to ensure smooth transitions in representation during derivation proceedings.
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Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.
This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:
- See MPEP § 1807 for representation in international applications (PCT)
- See MPEP § 2911 for representation in international design applications
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When an inventor becomes legally incapacitated before filing a patent application and executing the required oath or declaration, a legal representative must be appointed to act on their behalf. According to 37 CFR 1.43 (pre-AIA):
“In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative, typically appointed by a court of competent jurisdiction, can then execute the oath or declaration and proceed with the patent application process on behalf of the incapacitated inventor.
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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.
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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:
- 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.”
- 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.”
- 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.
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How does attorney withdrawal affect the power of attorney in a patent application?
When an attorney withdraws from a patent application, it affects the power of attorney status. According to MPEP 402.06:
“The Office will not remove the names of practitioners who have been granted a power of attorney or authorization of agent from the list of practitioners of record at the request of the practitioner filing the withdrawal.”
This means that even after withdrawal, the attorney’s name may remain on record unless specific actions are taken. However, the withdrawn attorney no longer has the authority to act on behalf of the application. To fully revoke the power of attorney, the applicant must file a revocation and/or new power of attorney. It’s crucial for applicants to update their power of attorney promptly after an attorney’s withdrawal to ensure proper representation and communication with the USPTO.
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How does attorney withdrawal affect pending patent applications?
When an attorney withdraws from representation in a pending patent application, it can have several implications:
- The applicant becomes responsible for prosecuting the application.
- Official correspondence will be sent directly to the applicant.
- Deadlines and response periods remain in effect.
- The applicant may need to find new representation quickly.
According to MPEP 402.06:
“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”
It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.
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How does an attorney or agent officially withdraw from a patent application?
To officially withdraw from a patent application, an attorney or agent must follow these steps:
- Submit a request to withdraw as attorney or agent of record.
- The request must be signed by the attorney or agent of record.
- Include the application number and filing date.
- Provide the names of the inventors and assignee (if applicable).
- State the reason for withdrawal.
The MPEP 402.06 states: ‘When an attorney or agent of record in an application withdraws… the Office of Enrollment and Discipline should be notified by the withdrawing attorney or agent.’ This notification ensures proper processing of the withdrawal request.
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How does an assignee become of record in a patent application?
An assignee must become of record in a patent application before they can revoke the power of attorney given by the applicant. According to MPEP 402.07, this process involves:
- Filing a statement under 37 CFR 3.73(c)
- Complying with the requirements of 37 CFR 3.71
The MPEP states:
“The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”
This typically involves submitting documentary evidence of the chain of title from the original owner to the assignee, such as assignment documents. Once the USPTO recognizes the assignee as the owner of record, they can proceed with revoking the existing power of attorney and appointing a new one.
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To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:
- Show that the invention has been assigned to the applicant
- Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
- Otherwise demonstrate a proprietary interest in the subject matter of the application
The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”
For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).
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Adding an inventor to a patent application can affect an existing power of attorney under certain circumstances. According to MPEP 402.05(a):
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.
This means that if a new inventor is added to the application and does not provide a power of attorney that matches the existing one, the original power of attorney will be lost when the request to add the inventor is granted. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34 if applicable.
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Adding an inventor to a patent application can potentially affect an existing power of attorney. According to MPEP 402.02(a):
“If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.”
This means that if a new inventor is added to the application and does not provide a power of attorney consistent with the existing one, the original power of attorney will be lost. However, this provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable.
It’s important for applicants and practitioners to be aware of this potential consequence when adding inventors to an application, and to take appropriate steps to maintain or reestablish the desired power of attorney.
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The rules for acting in a representative capacity differ slightly for applications filed before and after September 16, 2012. According to MPEP 402.04:
For applications filed on or after September 16, 2012:
A patent practitioner acting in a representative capacity must submit papers on behalf of all parties identified as the applicant. They cannot represent only some of the applicant parties.
For applications filed before September 16, 2012:
A patent practitioner may act in a representative capacity on behalf of:
- The applicant, or
- The assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73
Additionally, for pre-September 16, 2012 applications, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- An executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed, and
- The patent practitioner was named in the application transmittal papers.
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In pre-AIA patent applications (filed before September 16, 2012), a power of attorney given by the assignee of the entire interest has significant implications for previous powers of attorney. As stated in the MPEP:
A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b).
This means that when the assignee of the entire interest files a new power of attorney, it effectively cancels all previous powers of attorney given by the applicant or any prior assignees. However, the assignee must properly establish their right to take action in the application according to the relevant regulations.
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To show ‘sufficient proprietary interest’ for filing a patent application, an individual or entity must demonstrate a significant legal or equitable interest in the invention. According to MPEP 409.05:
Quote: ‘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.’
To establish sufficient proprietary interest, the applicant must:
- Provide proof of the relevant facts demonstrating their interest in the invention
- Show that filing the application is necessary to preserve the rights of all parties involved
- Submit a petition under 37 CFR 1.46 to the Office of Petitions
The Director of the USPTO will then determine if the evidence sufficiently demonstrates proprietary interest.
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If an inventor becomes legally incapacitated after signing the oath or declaration, the application can still proceed. According to MPEP 409.01:
If an inventor who executed the oath or declaration becomes legally incapacitated after the application is filed but before the patent issues, no substitute oath or declaration is required.
This means that the previously signed oath or declaration remains valid, and the application can continue through the patent process without requiring additional documentation regarding the inventor’s incapacitation.
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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.
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How do I update the list of practitioners associated with a Customer Number?
To update the list of practitioners associated with a Customer Number, follow these steps:
- Complete the Change of Correspondence Address Form (PTO/SB/122)
- Provide the Customer Number and the updated list of registered practitioners
- Submit the form to the USPTO
The MPEP 403 specifies:
‘A request to change the correspondence address or list of registered practitioners associated with a Customer Number must be made in writing.’
It’s important to note that:
- Only registered practitioners can be added to a Customer Number
- Changes will affect all applications associated with the Customer Number
- The USPTO recommends using the online Electronic Business Center (EBC) for faster processing
Keeping the practitioner list up-to-date ensures proper communication and representation for all linked patent applications.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
When filing a patent application, you must specify a correspondence address in one of two ways:
- In an application data sheet (ADS) under 37 CFR 1.76, or
- Elsewhere in the application papers in a clearly identifiable manner
As stated in 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 will be used by the USPTO to send all official communications regarding your application.
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To revoke a power of attorney in a patent application:
- The applicant or assignee of the entire interest must submit a revocation signed by them.
- The revocation should be submitted to the USPTO in writing.
- It can be done by filing a new power of attorney (Form PTO/AIA/82) and checking the revocation box.
- Alternatively, you can submit a document specifically revoking the previous power of attorney.
As stated in the MPEP 402: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ It’s important to note that revoking a power of attorney does not remove attorneys from the list of patent practitioners associated with an application. To do that, you must file a separate request.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
To prove an invention has been assigned in a pre-AIA 37 CFR 1.47(b) application, you must submit the following:
- A copy of the assignment in English
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
According to MPEP 409.03(f):
“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. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324).”
It’s important to note that the assignment must specifically cover the invention described in the application. General assignments may not be sufficient.
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Joint inventors who are the applicant can appoint a power of attorney in a patent application using Form PTO/AIA/81. This form allows joint inventors to give one or more joint inventor-applicants the power of attorney to sign on behalf of all joint inventor-applicants.
According to the MPEP:
“Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by ‘the applicant,’ all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney.”
For example, if there are four joint inventors (A, B, C, and D) who are all applicants, and they wish to appoint inventor-applicant C as having power of attorney, all four inventors (A, B, C, and D) must sign the power of attorney form appointing C.
It’s important to note that all joint inventor-applicants must sign the power of attorney, even those who are being given the power to act on behalf of the others.
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How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
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How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
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.
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To prove that a joint inventor cannot be found or refuses to sign the patent application, you must provide evidence of your diligent efforts. According to MPEP 409.03(a):
“The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers.”
For specific guidance on what constitutes acceptable proof, refer to MPEP 409.03(d). This may include documented attempts to contact the inventor, returned mail, or written statements from the unavailable inventor indicating their refusal to sign.
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The USPTO provides several ways to find a registered patent attorney or agent, as mentioned in MPEP 401:
- Visit the USPTO website: www.uspto.gov/FindPatentAttorney for a searchable listing of registered practitioners.
- Write to the Office of Enrollment and Discipline (OED) to request a list of registered patent practitioners in your area:
Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
These resources can help you locate a qualified patent professional to assist with your patent application.
How can I change the correspondence address for multiple patent applications?
Changing the correspondence address for multiple patent applications can be efficiently done using the USPTO’s Customer Number practice. Here’s how:
- Obtain a customer number if you don’t already have one.
- Associate your patent applications with the customer number.
- Update the address linked to the customer number.
The MPEP explains:
A Customer Number may be used to: … (2) change the correspondence address, fee address, or list of practitioners of record for a plurality of applications or patents through a single request.
(MPEP 403)
This process eliminates the need to file separate change of address forms for each application, saving time and reducing the risk of errors. To make changes, use the USPTO’s Electronic Filing System (EFS-Web) or file a written request with the USPTO.
For more information on Customer Number, visit: Customer Number.
Applicants can find a new registered patent attorney or agent through resources provided by the USPTO. According to MPEP § 407: “Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO website, https://oedci.uspto.gov/OEDCI/, or by calling the Office of Enrollment and Discipline at (571) 272-4097.” These resources allow applicants to search for qualified practitioners who can represent them before the USPTO.
For more information on USPTO Resources, visit: USPTO Resources.
When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:
- Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
- Calling the Office of Enrollment and Discipline at (571) 272-4097
This information is provided in Form Paragraph 4.07 of MPEP § 407.
An heir of a deceased inventor can file a patent application under certain conditions. The MPEP 409.01(b) states:
If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or heirs of the deceased inventor.
To file the application, the heir should:
- Obtain legal recognition as the heir or legal representative
- File the application on behalf of the deceased inventor
- Provide documentation proving their status as heir or legal representative
- Complete the necessary oath or declaration
It’s advisable to consult with a patent attorney to ensure all legal requirements are met.
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An attorney or agent who has been given power of attorney can withdraw by submitting a request to the USPTO. According to MPEP 402.06:
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“A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director.”
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The request should briefly state the reason(s) for withdrawal. If based on issues like lack of compensation, it’s recommended to cite “irreconcilable differences” to maintain client confidentiality. The withdrawal is effective when approved by the USPTO, not when received.
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Practitioners must take steps to protect the client’s interests when withdrawing, such as giving reasonable notice and allowing time to hire new counsel. The Request for Withdrawal As Attorney or Agent form (PTO/AIA/83) can be used.
For more information on patent representation, visit: patent representation.
For more information on power of attorney, visit: power of attorney.
How can an associate power of attorney be given in applications filed before September 16, 2012?
For applications filed before September 16, 2012, an associate power of attorney can be given by a principal attorney or agent to one or more associate attorneys or agents. According to MPEP 402.02(b):
“For applications filed before September 16, 2012, a power of attorney may be given to one or more attorneys or agents. (37 CFR 1.32(c)(1)). A principal attorney or agent may appoint an associate attorney or agent.”
The associate power of attorney must be signed by the principal attorney or agent who was appointed in the application. It’s important to note that the associate power does not have to be approved by the Office and becomes effective upon submission.
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For applications filed on or after September 16, 2012, an assignee must first become the applicant under 37 CFR 1.46(c) to revoke a previously given power of attorney and/or grant a new one. This is because, as stated in the MPEP, any power of attorney must be signed by the applicant or patent owner
. The process involves:
- The assignee becoming the applicant
- Revoking the previous power of attorney
- Granting a new power of attorney
For more details on establishing the right of an assignee to take action, refer to MPEP § 325.
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For applications filed on or after September 16, 2012:
- The other joint inventor(s) may file the application on behalf of themselves and the non-signing inventor.
- A substitute statement can be filed in lieu of an oath or declaration for the non-signing inventor.
As stated in MPEP § 409.02: “If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor.”
For more information on substitute statement, visit: substitute statement.
How can an applicant revoke a power of attorney?
An applicant can revoke a power of attorney by submitting a new power of attorney (Form AIA/82 for applications filed on or after September 16, 2012, or Form PTO/SB/80 for applications filed before September 16, 2012) or by submitting a revocation signed by the applicant. As stated in the MPEP:
“A power of attorney may be revoked at any stage in the proceedings of a case, and an applicant may appoint a new attorney or agent at any stage in the proceedings of the case by filing a new power of attorney.” (MPEP 402)
It’s important to note that the revocation should be clear and unambiguous, and it should be submitted to the USPTO for proper processing.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
For patent applications filed before September 16, 2012, an applicant can revoke a power of attorney using Form PTO/SB/81. According to MPEP 402.05(b), “Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012.” The revocation can be done at any stage of the proceedings by an applicant for patent or an assignee of the entire interest of the applicant.
It’s important to note that fewer than all of the applicants or assignees may revoke the power of attorney only upon showing sufficient cause and paying a petition fee. The patent practitioner will be notified of the revocation, and the notice will be mailed to the correspondence address for the application in effect before the revocation.
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How can an applicant revoke a power of attorney filed on or after September 16, 2012?
An applicant can revoke a power of attorney filed on or after September 16, 2012, by following these steps:
- Submit a new power of attorney (Form AIA/82 or equivalent) that is properly executed by the applicant.
- File a revocation of the previous power of attorney. This can be done using the revocation form PTO/AIA/82A or by submitting a clear instruction to revoke the previous power of attorney.
According to MPEP 402.02(a):
“The power of attorney may be revoked by filing a revocation of power of attorney. The revocation may be signed by the applicant for patent (all parties identified as the applicant or invention) or the patent owner. A new power of attorney from the applicant for patent (all parties identified as the applicant) or the patent owner may also be filed, which will act as a revocation of the previous power.”
It’s important to note that the new power of attorney must be properly executed by all applicants to be effective in revoking the previous power of attorney.
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Under pre-AIA 37 CFR 1.47(b), an applicant can prove irreparable damage by providing a statement that demonstrates the necessity of a filing date. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This statement should explain why obtaining a specific filing date is crucial for preserving the applicant’s rights or preventing significant harm to their interests.
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How can an applicant proceed if an inventor is deceased?
If an inventor is deceased, the applicant can proceed with the patent application by filing a petition under 37 CFR 1.47(b). The MPEP states:
“When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or heir of the inventor upon proper intervention.”
To file the petition, the applicant must:
- Submit the petition fee set forth in 37 CFR 1.17(g)
- Provide proof of the inventor’s death, such as a death certificate
- Include an oath or declaration by the legal representative or heir
The legal representative or heir should state their relationship to the deceased inventor and that they are the legal representative or heir.
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If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:
- Submitting a legal memorandum
- Providing an affidavit or declaration of firsthand knowledge
- Including copies of relevant statutes or court decisions (if non-U.S.)
MPEP 409.03(f) states:
“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”
The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.
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When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP 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.
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Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
A registered patent attorney or agent who has been given a power of attorney can withdraw as attorney or agent of record by following these steps:
- File an application for withdrawal with the USPTO Director
- Obtain approval from the Director
- Provide notice to the client
As stated in 37 CFR 1.36(b): A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent.
It’s important to note that the withdrawal is effective only when approved by the USPTO, not when the request is received.
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How can a practitioner become of record in a patent application filed on or after September 16, 2012?
A practitioner can become of record in a patent application filed on or after September 16, 2012, through the following methods:
- Filing an Application Data Sheet (ADS) that names the practitioner as the representative
- Filing a power of attorney (POA) signed by the applicant
- Filing a patent application transmittal letter signed by the applicant and naming the practitioner as a representative
- Being named as the representative in the oath or declaration
As stated in MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This allows for easier management of multiple practitioners associated with a single customer number.
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A person who shows sufficient proprietary interest in an invention can file a patent application as the applicant. According to MPEP § 409.05, such a person must submit a petition including:
- The fee set forth in 37 CFR 1.17(g)
- A showing of sufficient proprietary interest in the matter
- A statement that making the application on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The proprietary interest can be demonstrated by a legal memorandum showing that a court would likely award title of the invention to the applicant. Supporting facts and documentation should be provided.
For more information on proprietary interest, visit: proprietary interest.
A registered patent attorney or agent who has been given a power of attorney may withdraw as attorney or agent of record by submitting a request to the USPTO. The process involves:
- Filing a request for withdrawal with the USPTO
- Obtaining approval from the Director of the USPTO
- Notifying the applicant or patent owner of the withdrawal
MPEP 402.06 states: “When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request.”
The practitioner must also take steps to protect the client’s interests, such as giving reasonable notice and allowing time for the client to find new representation.
How can a legal representative file a patent application for a deceased inventor?
For patent applications filed on or after September 16, 2012, a legal representative can file a patent application for a deceased inventor by following these steps:
- Submit an Application Data Sheet (ADS) naming the deceased inventor
- Include a substitute statement in lieu of an inventor’s oath or declaration
- Provide documentation showing the legal representative’s authority to act on behalf of the deceased inventor’s estate
The MPEP states: If an inventor dies during the prosecution of an application, or before an application is filed, the legally recognized representative of the inventor may make the substitute statement.
(MPEP 409.01(a))
It’s important to note that the legal representative must have the authority to act on behalf of the deceased inventor’s estate or other legal entity holding the appropriate rights.
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How can a legal representative file a patent application for a deceased inventor after September 16, 2012?
For patent applications filed on or after September 16, 2012, a legal representative can file an application for a deceased inventor by following these steps:
- File the application normally, listing the deceased inventor
- Submit an Application Data Sheet (ADS) identifying the legal representative
- Include a substitute statement in lieu of an inventor’s oath or declaration
According to MPEP 409.01(a): “If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent as provided in 37 CFR 1.43.” The legal representative must provide documentation of their authority to act on behalf of the deceased inventor.
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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.
How can a joint inventor apply for a patent if another joint inventor is deceased or legally incapacitated?
If a joint inventor is deceased or legally incapacitated, the other joint inventor(s) can still apply for a patent by following these steps:
- File the application naming the deceased or legally incapacitated inventor
- Submit a statement identifying the unavailable inventor and their last known address
- Show that the signing inventor is obligated to assign the patent to the same entity as the unavailable inventor, or has sufficient proprietary interest
- Submit the oath or declaration by the available inventor(s)
As stated in MPEP 409.01(a): “In the case of a deceased or legally incapacitated joint inventor, the applicant should identify the unavailable inventor on an application data sheet (ADS) or a substitute statement.”
This process allows the patent application to move forward despite the unavailability of one of the joint inventors.
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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.
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When all inventors are unavailable or unwilling to sign a patent application, there are still options for filing. According to MPEP § 409.03(b) (for applications filed before September 16, 2012) and MPEP § 409.05 (for applications filed on or after September 16, 2012):
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest in the matter may file the application
In such cases, substitute statements would need to be filed in lieu of inventors’ oaths or declarations, along with the necessary petitions and evidence of the applicant’s right to file the application.
For more information on assignee applicant, visit: assignee applicant.
For more information on proprietary interest, visit: proprietary interest.
In a pre-AIA 37 CFR 1.47 application, papers filed by an inventor who did not initially join the application are handled as follows:
“Papers filed by an inventor who did not originally join in the application, and papers relating to its pre-AIA 37 CFR 1.47 status, will be placed in the file wrapper.”
This means that any documents submitted by the previously non-signing inventor, as well as any paperwork related to the application’s pre-AIA 37 CFR 1.47 status, are included in the official application file for record-keeping and potential future reference.
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The USPTO accepts handwritten signatures in patent applications, but they must meet specific requirements:
- The signature must be personally applied by the signer.
- It can be in permanent dark ink or its equivalent.
- The entire signature must be contained within the signature area of the document.
According to MPEP 402.03: A handwritten signature must be personally applied by the signer. See 37 CFR 1.4(d)(1).
It’s important to note that while handwritten signatures are accepted, the USPTO encourages electronic filing and signatures for efficiency and accuracy in processing applications.
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For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.
This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.
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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.
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Pre-AIA 37 CFR 1.47 does not directly apply to deceased inventors. The MPEP clearly states: Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
However, pre-AIA 37 CFR 1.47 does apply in cases where a known legal representative of a deceased inventor:
- Cannot be found or reached after diligent effort, or
- Refuses to make application
In such situations, the last known address of the legal representative must be provided, as per MPEP § 409.03(e).
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Can the USPTO independently verify information provided by patent applicants?
Yes, the USPTO has the authority to independently verify information provided by patent applicants. MPEP 410 states:
“The Office is not the guarantor of the accuracy, correctness or completeness of the information supplied by the applicant.”
This means that while the USPTO relies on the information provided by applicants, it may:
- Conduct its own investigations
- Request additional information or evidence
- Consult external sources to verify claims
Applicants should be aware that the USPTO can and may verify any information submitted during the patent application process. It’s crucial to provide accurate and complete information to avoid potential legal issues or loss of patent rights.
For more information on patent application information, visit: patent application information.
No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:
- A listing is available at www.uspto.gov/FindPatentAttorney
- Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)
Patent practitioners should not rely on information from reserved MPEP sections, as these sections do not contain any official guidance or information. A reserved section, such as MPEP 404, is essentially a placeholder and does not provide any substantive content. Practitioners should instead:
- Refer to active, non-reserved sections of the MPEP
- Consult the most recent USPTO guidelines and notices
- Stay updated on changes to patent laws and regulations
- Seek guidance from official USPTO sources when needed
It’s important to always use the most current and official information when dealing with patent matters.
Can one co-inventor revoke a power of attorney in a patent application?
No, a single co-inventor cannot unilaterally revoke a power of attorney in a patent application. The MPEP 402.10 states:
A power of attorney may not be revoked by less than all of the applicants or owners of the entire interest without good and sufficient reason, and the revocation must be approved by the Director.
This means that to revoke a power of attorney, all co-inventors or owners of the entire interest must agree to the revocation. If a single co-inventor wishes to revoke the power of attorney, they must provide a good and sufficient reason, and the revocation must be approved by the Director of the USPTO.
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Yes, non-US citizens, specifically nonimmigrant aliens residing in the United States, can obtain limited recognition for patent matters under certain conditions. According to MPEP 402.09 and 37 CFR 11.9(b):
A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.
However, it’s important to note that limited recognition is not granted to non-US citizens residing abroad and automatically expires upon the nonimmigrant alien’s departure from the United States.
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No, non-registered representatives should not be contacted for patent application actions, even if they appear to be authorized by the attorney or agent of record. The MPEP clearly states:
In addition, non-registered representatives of the practitioner of record should not be contacted for such actions, even if apparently authorized by the attorney or agent of record.
This restriction helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in critical communications.
Generally, the USPTO maintains only one correspondence address for each patent application. As stated in MPEP 403:
‘The Office will direct all notices, official letters, and other communications relating to the application to a single correspondence address.’
However, there are exceptions:
- Powers of attorney to different practitioners may be present in an application, but only one correspondence address is recognized.
- In reexamination proceedings, a ‘duplicate copy’ may be sent to a different address.
- Maintenance fee reminders may be sent to a ‘fee address’ that differs from the correspondence address.
It’s important to note that while multiple addresses may be associated with an application for specific purposes, the USPTO will generally communicate with only one primary correspondence address.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO, visit: USPTO.
While it’s possible to include multiple correspondence addresses for a single patent application filed after September 16, 2012, the USPTO will ultimately select only one for official use. Here’s what you need to know:
- Multiple addresses can be provided in the application
- The USPTO will choose one address as the official correspondence address
- If a Customer Number is provided, it may be given preference
- Only the selected address will receive official communications
The MPEP 403.01(a) states:
Pursuant to 37 CFR 1.33(a), if an applicant includes more than one correspondence address (37 CFR 1.33(a) ) in a patent application, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
To ensure clear communication, it’s best to designate a single, preferred correspondence address for your application. If you need to change this address later, you can file a request with the USPTO.
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Yes, multiple attorneys can be appointed in a patent application. According to MPEP 402.02:
More than one attorney, agent, or other party may be appointed as representative of the applicant or owner.
When appointing multiple attorneys:
- Use the appropriate power of attorney form (PTO/AIA/82 for applications filed on or after September 16, 2012, or PTO/SB/81 for earlier applications).
- List all attorneys or agents to be appointed.
- Specify if they are to act independently or as a team.
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Can limited recognition be granted to Canadian patent agents?
Yes, limited recognition can be granted to Canadian patent agents. According to MPEP 402.01: Canadian patent agents are not authorized to practice before the Office without proper recognition from the OED Director. Canadian patent agents who are registered and in good standing with the Canadian Patent Office may be granted limited recognition to represent a named applicant in a specific application if the named applicant also appoints a registered U.S. practitioner.
This provision allows Canadian patent agents to participate in specific applications, but with certain restrictions and requirements.
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Yes, individuals granted limited recognition can file certain documents in patent applications. According to the MPEP 402.01:
Persons granted limited recognition are considered practitioners under 37 CFR 11.1 and thus permitted to perform the same patent prosecution functions of registered patent agents and registered patent attorneys when prosecuting a specified patent application or specified patent applications.
Specifically, they can file:
- A power of attorney (37 CFR 1.32(b)(4))
- A document granting access to an application (37 CFR 1.14(c))
- A change of correspondence address (37 CFR 1.33(a))
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for an express abandonment (37 CFR 1.138(b))
However, it’s important to note that these individuals are still subject to the restrictions expressed in their grant, including temporal, employer, and visa limitations.
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Yes, in most cases. According to MPEP 401, “An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office.” However, there are important considerations:
- Juristic entities (e.g., companies) must be represented by a patent practitioner
- Pro se applicants are subject to the same rules and potential sanctions as represented applicants
- Lack of familiarity with patent procedures may result in missed opportunities for optimal protection
Yes, heirs can apply for a patent on behalf of a deceased inventor under certain circumstances. According to MPEP 409.01(b):
“Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.”
In such cases, the heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64. This allows heirs to proceed with the patent application process when no formal legal representative has been appointed.
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Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:
The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.
Can an inventor’s attorney conduct an interview without a power of attorney?
Yes, an inventor’s attorney can conduct an interview without a power of attorney under certain conditions. The MPEP 405 provides guidance on this matter:
Interviews may be granted to an attorney or agent who is not of record in an application if the conditions of 37 CFR 1.33(b)(3) are satisfied.
This means that if the attorney or agent complies with the requirements set forth in 37 CFR 1.33(b)(3), they can conduct an interview even without a formal power of attorney. These requirements typically include providing evidence of their authority to act on behalf of the applicant.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO procedures, visit: USPTO procedures.
No, an inventor cannot authorize another individual to act as their agent to sign the application oath or declaration on their behalf. The MPEP is clear on this point, stating: “An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf.”
This prohibition is supported by legal precedents, as the MPEP cites: “Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm’r Pat. 1973).” These cases reinforce the requirement for the inventor’s personal signature on the oath or declaration.
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Can an attorney withdraw from patent representation without client consent?
While it’s generally preferable to obtain client consent, an attorney can withdraw from patent representation without client consent under certain circumstances. However, they must still follow proper procedures and notify the USPTO. The MPEP 402.06 states:
“The requirements for withdrawal of an attorney or agent are set forth in 37 CFR 1.36. The Office of Enrollment and Discipline (OED) handles withdrawal of entire firms.”
Key points to consider:
- The attorney must provide notice to the client and the USPTO.
- Reasons for withdrawal without consent may include ethical conflicts or non-payment of fees.
- The USPTO may require the attorney to show good cause for withdrawal.
- The withdrawal should not unduly prejudice the client’s interests.
Attorneys should consult 37 CFR 1.36 and applicable state bar rules when considering withdrawal without client consent.
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Can an attorney withdraw from a patent application without the applicant’s consent?
Yes, an attorney can withdraw from a patent application without the applicant’s consent under certain circumstances. However, the withdrawal must be approved by the USPTO. The MPEP 402.06 states:
‘An attorney or agent may withdraw from representing an applicant or assignee in a patent application pending before the USPTO… When appropriate, the Office will require the applicant or assignee to revoke the previous power of attorney and appoint new attorney(s) of record.’
While the applicant’s consent is not explicitly required, the USPTO considers the following factors when deciding whether to approve a withdrawal:
- The reasons for withdrawal
- The stage of prosecution
- The potential impact on the applicant
The USPTO may deny the withdrawal if it would unduly prejudice the applicant or delay the prosecution of the application.
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Can an assignee revoke power of attorney in all types of patent applications?
An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:
“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”
This means assignees can revoke power of attorney in:
- Applications involved in interference or derivation proceedings
- National stage applications under 35 U.S.C. 371
For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.
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In general, an assignee can revoke a power of attorney in most applications. However, there is an exception for certain government-owned applications. The MPEP states:
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.
This implies that in some government-owned applications, an irrevocable right to prosecute may have been granted, which would prevent the assignee from revoking the power of attorney. If you’re dealing with a government-owned application, it’s crucial to check whether such an irrevocable right exists before attempting to revoke a power of attorney.
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Can an assignee revoke a power of attorney given by the applicant in a patent application?
Yes, an assignee can revoke a power of attorney given by the applicant in a patent application, provided certain conditions are met. According to MPEP 402.07:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner.”
This is possible when:
- The assignee has properly become of record pursuant to 37 CFR 3.71.
- The application is involved in an interference or derivation proceeding.
- The application is national stage application filed under 35 U.S.C. 371.
It’s important to note that the assignee must follow proper procedures and file the necessary documents with the USPTO to effectuate this change.
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Yes, for applications filed on or after September 16, 2012, an assignee can file a patent application as the applicant. According to MPEP § 409.05:
“An assignee or obligated assignee may file a patent application as the applicant. An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) as provided for in 37 CFR part 3 no later than the date the issue fee is paid in the application.”
However, to be the sole applicant, the assignee must have been assigned the entire interest in the application.
For more information on patent applicant, visit: patent applicant.
Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:
- The assignee must have originally appointed the withdrawing attorney or agent.
- The assignee becomes recognized by the Office for all purposes in the application.
- The assignee can sign amendments and other papers related to the prosecution.
The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’
It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.
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An assignee’s ability to appoint a power of attorney in a patent application depends on whether the assignee is the applicant. According to the MPEP:
- An assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71.
- An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c), which requires compliance with 37 CFR 3.71 and 3.73.
As stated in the MPEP, “An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71.” However, “An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73).”
It’s important to note that an assignee who is not an applicant cannot revoke or appoint a power of attorney in a patent application without first becoming the applicant.
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Can an applicant communicate directly with the USPTO if they have a registered patent attorney?
Generally, when an applicant is represented by a registered patent attorney or agent, direct communication between the applicant and the USPTO is discouraged. The USPTO has specific rules regarding this situation:
- The USPTO will communicate directly with the registered attorney or agent of record.
- Applicants should channel their communications through their appointed representative.
- Direct communication from the applicant may not be officially recognized or acted upon by the USPTO.
MPEP 403.01 clearly states: “The Office will not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director.” This policy ensures clear and efficient communication channels and prevents potential confusion or contradictory instructions. If an applicant wishes to communicate directly, they should first revoke the power of attorney or authorization of agent on record.
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Yes, an applicant can appoint two patent practitioners for the same application. However, when doing so, it’s important to specify the correspondence address. As stated in the MPEP:
“If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address.”
This ensures clear communication between the USPTO and the applicant’s representatives. For more details, refer to MPEP § 403, MPEP § 403.01(a), and MPEP § 403.01(b).
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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.
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No, a third party or its representative cannot use the provisions of 37 CFR 1.34 to conduct an interview or take other actions not specifically permitted by the rules of practice. MPEP 405 states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that attempting to use 37 CFR 1.34 for unauthorized actions could lead to disciplinary consequences for registered practitioners.
Generally, third parties are not permitted to conduct interviews or take actions in patent applications. The MPEP clearly states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that only authorized representatives (such as registered attorneys or agents with proper authorization) can conduct interviews or take actions on behalf of the applicant. Third parties attempting to do so may face disciplinary action, especially if they are registered practitioners.
For more information on disciplinary action, visit: disciplinary action.
For more information on patent interviews, visit: patent interviews.
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.
Yes, registered patent practitioners can file papers in patent applications and reexamination proceedings without being of record. MPEP 405 states:
Papers may be filed in patent applications and reexamination proceedings by registered attorneys or agents not of record under 37 CFR 1.34. Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the practitioner is implicitly stating they have authorization to act on behalf of the applicant, even if they are not officially recorded as the attorney or agent of record.
Yes, a pre-AIA 37 CFR 1.47 application can be published as a Statutory Invention Registration, but with a specific condition. According to the MPEP:
“An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).”
It’s important to note that this option is only available for requests filed before March 16, 2013, as the America Invents Act eliminated Statutory Invention Registrations for applications filed on or after that date.
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Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:
‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’
This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.
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The USPTO has specific rules regarding withdrawal for practitioners acting in a representative capacity under 37 CFR 1.34:
- The USPTO will not approve withdrawal requests from practitioners acting in a representative capacity.
- These practitioners are responsible for the correspondence they file in the application while acting in a representative capacity.
- There is no need for these practitioners to obtain the USPTO’s permission to withdraw from representation.
However, it’s important to note that practitioners acting in a representative capacity, like those with power of attorney, remain responsible for compliance with 37 CFR 1.56 (duty of disclosure) and 37 CFR 11.18 (signature and certification requirements) for documents they file.
This distinction ensures that practitioners understand their ongoing responsibilities even when acting in a limited representative capacity.
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Can a practitioner act on behalf of an applicant without a power of attorney?
Yes, a practitioner can act on behalf of an applicant without a power of attorney in certain circumstances. According to MPEP 402.04:
‘A practitioner may in some circumstances within the discretion of the Office act without any power of attorney or authorization of agent when it appears necessary to preserve the rights of the applicant.’
This provision allows for urgent action to be taken to protect the applicant’s interests, even if a formal power of attorney is not in place. However, it’s important to note that this is at the discretion of the USPTO and is typically limited to situations where immediate action is necessary to prevent loss of rights.
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Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:
- For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
- For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.
MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”
Can a power of attorney be revoked in applications filed before September 16, 2012?
Yes, a power of attorney can be revoked in applications filed before September 16, 2012. The MPEP 402.02(b) states:
“A power of attorney may be revoked at any stage in the proceedings of a case.”
The revocation process for pre-September 16, 2012 applications involves the following:
- The revocation must be in writing.
- It must be signed by the applicant or the assignee of the entire interest of the applicant.
- The revocation is not effective until it is accepted by the Office.
It’s important to note that revoking a power of attorney does not automatically grant power to a new attorney. A new power of attorney must be filed to appoint a new representative.
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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.
The revocation of a power of attorney must be done in writing and cannot be accomplished through informal means such as telephone or email. The MPEP 402.05 states:
A power of attorney may not be revoked by a telephone call.
While this quote specifically mentions telephone calls, the same principle applies to emails or other informal communications. To properly revoke a power of attorney, applicants must submit a written revocation document or a new power of attorney that complies with the requirements set forth in MPEP 402. This ensures that the revocation is properly documented and effective in the patent application process.
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Yes, a power of attorney can be revoked by fewer than all of the applicants, but with certain conditions. According to MPEP 402.05:
‘A power of attorney may be revoked by fewer than all of the applicants (or fewer than all patent owners in a reexamination proceeding or supplemental examination proceeding) if the power was granted by fewer than all of the applicants or patent owners.’
This means:
- If the original power of attorney was granted by all applicants, it must be revoked by all applicants.
- If the original power was granted by a subset of applicants, that same subset can revoke it.
- In cases of joint inventors, careful consideration must be given to who originally granted the power.
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No, a power of attorney cannot be partially revoked for specific patent applications. The MPEP 402.05 states:
‘A principal cannot revoke selected powers of the power of attorney while leaving other powers in effect.’
This means that when revoking a power of attorney, it must be revoked in its entirety for all applications and patents to which it was applied. If you wish to maintain representation for certain applications while revoking others, you would need to file a new power of attorney for those specific applications you want to keep under representation.
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Can a power of attorney be granted to a foreign patent attorney or agent?
In general, a power of attorney in U.S. patent applications can only be granted to practitioners who are registered to practice before the USPTO. According to MPEP 402.02:
“The Office cannot recognize more than one power of attorney in an application at any given time. However, a registered attorney or agent may be appointed in a representative capacity under 37 CFR 1.34 in addition to any power of attorney that may be in effect.”
While foreign patent attorneys or agents cannot be directly granted power of attorney, they can work with U.S. registered practitioners who can be appointed. Additionally, foreign attorneys can be recognized as representatives under 37 CFR 1.34 for limited purposes, such as filing papers or receiving Office communications.
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Can a power of attorney be granted to a foreign attorney or agent for US patent applications?
A power of attorney for US patent applications can only be granted to individuals who are registered to practice before the USPTO. Foreign attorneys or agents who are not registered with the USPTO cannot be granted power of attorney.
According to MPEP 402: “The Office cannot recognize more than one power of attorney or authorization to act in a representative capacity in a particular application or patent at any given time.” This means that only USPTO-registered practitioners can be given power of attorney.
However, foreign attorneys can work with US-registered patent practitioners who can be granted power of attorney. The foreign attorney can then collaborate with the US-registered practitioner to manage the application.
For more information on power of attorney, visit: power of attorney.
Generally, papers giving or revoking a power of attorney in an application require signatures from all applicants or owners. However, there are exceptions:
- For revocation: A petition under 37 CFR 1.36(a) with a fee and showing of sufficient cause is required.
- For appointment: A petition under 37 CFR 1.183 with a fee, demonstrating an extraordinary situation where justice requires waiver of the requirement in 37 CFR 1.32(b)(4), is necessary.
As stated in the MPEP: “Papers giving or revoking a power of attorney in an application generally require signature by all the applicants or owners of the application.”
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Yes, a petition under 37 CFR 1.47(a) can be filed for multiple unavailable inventors. The MPEP 409.03(b) states:
‘Where there are joint inventors, each nonsigning inventor must be petitioned for separately, even if more than one nonsigning inventor is unavailable.’
This means that while a single petition can cover multiple unavailable inventors, the petition must address each inventor individually, providing specific information and evidence for each one’s unavailability.
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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.
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No, a patent practitioner acting in a representative capacity cannot represent only some of the applicants in a joint application. According to MPEP 402.04, when a patent practitioner files a paper in an application filed on or after September 16, 2012, they must be submitting the paper on behalf of all parties identified as the applicant.
The MPEP explicitly states: “The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant.”
For example, if there are three joint inventors who disagree about how to proceed with the application, a patent practitioner representing only one inventor cannot file papers to the exclusion of the other joint inventors. Similarly, when there are multiple assignees identified as the applicant, a patent practitioner cannot file papers on behalf of only some of the parties.
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Yes, a registered patent practitioner who is not of record can conduct an interview if they have proper authorization from the applicant. According to MPEP 405:
Interviews may be conducted with a registered practitioner who has proper authority from the applicant, or an attorney or agent of record in the form of a power of attorney or authorization to act in a representative capacity, whether or not the practitioner has a copy of the application file.
The practitioner can show authorization by completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A) or using Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’.
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.
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No, a patent practitioner cannot appoint a substitute to take over their cases after death. The MPEP 406 clearly states: “The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.” This means that any arrangements made by a practitioner for a substitute after their death will not be valid in the eyes of the USPTO.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO policy, visit: USPTO policy.
No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.
(MPEP 406)
Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:
Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.
For more information on patent filing, visit: patent filing.
For more information on USPTO procedures, visit: USPTO procedures.
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.
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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.
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Can a patent application be filed if the sole inventor is deceased?
Yes, a patent application can be filed even if the sole inventor is deceased. The MPEP 409.03(b) provides guidance on this situation:
“When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or assignee of the deceased inventor.”
In such cases, the legal representative (such as an executor or administrator of the inventor’s estate) can file the application on behalf of the deceased inventor. They must provide proof of their authority to act on behalf of the deceased inventor’s estate, typically in the form of Letters Testamentary or Letters of Administration.
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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.
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Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
No, a partial assignee cannot file a patent application as the sole applicant. The MPEP clarifies this point:
Because all parties having any portion of ownership in a patent property must act together as a composite entity in patent matters before the Office, a partial assignee (e.g., a party who owns 50% of the interest) cannot on its own file a patent application as the applicant.
This means that if multiple parties have ownership interests in the invention, they must act together to file the patent application. For more information on joint ownership, see MPEP § 301.
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A nonsigning inventor who subsequently joins an application cannot revoke or grant a power of attorney in certain situations. MPEP 402.05(a) explains:
37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
This means that if a nonsigning inventor later submits an oath or declaration in an application filed under specific circumstances (such as joint inventors, deceased or legally incapacitated inventors, or assignee filing), they cannot use this submission to revoke an existing power of attorney or grant a new one.
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In a pre-AIA 37 CFR 1.47 application, a nonsigning inventor has limited rights regarding the power of attorney. According to MPEP 402.05(b):
A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.
This means that while a nonsigning inventor can later join the application by submitting the required oath or declaration, they do not have the authority to unilaterally revoke or grant a power of attorney. Any such action would require the agreement of the original pre-AIA 37 CFR 1.47 applicant.
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Yes, a nonsigning inventor can join a pre-AIA 37 CFR 1.47 application. However, there are specific requirements and limitations to this process.
According to MPEP 409.03(i):
“A nonsigning inventor may join in a pre-AIA 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate pre-AIA 37 CFR 1.63 oath or declaration.”
It’s important to note that even if the nonsigning inventor joins the application, they have limited powers. The MPEP further states:
“Even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the 37 CFR 1.47 applicant.”
This means that while the nonsigning inventor can become part of the application, they do not gain full control over it and must still work in agreement with the original applicant.
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Can a non-inventor appoint a power of attorney in a pre-September 16, 2012 application?
Yes, under certain circumstances, a non-inventor can appoint a power of attorney in applications filed before September 16, 2012. The MPEP 402.02(b) states:
If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.
This means that a non-inventor, such as an assignee or other party with proper authority, can appoint a power of attorney if:
- No power of attorney is currently on file
- They provide proper documentation showing ownership or authority to act on behalf of all applicants
- They follow the same rules that would apply to inventors appointing a power of attorney
It’s important to note that the non-inventor must have the authority to act for all applicants, not just some of them.
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Can a non-attorney represent an applicant before the USPTO?
Yes, a non-attorney can represent an applicant before the USPTO under certain circumstances. According to MPEP 402.04, there are specific provisions for non-attorney representation:
- Patent agents: Registered patent agents who are not attorneys can represent applicants in patent matters before the USPTO.
- Limited recognition: Individuals granted limited recognition by the USPTO Director can represent applicants in specific patent matters.
- Pro se representation: Applicants can represent themselves (pro se) in their own patent applications.
However, it’s important to note that “Effective September 16, 2012, any paper submitted on behalf of a juristic entity must be signed by a patent practitioner.” This means that corporations and other non-human entities must be represented by a registered patent practitioner, who may be either a patent attorney or a patent agent.
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Yes, a new patent practitioner can be appointed after the death of the previous one. The USPTO explicitly states in Form Paragraph 4.03: A new registered attorney or agent may be appointed.
This allows the applicant or patent owner to ensure continued representation in patent matters following the death of their previous practitioner.
Can a legal representative use an S-signature for patent documents?
Yes, a legal representative can use an S-signature for patent documents, provided they meet the following requirements:
- The S-signature must be inserted between forward slash marks
- The signer’s name must be presented in printed or typed form
- The capacity of the signer must be included with the signature
The MPEP 402.03 states: ‘When an S-signature is employed in a document filed with the Office in connection with a patent or application, it must be accompanied by the printed or typed name of the signer. The number and qualification of persons required to execute a particular document are governed by the statute requiring the document and applicable regulations.’
For legal representatives, it’s crucial to include their capacity (e.g., attorney, agent) along with their S-signature to ensure compliance with USPTO requirements.
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Can a legal representative sign the oath or declaration for an unavailable joint inventor?
Yes, in certain circumstances, a legal representative can sign the oath or declaration for an unavailable joint inventor. According to MPEP 409.03(a):
‘If an inventor is deceased or legally incapacitated, the legal representative of the inventor may sign the oath or declaration as the inventor.’
The legal representative must provide proof of their authority to act on behalf of the unavailable inventor. This might include:
- Death certificate and letters testamentary for a deceased inventor
- Court order appointing a guardian for a legally incapacitated inventor
It’s important to note that this provision applies only to deceased or legally incapacitated inventors, not to those who are simply unavailable or unwilling to sign.
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Yes, a legal representative can sign patent documents on behalf of the inventor under certain circumstances. The MPEP 402.03 states:
Where a power of attorney or authorization of agent is given to a customer number, a practitioner must sign the correspondence if an applicant is to be represented.
This means that if a power of attorney has been granted, the authorized practitioner can sign documents on behalf of the inventor. However, it’s important to note that certain documents, such as the inventor’s oath or declaration, must still be signed by the inventor personally unless specific conditions are met (e.g., the inventor is deceased, legally incapacitated, or cannot be found after diligent effort).
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Can a juristic entity appoint a power of attorney in a patent application?
Yes, a juristic entity (such as a corporation or organization) can appoint a power of attorney in a patent application. However, there are specific requirements for doing so:
- The power of attorney must be signed by a person authorized to act on behalf of the juristic entity
- The person signing must have apparent authority to bind the juristic entity
The MPEP provides guidance on this matter:
A power of attorney from a juristic entity must be signed by a person authorized to act on behalf of the juristic entity. […] A power of attorney to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest of the applicant is the power of attorney of the applicant or assignee, not the power of attorney of the practitioner.
(MPEP 402.02(a))
It’s important to note that the power of attorney belongs to the juristic entity, not to the practitioner who is appointed.
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Can a juristic entity applicant sign a power of attorney form for a patent application?
No, a juristic entity applicant (such as a corporation or organization) cannot directly sign a power of attorney form for a patent application. Instead, the power of attorney must be signed by a person authorized to act on behalf of the juristic entity.
According to MPEP 402.02(a):
“A power of attorney must be signed by the applicant for patent (37 CFR 1.42) or the patent owner (for reissue applications or reexamination proceedings). A power of attorney may only be signed by the applicant for patent (37 CFR 1.42) or the patent owner of record of the entire interest or their representative. An applicant for patent that is the assignee must comply with 37 CFR 3.71 and 3.73 to establish ownership of the application.”
For juristic entity applicants, this typically means that an officer or employee of the organization who has the authority to bind the organization must sign the power of attorney. This could be a CEO, president, or other authorized representative of the company.
It’s important to note that the person signing on behalf of a juristic entity should also provide their title or position within the organization to demonstrate their authority to act on behalf of the applicant.
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Can a joint inventor apply for a patent if another joint inventor is unavailable or refuses to join?
Yes, a joint inventor can apply for a patent even if another joint inventor is unavailable or refuses to join the application. The MPEP 409 states: ‘If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor.’
The process involves:
- Filing the application on behalf of all inventors
- Submitting a petition under 37 CFR 1.45
- Providing proof of the unavailability or refusal of the non-signing inventor
- Including an oath or declaration by the participating inventor(s)
This provision ensures that the patent application process can proceed even when not all joint inventors are available or willing to participate.
For more information on joint inventors, visit: joint inventors.
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.
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Can a deceased inventor’s legal representative sign an assignment for a patent application?
Yes, a deceased inventor’s legal representative can sign an assignment for a patent application. According to MPEP 409.01(a):
“The legal representative (executor, administrator, etc.) of a deceased inventor may make an assignment of the deceased inventor’s rights in the application as well as sign the substitute statement. See MPEP § 409.01(b).”
This provision allows the legal representative to manage the deceased inventor’s intellectual property rights, including assigning those rights to other parties. It’s important to note that the legal representative must have proper authority to act on behalf of the deceased inventor’s estate, which typically requires documentation such as letters testamentary or letters of administration.
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Can a Customer Number be used for multiple patent applications?
Yes, a Customer Number can be used for multiple patent applications. This is one of the primary benefits of the Customer Number system. The MPEP 403 states:
‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’
This means that:
- A single Customer Number can be associated with multiple patent applications
- Changes to the correspondence address or list of registered practitioners can be made once and applied to all linked applications
- It simplifies portfolio management for applicants and law firms handling multiple patents
Using a Customer Number for multiple applications streamlines communication with the USPTO and helps ensure consistent handling of related patent matters.
For more information on Customer Number, visit: Customer Number.
Yes, a corporation can file a patent application under pre-AIA 37 CFR 1.47(b). The MPEP explicitly states that “Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration.”
Additionally, “A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf.” However, proper authorization or proof of authority may be required in such cases.
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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.
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Yes, there are significant restrictions on contacting patent practitioners who are not of record for a patent application. According to MPEP § 408, Registered attorneys or agents not of record in a patent application (i.e., there is no power of attorney present in the file that appoints the patent practitioner(s)) and acting in a representative capacity under 37 CFR 1.34 should not be contacted for restriction requirements or approval of examiner’s amendments.
This policy is in place to ensure that only properly authorized representatives are involved in making decisions about patent applications. For more information on interviews with patent practitioners not of record, refer to MPEP § 405.
Yes, there are strict restrictions on communicating with unregistered, suspended, or excluded attorneys regarding patent applications. The MPEP clearly states:
Office employees are forbidden from holding either oral or written communication with an unregistered, suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant.
This rule helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in patent-related communications with the USPTO.
Yes, there are exceptions to the requirement for all applicants to sign power of attorney documents. The MPEP provides one specific exception:
“In an application filed under pre-AIA 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who has signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183.”
This exception applies to applications filed before the America Invents Act (AIA) under specific circumstances. However, it’s important to note that this exception does not apply in all cases. The MPEP also states:
“However, in applications accepted under pre-AIA 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the application will not be granted.”
For more information on these exceptions, refer to MPEP § 402.07 and MPEP § 409.03(i).
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Yes, juristic entities (e.g., organizational assignees) must be represented by a patent practitioner. As stated in MPEP 401:
An applicant who is a juristic entity must be represented by a patent practitioner.
This requirement ensures that organizations have proper legal representation when navigating the complex patent application process. Individual inventors and joint inventors, however, may represent themselves if they choose to do so.
For more information on juristic entity, visit: juristic entity.
For more information on organizational assignee, visit: organizational assignee.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.
No, nonsigning inventors are not entitled to a hearing in pre-AIA 37 CFR 1.47 cases. This is explicitly stated in MPEP 409.03(i):
“A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972))”
This precedent, set by the case of Cogar v. Schuyler, establishes that while nonsigning inventors have certain rights, such as inspecting application papers and making their position of record, they do not have the right to a formal hearing in these cases.
Additionally, the MPEP states:
“While the U.S. Patent and Trademark Office will grant the nonsigning inventor access to the application, inter partes proceedings will not be instituted in a pre-AIA 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm’r Pat. 1955).”
This further emphasizes that while nonsigning inventors have access to application information, they cannot initiate inter partes proceedings, which would include hearings, in pre-AIA 37 CFR 1.47 cases.
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Patent Procedure (419)
Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:
- To maintain consistent numbering across editions
- To allow for future expansion of content
- To accommodate planned updates or revisions
- To serve as placeholders for potential new topics or guidance
This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.
In patent applications filed before September 16, 2012, the power of attorney can be signed by either the inventor(s) or the assignee of the entire interest. However, the MPEP recommends that the assignee sign the power of attorney when one exists. As stated in the MPEP:
While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client.
This recommendation aims to avoid potential conflicts and ensure clear representation in cases where the relationship between the assignee and inventors may deteriorate.
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After the USPTO is notified of a patent practitioner’s death, correspondence is sent to two parties:
- The office of the deceased practitioner
- The person who originally appointed the deceased patent practitioner
This dual notification ensures that both the practitioner’s office and the original appointer are aware of ongoing patent matters and can take appropriate action.
Both practitioners and non-practitioners are responsible for ensuring compliance with USPTO signature and certification requirements when filing papers. According to 37 CFR 11.18(b):
“By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—”
This means that anyone submitting papers to the USPTO, including independent inventors, corporate representatives, and patent attorneys, is responsible for ensuring that the submissions meet the signature and certification requirements. Practitioners have additional responsibilities and may face disciplinary action for violations as specified in 37 CFR 11.18(d).
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During interference or derivation proceedings, power of attorney changes are handled by a specific entity within the USPTO. According to MPEP 402.08:
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
This means that the Patent Trial and Appeal Board (PTAB) is responsible for considering and processing any changes to power of attorney during these special proceedings. This differs from the normal procedure for regular patent applications, where such changes would typically be handled by the Office of Patent Application Processing or the examining corps.
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When there’s no attorney of record, the signatories for patent application papers depend on the filing date and the applicant type. For applications filed before September 16, 2012, MPEP § 407 states: “All papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34.”
For applications filed on or after September 16, 2012: “All papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.”
When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:
For applications filed before September 16, 2012:
- All named applicants
- Assignee of record of an undivided part interest, along with named applicants retaining an interest
- Assignee of the entire interest
- A registered patent attorney or agent not of record acting under 37 CFR 1.34
For applications filed on or after September 16, 2012:
- A patent practitioner of record
- A patent practitioner not of record acting under 37 CFR 1.34
- The applicant (except for juristic entity applicants, which require a patent practitioner)
This information is provided in Form Paragraph 4.07 of MPEP § 407.
Who can sign a substitute statement for a deceased or incapacitated inventor?
In cases where an inventor is deceased or legally incapacitated, specific parties are authorized to sign a substitute statement. According to MPEP 409.01(a):
“A substitute statement under 37 CFR 1.64 may be signed by the applicant or an assignee of the entire interest on behalf of a deceased or legally incapacitated inventor.”
The following parties can sign a substitute statement:
- The applicant (if different from the inventor)
- An assignee of the entire interest
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
It’s important to note that the person signing the substitute statement must have the legal authority to act on behalf of the deceased or incapacitated inventor. This ensures that the patent application can proceed even when the original inventor is unable to participate in the process.
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According to MPEP 402.09, applicants in international patent applications can be represented by:
- Attorneys or agents registered to practice before the USPTO
- An applicant appointed as a common representative
- An attorney or agent with the right to practice before the national office where the international application is filed (for specific authorities)
As stated in 37 CFR 1.455(a): Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9).
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According to MPEP 409.01(a), several parties can file a patent application on behalf of a deceased or legally incapacitated inventor:
- Legal representative:
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor.
- Assignee or obligated assignee:
Under 37 CFR 1.46, a person to whom the inventor assigned (‘assignee’), to whom the inventor was under an obligation to assign (‘obligated assignee’), or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of the deceased or legally incapacitated inventor.
- Administrator or executor: These parties can also file an application, but may need to obtain new letters of administration if they have been discharged from their duties.
It’s important to note that proof of authority is not required by the USPTO, but any person acting as a legal representative should ensure they are properly authorized to do so.
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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.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
The regulation states: 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.
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The correspondence address in a patent application can be changed by specific parties as outlined in 37 CFR 1.33(a):
- A patent practitioner of record (37 CFR 1.33(b)(1))
- The applicant (37 CFR 1.33(b)(3))
- Prior to the appointment of any power of attorney, any patent practitioner named in the application transmittal papers who acts in a representative capacity under 37 CFR 1.34
It’s important to note that after a power of attorney has been appointed, a practitioner acting in a representative capacity cannot change the correspondence address until after the patent has issued, and only with proper notice to the patentee or owner.
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Limited recognition for patent matters can be granted to two main categories of individuals:
- Non-registered individuals: As per 37 CFR 11.9(a), individuals not registered under § 11.6 may be granted limited recognition under certain circumstances.
- Nonimmigrant aliens: According to 37 CFR 11.9(b):
A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.
It’s important to note that limited recognition is granted on a case-by-case basis and is subject to specific restrictions and conditions.
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Under pre-AIA 37 CFR 1.47(b), the term ‘person’ is broadly interpreted. The MPEP states that “The word ‘person’ has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation.” This means that both individuals and legal entities can potentially file an application under this provision, provided they meet the other requirements.
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For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.
As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”
According to the MPEP, an examiner can contact the patent practitioner of record in the application for interviews. The MPEP states:
When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
It’s important to note that registered attorneys or agents not of record should not be contacted for certain actions, such as restriction requirements or approval of examiner’s amendments.
A revocation of power of attorney becomes effective on the date it is received by the USPTO, not on the date it is accepted. As stated in MPEP 402.05: Revocation of a power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE).
The Office will send an appropriate notification upon revocation.
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The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:
See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.
This reference to MPEP § 402.03 suggests that there are certain circumstances where an attorney or agent not of record may be allowed to change the correspondence address or grant access to application information. For specific details, it’s recommended to consult MPEP § 402.03 directly.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO procedures, visit: USPTO procedures.
A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:
“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”
However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.
According to MPEP 409.03(d), acceptable evidence to prove inventor unavailability or refusal can include:
- Copies of letters or email messages sent to the inventor requesting their signature
- Returned receipt indicating the inventor’s refusal to accept mail
- Statements from people who have attempted to contact the inventor
- Evidence of the inventor’s mental or physical incapacity
- Evidence of the inventor’s unavailability due to absence
- Other pertinent evidence that demonstrates the inventor’s unavailability or refusal
The MPEP states: ‘The proof of unavailability or refusal will be examined by the Office.’ This means that the USPTO will carefully evaluate the submitted evidence to determine if it sufficiently demonstrates the inventor’s unavailability or refusal.
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The MPEP provides specific guidance on the type of address that should be provided for the nonsigning inventor in pre-AIA 37 CFR 1.47 applications:
‘That address should be the last known address at which the inventor customarily receives mail.’
This typically means providing the most recent address where the inventor is known to receive correspondence. It’s important to provide an address where the USPTO’s communications are most likely to reach the nonsigning inventor.
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When dealing with a nonsigning inventor under pre-AIA 37 CFR 1.47, the following steps should be taken to present application papers:
- Send a copy of the application papers to the last known address of the nonsigning inventor.
- If the inventor is represented by counsel, send the papers to the inventor’s attorney’s address.
- Ensure that the inventor is given the opportunity to review the complete application, unless they have assigned their interest and the assignee has requested otherwise.
The MPEP emphasizes:
‘It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed.’
This process is crucial to establish that a bona fide attempt was made to present the application papers to the nonsigning inventor.
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When terminating representation, a practitioner must take several steps to protect the client’s interests, as outlined in 37 CFR 11.116(d):
- Give reasonable notice to the client
- Allow time for the client to employ other counsel
- Surrender papers and property to which the client is entitled
- Refund any advance payment of fees or expenses that have not been earned or incurred
Additionally, the practitioner must comply with applicable laws requiring notice to or permission from a tribunal when terminating representation, as per 37 CFR 11.116(c).
The USPTO provides forms (PTO/SB/83 or PTO/AIA/83) that include a section for practitioners to certify the completion of these necessary activities. Practitioners can also file a Web-based e-petition for withdrawal.
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When issuing Office actions after being notified of a patent practitioner’s death, the USPTO includes a special notation. The MPEP 406 instructs examiners to add form paragraph 4.03, which states:
“Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.”
This notation informs all parties of the practitioner’s death and the need for new representation.
For more information on Form Paragraph 4.03, visit: Form Paragraph 4.03.
If you need information related to a topic that corresponds to a reserved MPEP section, such as MPEP 404, follow these steps:
- Check other relevant sections of the MPEP that may cover related topics
- Consult the USPTO’s official website for guidance documents and notices
- Review recent patent laws and regulations that may address the topic
- Contact the USPTO’s Patent Electronic Business Center for assistance
- Consult with a registered patent attorney or agent for professional advice
Remember that reserved sections do not contain any official information, so it’s crucial to seek guidance from active, authoritative sources.
If a legal representative of a deceased inventor refuses to make application, the procedure depends on when the application was filed:
- For applications filed before September 16, 2012: Pre-AIA 37 CFR 1.47 applies. The MPEP states:
pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application.
- In this case, you should:
- Document the refusal and the efforts made to reach the legal representative.
- Provide the last known address of the legal representative, as per MPEP § 409.03(e).
- File the application under pre-AIA 37 CFR 1.47, explaining the situation.
- For applications filed on or after September 16, 2012: Different procedures apply, which are not covered in this specific MPEP section. Consult the current USPTO regulations and guidelines for the appropriate course of action.
It’s important to note that these procedures are specific to cases where there is a known legal representative who is refusing to cooperate. Different rules may apply in other scenarios involving deceased inventors.
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If an applicant’s patent attorney or agent is suspended, they should take the following steps:
- File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
- Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
- If necessary, find a new registered patent attorney or agent using USPTO resources.
- Update the correspondence address for the application if it was previously associated with the suspended practitioner.
It’s important to act promptly to ensure continued proper representation and communication with the USPTO.
When an examiner receives a pre-AIA 37 CFR 1.47 application, they must follow these steps:
“When an examiner receives an application in which a petition under pre-AIA 37 CFR 1.47 has been filed, he or she must check the file to determine that the petition has been decided by the Office of Petitions. If the petition has not been decided by the Office of Petitions, the application, or an electronic message concerning the petition, must be forwarded to the Office of Petitions for appropriate action.”
In essence, the examiner must verify that the Office of Petitions has made a decision on the pre-AIA 37 CFR 1.47 petition. If not, the examiner must forward the application or relevant information to the Office of Petitions for further processing.
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Risks of Self-Representation in Patent Applications
While individuals can file pro se patent applications, there are several risks to consider:
- Lack of expertise: Patent law is complex, and lack of familiarity with examination practices may result in missed opportunities for optimal protection.
- Potential sanctions: According to MPEP 401, pro se applicants are subject to the same certifications and potential sanctions as represented applicants:
In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).
Given these risks, the USPTO may suggest hiring a registered patent practitioner if they notice an applicant is unfamiliar with the process and the application contains potentially patentable subject matter.
For more information on pro se, visit: pro se.
For more information on self-representation, visit: self-representation.
A nonsigning inventor in a pre-AIA 37 CFR 1.47 application retains certain rights, as outlined in MPEP 409.03(i):
- May protest their designation as an inventor
- Can inspect any paper in the application
- May order copies of application documents
- Can make their position of record in the application file
- Has the option to join the application later by filing an oath/declaration
- Retains inventor rights for patent issuance
However, the nonsigning inventor cannot:
- Prosecute the application if status under 37 CFR 1.47 is accorded
- Revoke power of attorney without agreement of the 37 CFR 1.47 applicant
The MPEP states: 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.
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A nonsigning inventor, also known as an ‘inventor designee,’ has several rights in a patent application filed under pre-AIA 37 CFR 1.47. These rights include:
- The right to protest their designation as an inventor
- The right to inspect any paper in the application
- The right to order copies of application documents at the price set forth in 37 CFR 1.19
- The right to make their position of record in the file wrapper of the application
As stated in MPEP 409.03(i): “The nonsigning inventor is entitled to inspect any paper in the application, order copies thereof at the price set forth in 37 CFR 1.19, and make his or her position of record in the file wrapper of the application.”
It’s important to note that while these rights are granted, the nonsigning inventor is not entitled to prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded.
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The USPTO, through its Office of Enrollment and Discipline, provides valuable resources to client-applicants when their patent practitioner dies. The MPEP 406 states:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This list serves as a crucial resource, helping client-applicants find new representation to continue their patent prosecution process without significant delays.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO Resources, visit: USPTO Resources.
For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:
- The invention has been assigned to the applicant
- The inventor has agreed in writing to assign the invention to the applicant
- The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application
As stated in MPEP 409.03(f):
“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”
The specific documentation required depends on which of these conditions is being met.
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When filing under pre-AIA 37 CFR 1.47, the applicant must provide proof that the nonsigning inventor is unavailable or refusing to sign. According to MPEP 409.03(d):
- For an unavailable inventor, submit a statement of facts describing the diligent efforts made to find or reach the inventor. Include documentary evidence like Internet searches, certified mail receipts, etc.
- For a refusing inventor, provide evidence that the application was presented to the inventor for signature and they refused. This can include:
- A statement detailing the circumstances of the presentation and refusal
- Documentary evidence of written refusal
- Statement of the reasons given by the inventor for refusing
The section states: Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.
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For applications filed on or after September 16, 2012:
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor
- The applicant may file a substitute statement in lieu of an inventor’s oath or declaration if the inventor has refused to execute the oath or declaration
For applications filed before September 16, 2012, a petition under pre-AIA 37 CFR 1.47 could be filed.
For applications filed on or after September 16, 2012, if an inventor is deceased or legally incapacitated:
- The legal representative of the inventor may make the application for patent on behalf of the inventor.
- An assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest may file the application as the applicant.
As stated in MPEP § 409.01(a): “If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”
For more information on legal representative, visit: legal representative.
When filing under pre-AIA 37 CFR 1.47(b), an applicant must prove that the filing of the application is necessary for specific reasons. The MPEP outlines two primary justifications:
- To preserve the rights of the parties
- To prevent irreparable damage
Specifically, the MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage.”
This requirement ensures that the use of pre-AIA 37 CFR 1.47(b) is justified and not merely a matter of convenience. For more detailed information on proving necessity, refer to MPEP § 409.03(g).
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What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”
This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.
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The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
This means:
- For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
- For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.
This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.
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The filing date is crucial in relation to irreparable damage because it can determine whether an applicant’s rights are preserved or lost. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This means that the filing date can be critical for:
- Establishing priority over other potential patent applications
- Avoiding statutory bars to patentability
- Preserving international filing rights
- Preventing public disclosure that could jeopardize patent rights
Therefore, proving that a specific filing date is necessary can be essential to prevent irreparable damage to an applicant’s patent rights.
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What is the significance of the AIA (America Invents Act) for patent application correspondence?
The America Invents Act (AIA) brought significant changes to patent application correspondence, particularly for applications filed on or after September 16, 2012. Key changes include:
- New rules for who can file patent applications
- Changes in correspondence procedures
- Updated requirements for patent practitioners’ authority
According to MPEP 403.01(a): “The provisions of 37 CFR 1.33(b) for patent applications filed on or after September 16, 2012 differ from the provisions of pre-AIA 37 CFR 1.33(b) for patent applications filed prior to September 16, 2012.” This highlights the importance of understanding the specific rules that apply based on the application’s filing date.
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What is the significance of the ‘correspondence address’ in USPTO patent applications?
The correspondence address is crucial in USPTO patent applications for several reasons:
- It determines where the USPTO sends all official communications regarding the application.
- It can be used to designate a specific attorney or agent to receive correspondence.
- Changes to the correspondence address must be made in writing to ensure proper routing of communications.
According to MPEP 403.01: “The correspondence address is used by the Office for mailing notices, actions, and other communications relating to the application.” Additionally, the MPEP states: “A change of correspondence address may be filed with the USPTO during the pendency of an application, and in a patent file.” This emphasizes the importance of keeping the correspondence address up-to-date to ensure timely receipt of important USPTO communications.
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What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?
The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.
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Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
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MPEP 402.08 has important implications for independent inventors involved in interference proceedings. The key provision states:
For independent inventors, this means:
- Changes in legal representation during an interference proceeding must be approved by the PTAB.
- There may be additional complexity and potential delays in changing attorneys.
- Inventors should carefully consider the timing of any representation changes.
- Direct communication with the PTAB may be necessary regarding power of attorney matters.
Independent inventors should be aware of these special procedures to navigate interference proceedings effectively and ensure proper legal representation throughout the process.
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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.
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What is the significance of a customer number in USPTO correspondence?
A customer number is a crucial tool for managing correspondence with the USPTO. According to MPEP 403:
‘A customer number allows an applicant, attorney or agent to easily change the correspondence address for a number of applications or patents by simply requesting a change to the address associated with the customer number.’
Key benefits of using a customer number include:
- Streamlined correspondence management for multiple applications
- Easy updates to address information
- Efficient access to application information through USPTO systems
By using a customer number, patent professionals can significantly simplify their administrative processes when dealing with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
What is the significance of a customer number in patent applications filed after September 16, 2012?
A customer number holds significant importance in patent applications filed after September 16, 2012, particularly for managing practitioner representation. Here’s why:
- It allows for efficient management of multiple practitioners
- Power of attorney can be given to a customer number
- It simplifies the process of adding or removing practitioners
- Correspondence address can be associated with a customer number
According to MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This provision streamlines the process of managing representation for applicants and practitioners alike.
Furthermore, the MPEP states: ‘If a practitioner is not of record, correspondence will be sent to the applicant’s correspondence address as shown in the application or the Patent Application Locating and Monitoring (PALM) system.’ This underscores the importance of keeping the customer number and associated information up to date.
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A Customer Number is a unique identifier assigned by the USPTO that can be associated with a correspondence address. It offers several advantages in managing patent application correspondence:
- Simplified address changes: You can update the address for multiple applications at once by changing the address associated with the Customer Number.
- Priority in address selection: When multiple addresses are provided, the USPTO may prioritize the address associated with a Customer Number.
- Easier access to Patent Application Information Retrieval (PAIR) system: Customer Numbers can be used to access multiple applications in PAIR.
37 CFR 1.33(a) states: If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
Using a Customer Number can streamline communication with the USPTO and make it easier to manage multiple patent applications.
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37 CFR 11.18 is a crucial regulation that governs signature and certification requirements for correspondence filed with the USPTO. Its significance includes:
- Establishing signature requirements for practitioners
- Defining certifications made when submitting papers
- Setting standards for truthfulness and proper purpose in filings
- Outlining potential consequences for violations
The MPEP emphasizes its importance: “The certifications in 37 CFR 11.18(b) apply to all papers filed in the Office, including allegations of improper conduct made by a registered practitioner in any Office proceeding.”
This regulation helps maintain the integrity of the patent application process and ensures that all parties involved are held to high ethical and legal standards.
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‘Limited recognition’ is a specific status granted by the USPTO that allows certain individuals to practice patent law in a restricted capacity. Its significance includes:
- Allowing non-registered practitioners to represent applicants in specific circumstances.
- Providing a pathway for Canadian patent agents to represent Canadian applicants.
- Restricting the scope of practice to specific types of applications or applicants.
The MPEP 402.01 states: Limited recognition to practice in patent cases means recognition to practice before the Office in patent cases, or in a limited capacity as a patent agent, as appropriate…
This status ensures that certain practitioners can assist applicants while maintaining the integrity of the USPTO’s registration system.
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What is the significance of ‘facts showing the right’ in proving proprietary interest?
The phrase ‘facts showing the right’ is crucial in proving proprietary interest for patent applications. According to MPEP 409.03(f):
‘Facts showing the right or authority to make the petition must be proved in accordance with 37 CFR 1.46.’
This means that:
- Applicants must provide concrete evidence demonstrating their right to file and prosecute the patent application.
- The evidence should clearly establish the applicant’s legal authority or ownership of the invention.
- These facts are essential for the USPTO to determine if the applicant has the proper standing to proceed with the application.
Examples of such facts might include:
- Documentation of employment agreements assigning invention rights to an employer
- Contracts showing transfer of rights from inventors to the applicant
- Court orders establishing ownership in cases of disputes
The significance of these ‘facts showing the right’ is that they protect the interests of all parties involved and ensure that patent rights are granted to the rightful owners or their authorized representatives.
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An affidavit plays a crucial role in proving the unavailability or refusal of a non-signing inventor. The MPEP 409.03(d) states:
An affidavit or declaration of the applicant, or his/her attorney or agent, explaining the situation and stating the last known address of the non-signing inventor, may be sufficient to establish that the inventor cannot be found or reached after diligent effort or has refused to execute the application papers.
The affidavit should:
- Provide a detailed account of efforts to locate or communicate with the inventor
- Include dates, methods of contact attempted, and results
- Explain any refusal circumstances if applicable
- Be signed under oath or declaration
This sworn statement serves as a formal record of the applicant’s diligent efforts and is considered by the USPTO in determining the validity of the proof of unavailability or refusal.
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An administrator plays a crucial role in filing a patent application for a deceased inventor. According to MPEP 409.01(b):
If the inventor was not of sound mind and legally incapacitated at the time the application was made, it may be signed by a legal representative (e.g., guardian), the inventor’s legal representative (e.g., executor, administrator, etc.), or someone acting on behalf of the inventor or legal representative.
The administrator’s responsibilities include:
- Representing the deceased inventor’s estate
- Signing necessary documents on behalf of the deceased inventor
- Providing proof of their authority to act as administrator
- Ensuring the application process complies with legal requirements
It’s important to note that the administrator must have the legal authority to act on behalf of the deceased inventor’s estate.
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An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:
- They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
- They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.
The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.
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What is the role of a patent practitioner during an interview with the USPTO?
A patent practitioner plays a crucial role during an interview with the USPTO. According to MPEP 408, the practitioner is responsible for:
- Representing the applicant or patent owner
- Discussing the merits of the application or patent
- Providing clarifications on the invention
- Negotiating potential claim amendments
- Addressing any concerns raised by the examiner
The MPEP states: ‘Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference centers.’ This underscores the formal nature of these interactions and the importance of the practitioner’s role in facilitating productive discussions with the examiner.
For more information on patent examination, visit: patent examination.
What is the role of a legal representative in filing a patent application for a deceased inventor?
What is the role of a legal representative in filing a patent application for a deceased inventor?
A legal representative plays a crucial role in filing a patent application for a deceased inventor. According to MPEP 409.03(b):
“The legal representative (executor, administrator, etc.) of a deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative’s responsibilities include:
- Executing the necessary oath or declaration on behalf of the deceased inventor
- Providing proof of their authority to act (e.g., Letters Testamentary or Letters of Administration)
- Submitting the patent application and all required documents to the USPTO
- Corresponding with the USPTO throughout the application process
- Potentially assigning the patent rights if required by the deceased inventor’s will or other legal arrangements
It’s important to note that the legal representative must act in accordance with the law and the best interests of the deceased inventor’s estate.
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The legal representative of a deceased inventor plays a crucial role in the patent application process. According to MPEP 409.01:
If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or representatives of the deceased inventor.
The legal representative’s responsibilities include:
- Executing the oath or declaration on behalf of the deceased inventor
- Providing documentation of their authority to act on behalf of the deceased inventor’s estate
- Continuing the prosecution of the patent application
- Receiving the granted patent on behalf of the deceased inventor’s estate
It’s important to note that the legal representative must be properly appointed according to state laws governing estate administration.
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In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states:
‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’
This requirement ensures that the USPTO can attempt to contact the nonsigning inventor regarding the application filed on their behalf.
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MPEP 409.03(f) is not applicable to patent applications filed on or after September 16, 2012. This is clearly stated at the beginning of the section:
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012. See MPEP §§ 325, 409.05, and 605 for information pertaining to applications for patent filed on or after September 16, 2012 by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.]”
For applications filed on or after September 16, 2012, applicants should refer to:
- MPEP § 325 – Assignment of ownership rights
- MPEP § 409.05 – Applications filed on or after September 16, 2012
- MPEP § 605 – Applicant
These sections provide guidance on how assignees, obligated assignees, or persons with sufficient proprietary interest can file patent applications under the current law.
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Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.
It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.
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MPEP 409.03(f) – Proof of Proprietary Interest outlines the requirements for establishing proprietary interest in a patent application when an inventor refuses to execute an oath or declaration. The section states:
‘If an inventor refuses to execute an oath or declaration under 37 CFR 1.63, the party to whom the inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent as provided in 37 CFR 1.46.’
This section provides guidance on how to prove sufficient proprietary interest, which is crucial for applicants who need to file a patent application without the inventor’s cooperation.
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MPEP 409.03 provides guidance on how to handle patent applications filed before September 16, 2012 when an inventor is unavailable or unwilling to sign the application. It outlines the procedures for filing an application under pre-AIA 37 CFR 1.47 when:
- A joint inventor refuses to join in an application or cannot be found/reached after diligent effort
- All inventors are unavailable
- A legal representative of a deceased inventor is unavailable
The section details the requirements, evidence needed, and process for submitting and processing these types of applications.
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What is the purpose of limited recognition in patent matters?
The purpose of limited recognition in patent matters is to allow certain individuals who are not fully registered patent practitioners to represent patent applicants before the USPTO in specific situations. As stated in MPEP 402.01:
‘Limited recognition to practice before the Office in patent matters may also be granted in appropriate circumstances to an individual who is not registered to practice before the Office.’
This provision serves several purposes:
- Allows qualified scientists and engineers to assist in patent matters
- Facilitates international cooperation through reciprocal agreements (e.g., with Canadian patent agents)
- Provides flexibility for the USPTO to address specific needs or situations
- Enables representation in cases where full registration may not be necessary or practical
Limited recognition ensures that patent applicants have access to appropriate representation while maintaining the integrity of the patent system.
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What is the purpose of a Customer Number in USPTO correspondence?
A Customer Number is a unique identifier assigned by the USPTO to simplify and streamline patent correspondence. According to the MPEP 403, ‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’ This system allows for:
- Easy updates to correspondence addresses for multiple applications
- Efficient management of power of attorney
- Simplified access to private PAIR (Patent Application Information Retrieval) for registered practitioners
By using a Customer Number, patent applicants and their representatives can more effectively manage their patent portfolios and communications with the USPTO.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
The process for revoking power of attorney during an interference proceeding differs from the standard procedure. According to MPEP 402.08:
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
To revoke power of attorney during an interference proceeding:
- Prepare the revocation document as you normally would.
- Instead of submitting it through regular channels, forward the revocation to the Patent Trial and Appeal Board (PTAB).
- The PTAB will consider the revocation within the context of the ongoing interference proceeding.
- Wait for the PTAB’s decision before considering the revocation effective.
This special handling ensures that changes in representation are properly managed within the complex context of an interference proceeding.
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What is the process for filing a patent application if an inventor is legally incapacitated?
When an inventor is legally incapacitated, the patent application can be filed by the legal representative of the incapacitated inventor. According to MPEP 409.03(b):
“If an inventor is legally incapacitated, the legal representative of the inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The process involves:
- Filing a petition under 37 CFR 1.47(b)
- Paying the petition fee set forth in 37 CFR 1.17(g)
- Providing proof of the inventor’s incapacity (e.g., court order)
- Submitting an oath or declaration by the legal representative
The legal representative should state their relationship to the incapacitated inventor and provide evidence of their authority to act on behalf of the inventor.
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What is the procedure for an examiner to verify an attorney’s authority during an interview?
When conducting an interview with an attorney or agent who is not of record, the examiner must follow a specific procedure to verify their authority. According to MPEP 405:
If an attorney or agent not of record in an application contacts an examiner for an interview, the examiner may grant the interview if the attorney or agent presents an authorization from the practitioner of record, or presents a signed power of attorney or a paper authorizing them to act as associate or agent.
The examiner should:
- Ask for an authorization from the practitioner of record
- Accept a signed power of attorney
- Accept a paper authorizing the attorney or agent to act as an associate or agent
If none of these are available, the examiner should decline the interview unless the attorney or agent is willing to conduct the interview with the inventor present.
For more information on USPTO procedures, visit: USPTO procedures.
What is the duty of disclosure in patent applications?
The duty of disclosure is a fundamental obligation in the patent application process. As outlined in MPEP 410:
“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”
This duty requires applicants and their representatives to:
- Disclose all known material information
- Submit information disclosure statements (IDS)
- Update the USPTO with new material information throughout the application process
Failing to comply with the duty of disclosure can result in charges of inequitable conduct, which may render a patent unenforceable. It’s crucial for applicants to err on the side of disclosure when in doubt about the materiality of information.
For more information on USPTO, visit: USPTO.
What is the duration of limited recognition granted by the OED Director?
The duration of limited recognition granted by the OED Director is not explicitly specified in MPEP 402.01. However, the section states: Limited recognition is granted for a period consistent with the employment situation for which the individual is granted limited recognition.
This suggests that the duration is tailored to each individual’s specific employment situation and may vary case by case. It’s important to note that limited recognition can be withdrawn by the OED Director at any time.
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What is the duration of limited recognition for foreign patent agents?
Limited recognition for foreign patent agents is typically granted for a period of 5 years. According to the MPEP, Recognition of a foreign patent agent for the limited purpose of representing applicants before the USPTO in the presentation and prosecution of applications for patent is granted for a period of 5 years.
(MPEP 402.01) This means that foreign patent agents must renew their limited recognition status every 5 years to continue practicing before the USPTO.
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The main difference in power of attorney revocation between pre-AIA (before September 16, 2012) and post-AIA (on or after September 16, 2012) applications lies in who can sign the power of attorney and the process for revocation:
- Post-AIA (on or after September 16, 2012): The power of attorney must be signed by the applicant or patent owner. For an assignee to revoke a power of attorney, they must first become the applicant under 37 CFR 1.46(c).
- Pre-AIA (before September 16, 2012): The assignee of record of the entire interest can revoke the power of attorney of the applicant directly, provided they establish their right to take action under pre-AIA 37 CFR 3.73(b).
This change reflects the shift in USPTO regulations to give more control to the applicant in post-AIA applications, while pre-AIA rules allowed more direct action by assignees.
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Pre-AIA 37 CFR 1.42 and pre-AIA 37 CFR 1.47 serve different purposes in relation to deceased inventors:
- Pre-AIA 37 CFR 1.42: This regulation specifically addresses the situation of a deceased inventor. It allows the legal representative (executor or administrator of the estate) to make an application on behalf of the deceased inventor.
- Pre-AIA 37 CFR 1.47: This regulation is not intended for deceased inventors directly. As stated in the MPEP,
Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
However, pre-AIA 37 CFR 1.47 does apply in cases where:
- A known legal representative of a deceased inventor cannot be found or reached after diligent effort, or
- The legal representative refuses to make the application
In such cases, the last known address of the legal representative must be provided, as per MPEP § 409.03(e).
It’s important to note that these regulations apply to applications filed before September 16, 2012. For applications filed on or after that date, different procedures may apply.
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In patent applications, both attorneys and agents can represent applicants before the USPTO, but there are important distinctions:
- Patent Attorney: A lawyer who has passed both a state bar exam and the USPTO’s patent bar exam. They can practice law and provide legal advice beyond patent prosecution.
- Patent Agent: An individual who has passed the USPTO’s patent bar exam but is not a licensed attorney. They can represent clients before the USPTO for patent matters but cannot practice law or provide other legal services.
The MPEP 402 refers to both as ‘patent practitioners’: ‘The term ‘patent practitioner’ as used in this chapter includes patent attorneys and patent agents.’ Both can receive power of attorney and represent applicants in patent matters before the USPTO, but only patent attorneys can offer broader legal counsel.
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.
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In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
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While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:
- Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
- Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.
The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’
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.
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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.
For assignee applicants, there is a specific deadline for recording documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that assignees or obligated assignees should ensure that their documentary evidence of ownership is recorded with the USPTO, as specified in 37 CFR Part 3, by the time they pay the issue fee for the patent application. Failing to record this evidence by the deadline could potentially cause complications in establishing ownership of the patent.
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The Customer Number practice allows applicants to:
- Designate the correspondence address of a patent application or patent
- Designate the fee address of a patent
- Submit a list of practitioners who have power of attorney
Using a Customer Number allows applicants to easily change the correspondence address, fee address, or list of practitioners for multiple applications or patents by simply changing the information associated with the Customer Number.
According to MPEP 403: “A Customer Number (previously a ‘Payor Number’) may be used to: (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i)); (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).”
What is the Customer Number Practice for power of attorney in patent applications?
The Customer Number Practice is a system used by the USPTO to simplify the process of changing the correspondence address or power of attorney for multiple patent applications. Here’s how it works:
- Practitioners are associated with a Customer Number
- The Customer Number can be used to grant power of attorney in applications
- Changes to the Customer Number automatically update all associated applications
According to the MPEP:
The Customer Number Practice permits applicants, attorneys, and agents of record to expressly request that the USPTO use a Customer Number to associate a power of attorney with a particular application.
(MPEP 402.02(a))
This practice streamlines the process of managing power of attorney and correspondence addresses for multiple applications, making it more efficient for both applicants and the USPTO.
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What is the Customer Number practice at the USPTO for patent applications?
The Customer Number practice at the USPTO is a system that simplifies the process of managing correspondence addresses for patent applicants and practitioners. Key aspects of this practice include:
- A Customer Number is a unique identifier assigned by the USPTO to a specific address.
- It allows for easy updating of correspondence information for multiple applications.
- Customer Numbers can be associated with Power of Attorney forms.
According to MPEP 403.01(a): ‘The Customer Number practice permits a patent applicant, assignee or practitioner of record to change the correspondence address for a number of applications or patents with one change of address filed in one location.’
To use the Customer Number practice:
- Request a Customer Number from the USPTO using the Customer Number Request form (PTO/SB/125A).
- Associate the Customer Number with your applications using the appropriate forms or through the USPTO’s electronic filing system.
- Update your correspondence address by modifying the Customer Number information, which will automatically update all associated applications.
This practice significantly streamlines the process of managing correspondence for multiple patent applications, making it easier for applicants and practitioners to maintain up-to-date contact information with the USPTO.
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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.
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Unpublished patent applications are subject to confidentiality requirements under 35 U.S.C. 122(a). MPEP 405 addresses this in the context of interviews:
However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the authorized attorney or agent to maintain confidentiality.
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 required for a person with ‘sufficient proprietary interest’ to file a patent application?
A person who shows sufficient proprietary interest in the matter can file a patent application, but must submit a petition as outlined in 37 CFR 1.46(b)(2). The petition must include:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The MPEP further explains that a proprietary interest can be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant.
This should be supported by an affidavit or declaration and prepared by an attorney familiar with the relevant jurisdiction’s law.
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Limited recognition in patent matters is a provision that allows certain individuals who are not registered patent practitioners to prosecute specific patent applications before the United States Patent and Trademark Office (USPTO). According to 37 CFR 11.9(a):
Any individual not registered under § 11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications.
This means that under certain circumstances, individuals who are not registered patent attorneys or agents may be granted permission to work on specific patent applications.
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Irreparable damage, in the context of patent applications, refers to a situation where a filing date is crucial to preserve the rights of an applicant or to prevent severe harm. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This means that an applicant can demonstrate irreparable damage by providing a statement explaining why obtaining a specific filing date is essential to protect their rights or avoid significant harm.
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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.
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Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
What is considered a ‘good and sufficient reason’ to revoke a power of attorney by less than all applicants?
The USPTO does not provide a specific definition of what constitutes a ‘good and sufficient reason’ to revoke a power of attorney by less than all applicants. According to MPEP 402.10:
A power of attorney may not be revoked by less than all of the applicants or owners of the entire interest without good and sufficient reason, and the revocation must be approved by the Director.
The determination of what qualifies as a ‘good and sufficient reason’ is made on a case-by-case basis by the Director of the USPTO. Some potential reasons could include:
- Evidence of misconduct or negligence by the current attorney
- Irreconcilable differences between the applicant(s) and the attorney
- Inability of the attorney to continue representation due to health issues or other circumstances
Applicants seeking to revoke a power of attorney with less than all signatures should provide a detailed explanation of their reasons for the request.
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Proof of unavailability for a non-signing inventor can include various forms of evidence. According to MPEP 409.03(d):
In the case of unavailability, proof of the inability to find or reach the non-signing inventor after diligent effort must be submitted.
This proof may include:
- Returned correspondence
- Copies of email or other communication attempts
- Statements from people with knowledge of the inventor’s unavailability
- Documentation of searches or inquiries made to locate the inventor
The key is to demonstrate a diligent effort to locate and communicate with the non-signing inventor.
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What is considered ‘diligent effort’ when trying to contact an inventor for joint invention?
When attempting to contact a joint inventor for patent application purposes, ‘diligent effort’ typically involves:
- Multiple attempts to reach the inventor through various communication methods (e.g., phone, email, postal mail)
- Reasonable time intervals between attempts
- Documenting all contact attempts and responses (or lack thereof)
- Exploring alternative contact methods if initial attempts fail
The MPEP 409.03(d) states: ‘Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47(b), a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’ This emphasizes the importance of thoroughly documenting all efforts made to contact the inventor.
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An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:
‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’
The ADS must include:
- The name of the inventor(s)
- A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
- If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention
The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.
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An ‘obligated assignee’ in patent applications refers to a person or entity who is under an obligation to assign the invention but has not yet executed an assignment. This concept is important in the context of MPEP 409.05, which states:
An assignee or obligated assignee who is the applicant may execute a substitute statement under 37 CFR 1.64 in lieu of an inventor’s oath or declaration.
This provision allows an obligated assignee to file a patent application and execute certain documents on behalf of the inventor, even if the formal assignment has not yet been completed.
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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.
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What is a substitute statement for a deceased inventor and when is it required?
A substitute statement is a document that replaces the inventor’s oath or declaration when the inventor is deceased, legally incapacitated, or otherwise unavailable. For a deceased inventor, it is required when filing a patent application on or after September 16, 2012.
According to MPEP 409.01(a):
The substitute statement must comply with the requirements of 35 U.S.C. 115(d) and 37 CFR 1.64.
The substitute statement must:
- Identify the inventor to whom it applies
- Identify the person executing the substitute statement
- Include a statement that the person executing the substitute statement believes the named inventor to be the original inventor
- State the circumstances permitting the person to execute the substitute statement (e.g., the inventor’s death)
This statement allows the patent application process to proceed in cases where the inventor cannot personally execute the required oath or declaration.
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A substitute statement is a document that can be used in place of an inventor’s oath or declaration under certain circumstances. According to 37 CFR 1.64, an applicant may execute a substitute statement if the inventor:
- Is deceased
- Is under a legal incapacity
- Has refused to execute the oath or declaration
- Cannot be found or reached after diligent effort
The substitute statement must comply with specific requirements outlined in 37 CFR 1.64(b), including identifying the inventor, the person executing the statement, and the circumstances permitting its use. For more details on substitute statements, see MPEP § 604.
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A substitute statement is a document that can be used in lieu of an inventor’s oath or declaration under certain circumstances. According to MPEP § 409.05, a substitute statement can be used when the inventor:
- Is deceased
- Is under a legal incapacity
- Cannot be found or reached after diligent effort
- Has refused to execute the oath or declaration
The substitute statement must comply with the requirements of 37 CFR 1.64, including identifying the inventor, the person executing the statement, and the circumstances permitting its use.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on substitute statement, visit: substitute statement.
A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.
According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met.
This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.
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A juristic entity, in the context of patent applications, typically refers to an organizational assignee such as a company or corporation. According to MPEP 401, juristic entities have special requirements:
“An applicant who is a juristic entity must be represented by a patent practitioner.”
This means that companies or other organizational entities cannot represent themselves in patent applications and must hire a registered patent attorney or agent to act on their behalf.
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.
A customer number is a unique identifier assigned by the USPTO to simplify patent correspondence. According to MPEP 403:
‘A customer number allows a patent applicant, patent owner, or assignee to designate a single correspondence address for all applications and patents associated with that customer number.’
Benefits of using a customer number include:
- Easier management of correspondence addresses for multiple applications
- Simplified process for changing the address or representative for all linked applications
- Improved efficiency in USPTO communications
To obtain a customer number, you need to file a request with the USPTO using the appropriate form.
For more information on Customer Number, visit: Customer Number.
For more information on patent correspondence, visit: patent correspondence.
For more information on USPTO, visit: USPTO.
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.
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The Applicant Initiated Interview Request form (PTOL-413A) should include specific information to facilitate the interview process. According to MPEP 408:
This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.
Providing this information helps the examiner prepare adequately for the interview and ensures that all necessary parties are involved in the discussion of relevant issues.
When an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b), the declaration must include specific information about the non-signing inventor. According to the MPEP, the declaration must state:
- The full name of the non-signing inventor
- The residence of the non-signing inventor
- The post office address of the non-signing inventor
- The citizenship of the non-signing inventor
Additionally, “the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).” This ensures that the person signing has the authority to do so on behalf of the corporation.
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When a patent application is filed by someone other than the inventor under 37 CFR 1.46, the application must contain an application data sheet (ADS) with specific information. According to 37 CFR 1.46(b), the ADS must specify in the applicant information section:
- The assignee
- The person to whom the inventor is under an obligation to assign the invention
- The person who otherwise shows sufficient proprietary interest in the matter
This information should be provided in the applicant information section of the ADS, as specified in 37 CFR 1.76(b)(7). Ensuring this information is correctly included in the ADS is crucial for establishing the proper applicant for the patent application.
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What information must be included in an oath or declaration for an unavailable joint inventor?
When filing an oath or declaration for an unavailable joint inventor, specific information must be included. According to MPEP 409.03(a), the oath or declaration must contain:
- The name of the unavailable inventor
- A statement that the inventor is unavailable and the reason for unavailability
- The last known address of the unavailable inventor
Additionally, the MPEP states:
‘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.’
It’s crucial to provide as much detail as possible about the efforts made to contact the unavailable inventor and any responses received. This information helps the USPTO understand the situation and process the application appropriately.
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What information must be included in a substitute statement for a deceased or incapacitated inventor?
When filing a substitute statement for a deceased or legally incapacitated inventor, specific information must be included to ensure its validity. According to MPEP 409.01(a) and 37 CFR 1.64, a substitute statement must contain:
- Identification of the inventor to whom the substitute statement applies
- The circumstances permitting the use of a substitute statement (e.g., death, legal incapacity)
- A statement that the person signing:
- Has reviewed and understands the contents of the application
- Believes the named inventor to be the original inventor of the claimed invention
- Acknowledges the duty to disclose information material to patentability
- The relationship of the person signing to the inventor
Additionally, the substitute statement must:
- Identify the person executing the substitute statement and the capacity in which they are signing
- Be signed in accordance with 37 CFR 1.64(a)
Ensuring all required information is included in the substitute statement is crucial for the proper processing of the patent application in cases where the inventor is unavailable.
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When filing papers in a representative capacity, a patent practitioner must provide specific information to identify themselves and establish their authority. According to MPEP 402.04:
- Registration number
- Name
- Signature
The MPEP states: “In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.”
This requirement applies even when the practitioner is not of record in the application. It helps facilitate replies on behalf of applicants and eliminates the need for filing powers of attorney in individual applications when there are changes in law firms or corporate patent staffs.
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When a pre-AIA 37 CFR 1.47 application is found acceptable, certain information is published in the Official Gazette. According to the MPEP: A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).
This publication serves several purposes:
- It provides public notice of the application’s existence.
- It identifies the nonsigning inventors, which may be important for legal or intellectual property reasons.
- It establishes a clear record of the application’s status under pre-AIA 37 CFR 1.47.
This publication is an important step in the processing of these special applications and ensures transparency in the patent application process.
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When filing a patent application with an unavailable joint inventor, you must include the last known address of the nonsigning inventor. As stated in MPEP 409.03(a):
“The last known address of the nonsigning joint inventor must be stated.”
For more details on providing this information, refer to MPEP 409.03(e). This requirement helps the USPTO in potential future communications and establishes that efforts were made to locate the inventor.
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When one of multiple practitioners of record is suspended, the USPTO continues to communicate with the remaining unsuspended practitioners. MPEP § 407 provides guidance for this situation: “This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice.” The Office action is mailed to the first named unsuspended registered practitioner at their address of record. Additionally, to ensure timely receipt, a copy is also sent to the first named applicant’s address of record.
For more information on USPTO communication, visit: USPTO communication.
When a power of attorney is accepted from less than all applicants or owners, it results in multiple parties prosecuting the application simultaneously. The MPEP states:
“The acceptance of such papers by petition under 37 CFR 1.36(a) or 1.183 will result in more than one attorney, agent, applicant, or owner prosecuting the application at the same time. Therefore, each of these parties must sign all subsequent replies submitted to the Office.”
This means:
- All involved parties must sign subsequent documents.
- The USPTO will indicate who must sign future replies.
- Double correspondence is not permitted.
- Correspondence will be mailed to the attorney or agent if one is involved.
- If multiple attorneys are involved, correspondence goes to the first-named attorney unless all parties agree otherwise.
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When an inventor is added to a pre-AIA patent application through a 37 CFR 1.48 request, it can affect the existing power of attorney. According to MPEP 402.05(b):
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.
This means that if a new inventor is added and doesn’t provide a power of attorney consistent with the original one, the original power of attorney is lost. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34, which allows for acting in a representative capacity.
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The death of an inventor (or one of the joint inventors) typically terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012, unless the power of attorney is coupled with an interest (e.g., the patent practitioner is an assignee or part-assignee). As stated in MPEP 409.01(b):
“Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012.”
In such cases, a new power of attorney from the heirs, administrators, executors, or assignees is necessary if the deceased inventor was the sole inventor or if all powers of attorney in the application have been terminated.
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After acceptance of a Pre-AIA 37 CFR 1.47 application, the non-signing inventor retains certain rights and responsibilities:
- They are considered a joint inventor and will be named on any patent that may issue.
- They have the right to access the application file and receive notices from the USPTO.
- They can still submit an executed oath or declaration, which would then be entered into the file.
As stated in MPEP 409.03(j): ‘The fact that an application was accepted and prosecuted pursuant to 37 CFR 1.47 does not alter the rights or obligations of any of the inventors with regard to the application or any patent issuing thereon.’
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What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
In a pre-AIA 37 CFR 1.47 application, nonsigning inventors are notified of the application filing. The MPEP states: The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s).
This notification process ensures that all inventors, even those who didn’t sign the application, are aware of the patent application filed using their invention. It’s important to note that this notification is a courtesy and doesn’t require a response from the nonsigning inventor for the application to proceed.
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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.
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The death of a named principal or assignee can have significant implications for an existing power of attorney in a patent application. According to MPEP 402.05:
The death of the principal may terminate the power of attorney given by him or her depending on the circumstances.
This means that the power of attorney may automatically terminate upon the death of the principal. However, the specific circumstances of each case must be considered. In cases where there are multiple applicants or assignees, the power of attorney may remain in effect for the surviving parties. It’s crucial to notify the USPTO of any changes in the status of the applicant or assignee to ensure proper representation in the patent application process. If necessary, a new power of attorney should be filed by the appropriate party, such as the executor of the deceased’s estate or the remaining applicants.
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For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
A power of attorney given to a suspended or disbarred patent practitioner becomes ineffective. The MPEP states: ‘Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent matters.’ (MPEP § 407)
During an interference or derivation proceeding, any changes to the power of attorney must be forwarded to a specific board for review. As stated in MPEP 402.05: While an application is involved in an interference or derivation proceeding, any power of attorney or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
This ensures that the appropriate authority handles changes in representation during these specialized proceedings.
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When a patent practitioner dies, their power of attorney is automatically revoked or terminated. According to the MPEP, The power of attorney of a patent practitioner will be revoked or terminated by his or her death.
(MPEP 406)
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.
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When an inventor dies before filing a patent application, the legal representative (executor, administrator, etc.) of the deceased inventor can make the necessary oath or declaration and apply for the patent. This is specified in 37 CFR 1.42 (pre-AIA), which states:
“In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative must comply with the same requirements and conditions that would have been applicable to the inventor.
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If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):
“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”
However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:
“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”
This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.
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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.
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When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
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When the legal representative of a deceased inventor is unavailable, the process depends on whether the application was filed before or after September 16, 2012:
- For applications filed before September 16, 2012: If the legal representative cannot be found or reached after diligent effort, or refuses to make application, pre-AIA 37 CFR 1.47 applies. In such cases, the last known address of the legal representative must be provided.
- For applications filed on or after September 16, 2012: The provisions of pre-AIA 37 CFR 1.47 do not apply. Instead, refer to current USPTO regulations and procedures.
It’s important to note that pre-AIA 37 CFR 1.47 is not an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 for deceased inventors. As stated in the MPEP, Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
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If the last-known address of an unavailable inventor is invalid, the petitioner must make a diligent effort to find a valid address. According to MPEP 409.03(b):
‘If the last known address of the nonsigning inventor(s) is invalid, petitioner must state what efforts were made to find a current address.’
This means the petitioner should document their attempts to locate the inventor, which may include searching public records, contacting former employers, or using people-finding services. If all efforts fail, this should be clearly stated in the petition.
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What happens if not all joint inventors sign a power of attorney in a patent application?
If not all joint inventors sign a power of attorney in a patent application, the power of attorney is not effective. According to MPEP 402.10:
A power of attorney must be signed by all of the applicants, or all of the assignees of the entire interest, or all parties entitled to prosecute the application, unless otherwise specified.
This means that for the power of attorney to be valid, it must be signed by all parties with the right to prosecute the application. If some inventors haven’t signed, the USPTO will treat the application as if no power of attorney has been appointed.
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What happens if not all inventors sign the power of attorney in a pre-September 16, 2012 application?
For applications filed before September 16, 2012, it’s crucial that all inventors who have not assigned their rights sign the power of attorney. According to MPEP 402.02(b):
If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.
If not all inventors sign, the power of attorney may be considered incomplete or invalid. In such cases, the USPTO may require a new power of attorney signed by all parties with the right to prosecute the application, or may accept communications only from the inventors themselves until the issue is resolved.
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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.
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What happens if an inventor dies or becomes legally incapacitated after an application is filed?
If an inventor dies or becomes legally incapacitated after an application is filed, the legal representative of the deceased or incapacitated inventor may make an oath or declaration in compliance with 37 CFR 1.64. The MPEP 409.01(a) states:
“If an inventor dies after an application naming the inventor is filed, the personal representative of the inventor’s estate may make an oath or declaration in compliance with 37 CFR 1.64.”
This process ensures that the application can continue to be prosecuted even if the inventor is no longer able to participate. The legal representative must provide evidence of their authority to act on behalf of the deceased or incapacitated inventor.
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What happens if an inventor becomes legally incapacitated during the patent application process?
If an inventor becomes legally incapacitated during the patent application process, the application can still proceed. According to MPEP 409, ‘If an inventor is legally incapacitated, the legal representative of the inventor may make an application for patent on behalf of the inventor.’ This means that a court-appointed guardian or conservator can act on behalf of the incapacitated inventor to continue the patent application process.
The legal representative must provide evidence of their authority to act for the inventor, such as a court order appointing them as guardian. They can then sign necessary documents and make decisions regarding the patent application on behalf of the incapacitated inventor.
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If an inventor becomes available after a 37 CFR 1.47(a) petition is granted, they should be given the opportunity to join the application. The MPEP 409.03(b) provides guidance:
‘If a nonsigning inventor subsequently joins in the application, the applicant may file a petition under 37 CFR 1.182 to withdraw the 37 CFR 1.47 petition.’
This process involves:
- The newly available inventor signing the necessary oath or declaration.
- Filing a petition under 37 CFR 1.182 to withdraw the previous 1.47 petition.
- Paying any required fees for the new petition.
- Updating the application to reflect the inventor’s participation.
It’s important to address this situation promptly to ensure the application accurately reflects all participating inventors.
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What happens if an attorney or agent withdraws without notifying the USPTO?
If an attorney or agent withdraws from representation without notifying the USPTO, it can lead to several issues:
- The USPTO will continue to recognize the attorney or agent as the representative of record.
- Official correspondence will still be sent to the attorney or agent, potentially causing delays or missed deadlines.
- The applicant may not receive important communications about their application.
According to MPEP 402.06: “A registered attorney or agent who has been given a power of attorney and who withdraws from the application without relinquishing the power of attorney to the USPTO is still considered to be the attorney or agent of record.” To properly withdraw, the attorney or agent should follow the procedures outlined in 37 CFR 1.36 and notify the USPTO in writing.
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What happens if an attorney or agent withdraws from representation in a patent application?
When an attorney or agent withdraws from representation in a patent application, the following occurs:
- The USPTO will correspond directly with the applicant until a new Power of Attorney or address change is filed.
- The withdrawal is effective when approved by the Office, not when received.
- The Office may require the applicant or assignee to revoke the previous Power of Attorney and appoint a new representative.
As stated in MPEP 402.06: ‘In the event the power of attorney is withdrawn, the Office will communicate directly with the applicant… until a new registered attorney or agent is appointed.’
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If a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application, they can do so by filing the appropriate documentation. The MPEP states:
“In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.”
This means that if the inventor who initially did not sign the application later chooses to participate, they can submit a properly executed oath or declaration. This document will then be added to the official application file, effectively joining them to the application.
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If a patent application is filed without a correspondence address:
- The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
- If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
- Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
- The applicant has 2 months from the filing date to complete the application before it is abandoned.
According to MPEP 403: “If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. … If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.”
If a nonsigning inventor believes they are the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application where they are named as a joint inventor, they have a specific course of action available to them.
According to MPEP 409.03(i):
“If a nonsigning inventor feels that he or she is the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application naming him or her as a joint inventor, the nonsigning inventor may file his or her own application and request that his or her application be placed in interference with the pre-AIA 37 CFR 1.47 application.”
This means that the nonsigning inventor can:
- File their own separate patent application for the invention
- Request that their application be placed in interference with the pre-AIA 37 CFR 1.47 application
The MPEP further states: “If the claims in both the nonsigning inventor’s application and the pre-AIA 37 CFR 1.47 application are otherwise found allowable, an interference may be declared.”
An interference proceeding is a process used to determine which party has the right to a patent when two or more parties claim the same invention.
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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.
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If a legal representative hasn’t been appointed for a deceased inventor in an application filed before September 16, 2012, the situation can be complex. According to MPEP 409.01(b):
If no legal representative has been appointed, the examiner will reject the application under 35 U.S.C. 102(f) on the basis that the applicant is not the inventor and/or on the basis that there is no right to apply in any person other than the inventor.
This means that without a legal representative, the application may face rejection. It’s crucial to appoint a legal representative as soon as possible to avoid this outcome.
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What happens if a foreign patent agent’s limited recognition expires?
If a foreign patent agent’s limited recognition expires, they are no longer authorized to represent applicants before the USPTO. The MPEP states, A foreign patent agent granted limited recognition may continue to represent applicants for the remainder of any time period previously set by the USPTO for taking an action, which period is still outstanding at the expiration of the 5-year period of recognition.
(MPEP 402.01) This means that if there are any ongoing actions with set deadlines, the agent can complete those, but they cannot take on new representations or continue general practice until they renew their limited recognition status.
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After an application filed under pre-AIA 37 CFR 1.47 is accepted by the USPTO, the examiner proceeds with the application as usual. As stated in the MPEP:
“After an application deposited pursuant to pre-AIA 37 CFR 1.47 is found acceptable by the Office, the examiner will act on the application in the usual manner.”
This means that the application will be examined and processed like any other patent application, despite its initial filing under special circumstances.
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For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.
Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.
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There are two main forms that can be used to authorize a patent practitioner for an interview:
- Applicant Initiated Interview Request Form (PTOL-413A)
- Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’
According to MPEP 405:
Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
Additionally:
Alternatively, Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ which is available from the USPTO website at www.uspto.gov/sites/default/files/web/forms/sb0084.pdf may be used to establish the authority to conduct an interview.
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:
Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.
The process involves:
- The assignee signing the power of attorney (Form PTO/SB/80)
- Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)
Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.
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The USPTO provides several forms for appointing a power of attorney in patent applications filed on or after September 16, 2012. These forms are available on the USPTO website and include:
- PTO/AIA/80: For use by assignees who are either the named applicant or are becoming the applicant.
- PTO/AIA/81: For use by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney.
- PTO/AIA/82: For use by the applicant for patent to appoint one or more patent practitioners.
- PTO/AIA/81A: For use in appointing a power of attorney in a patent resulting from an application filed on or after September 16, 2012.
Each form has specific uses and requirements. For example, Form PTO/AIA/80 must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) and must be signed by the named assignee or a person authorized to act on behalf of the assignee.
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When an applicant is initiating an interview request, they should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner. The MPEP provides the following guidance:
When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This form helps streamline the interview process by providing the examiner with essential information about the proposed interview.
To support a petition under pre-AIA 37 CFR 1.47, the following evidence is typically required:
- A statement of facts signed by someone with firsthand knowledge
- Documentary evidence such as Internet searches, certified mail return receipts, cover letters of instructions, or telegrams
- Details of steps taken to locate the nonsigning inventor
The MPEP emphasizes:
‘The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted.’
It’s crucial to provide facts rather than conclusions in the statement.
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To show an inventor is unavailable or refuses to sign, the petitioner must provide substantial evidence. According to MPEP 409.03(b):
‘The fact that an inventor is unavailable or refuses to join in an application must be established by satisfactory proof… such as inability to find him or reach him after diligent effort.’
Evidence may include:
- Copies of correspondence sent to the last known address with no response
- Returned mail showing the inventor is no longer at the address
- Affidavits from people with knowledge of the inventor’s unavailability
- Documentation of attempts to contact the inventor through various means
For refusal to sign, direct evidence such as a written statement from the inventor expressing their refusal would be ideal. In the absence of such direct evidence, circumstantial evidence showing implied refusal may be considered.
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What evidence is required to prove an inventor’s refusal to sign a patent application?
When an inventor refuses to sign a patent application, specific evidence is required to proceed without their signature. The MPEP 409.03(d) outlines the necessary proof:
‘Where refusal of the inventor to sign the application papers is the reason for filing under pre-AIA 37 CFR 1.47(b), the applicant should make reasonable efforts to contact the inventor and to secure the inventor’s signature.’
Evidence of refusal typically includes:
- Documented attempts to contact the inventor (emails, letters, phone logs)
- Any written responses from the inventor indicating refusal
- Witness statements corroborating the inventor’s refusal
- A detailed explanation of the circumstances surrounding the refusal
The USPTO requires a thorough statement of facts describing the situation and efforts made to obtain the inventor’s signature. It’s crucial to demonstrate that the inventor was fully informed about the patent application and explicitly refused to sign, rather than simply being unresponsive.
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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.
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MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.
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.”
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What documents can serve as proof of proprietary interest for joint inventors?
For joint inventors, proof of proprietary interest can be established through various documents. According to MPEP 409.03(f), acceptable forms of proof include:
- An assignment for the entire right, title, and interest in the application from all inventors to one or more joint inventors
- Written statements from all inventors that they have assigned their rights in the application to one or more joint inventors
- Other evidence showing that one or more joint inventors are the only inventor(s) who have the right to prosecute the application
The MPEP states: ‘Where one of several joint inventors is deceased or cannot be reached, a statement by the prosecuting inventor as to the facts, including the names of the other joint inventors, may be accepted as sufficient proof of proprietary interest.’ This provision allows for flexibility in cases where obtaining documentation from all inventors is challenging.
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According to MPEP 402.04, there are several important documents that a person acting in a representative capacity generally cannot sign. These include:
- A power of attorney (37 CFR 1.32)
- A document granting access to an application
- A change of correspondence address
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for express abandonment without filing a continuing application (37 CFR 1.138(b))
However, there are some exceptions for applications filed on or after September 16, 2012. In these cases, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- A power of attorney has not been appointed under 37 CFR 1.32(b), and
- The patent practitioner was named in the application transmittal papers.
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When a legal representative takes over a patent application for a deceased inventor, specific documents are required:
- Proof of authority to act on behalf of the deceased inventor’s estate (e.g., Letters Testamentary, Letters of Administration)
- A new oath or declaration by the legal representative
- Any necessary assignments or other documents to establish ownership rights
According to MPEP 409.01: “The Office no longer requires proof of authority of the legal representative to prosecute the application. However, any necessary documentary evidence of the legal representative’s authority to act on behalf of the deceased inventor’s estate, such as Letters Testamentary, Letters of Administration, or a Certificate of Heirship, should be kept in the application file.”
It’s important to note that while the USPTO doesn’t require submission of proof of authority, it’s advisable to keep such documentation readily available in case it’s requested.
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What documents are required for an assignee to revoke power of attorney in a patent application?
To revoke power of attorney in a patent application, an assignee must submit specific documents to the USPTO. According to MPEP 402.07, the required documents are:
- Statement under 37 CFR 3.73(c): This establishes the assignee’s ownership.
- Revocation of the existing power of attorney
- New power of attorney from the assignee
The MPEP states:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner. The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”
It’s crucial to ensure all documents are properly executed and filed with the USPTO to effectively change the power of attorney.
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What documentation is required when filing a patent application for a deceased or legally incapacitated inventor?
When filing a patent application for a deceased or legally incapacitated inventor, specific documentation is required. According to MPEP 409.03(b), the following documentation is typically necessary:
- For deceased inventors:
- Death certificate of the inventor
- Letters Testamentary or Letters of Administration proving the legal representative’s authority
- For legally incapacitated inventors:
- Court order declaring the inventor legally incapacitated
- Guardianship or conservatorship papers demonstrating the legal representative’s authority
- For both cases:
- Oath or declaration executed by the legal representative
- Application Data Sheet (ADS) listing the inventor and indicating their status (deceased or legally incapacitated)
- Power of Attorney from the legal representative, if applicable
The MPEP states: “Proof of the authority of the legal representative must be provided to the Office.” This ensures that the person acting on behalf of the inventor has the legal right to do so.
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When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
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What documentation is required when an inventor dies during the patent application process?
When an inventor dies during the patent application process, specific documentation is required to continue the application. According to MPEP 409, the following documents are typically needed:
- A copy of the inventor’s death certificate
- Legal documentation showing the authority of the legal representative (e.g., executor of the estate)
- An oath or declaration by the legal representative
The MPEP states: ‘If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.’ This means that the executor or administrator of the deceased inventor’s estate can step in to complete the patent application process.
It’s important to note that the legal representative must provide evidence of their authority to act on behalf of the deceased inventor’s estate, such as letters testamentary or letters of administration issued by a probate court.
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What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
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What documentation is required for a legal representative to file a patent application for a deceased inventor?
When filing a patent application for a deceased inventor, a legal representative must provide specific documentation to establish their authority. According to MPEP 409.01(a):
“If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent as provided in 37 CFR 1.43. In accordance with 37 CFR 1.43, the legal representative must provide proof of authority…”
The required documentation typically includes:
- A copy of the deceased inventor’s death certificate
- Proof of the legal representative’s authority (e.g., court appointment as executor or administrator of the estate)
- A substitute statement in lieu of an inventor’s oath or declaration
- An Application Data Sheet (ADS) identifying the legal representative
It’s important to note that the specific requirements may vary depending on the circumstances and jurisdiction. Consulting with a patent attorney is advisable to ensure all necessary documentation is properly prepared and submitted.
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To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide:
- A copy of the written agreement to assign the invention
- If the agreement is conditional, a statement of facts showing the conditions have been met
MPEP 409.03(f) states:
“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. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met.”
A common example is an employment agreement. In such cases, you must provide evidence that the invention was made during the course of employment, typically through a statement from someone with firsthand knowledge of the circumstances.
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What documentation is needed to prove authority as a legal representative for a deceased or incapacitated inventor?
When filing a patent application on behalf of a deceased or legally incapacitated inventor, it’s crucial to provide documentation that proves your authority as a legal representative. The specific documentation required can vary based on the circumstances, but generally includes:
- For a deceased inventor: Death certificate and letters testamentary or letters of administration
- For an incapacitated inventor: Court order declaring incapacity and appointing a legal guardian or conservator
- Power of attorney or other legal document granting authority to act on behalf of the inventor or their estate
The MPEP 409.01(a) states:
Office personnel will not question whether the person executing the substitute statement is authorized to act on behalf of the deceased inventor’s estate or legal entity unless there is evidence to the contrary.
While the USPTO generally accepts the substitute statement without questioning the authority, it’s important to have proper documentation available in case it’s requested or if legal issues arise later. Always consult with a patent attorney to ensure you have the correct documentation for your specific situation.
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What documentation is needed for a legal representative to act on behalf of a deceased or incapacitated inventor?
To act on behalf of a deceased or incapacitated inventor, a legal representative must provide appropriate documentation to the USPTO. The MPEP 409.01(a) states:
“Office personnel will not question whether the person signing the oath or declaration is in fact a person authorized to make the statement, and will not require proof of the authority of the person making the statement.”
However, it’s important to note that while the USPTO does not require proof upfront, the legal representative should still have proper documentation, such as:
- For a deceased inventor: Letters testamentary, letters of administration, or other court documents establishing authority over the estate.
- For an incapacitated inventor: Court order appointing a guardian or conservator.
These documents may be required if the authority is later questioned or in other legal proceedings related to the patent application.
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A valid reason for filing under pre-AIA 37 CFR 1.47 requires a diligent effort to locate or reach a nonsigning inventor. The MPEP states:
‘Where inability to find or reach a nonsigning inventor “after diligent effort” is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’
It’s important to note that temporary unavailability, such as being on vacation or out of town, is not considered an acceptable reason. Additionally, hospitalization or unconsciousness are not valid reasons under this rule, but may be addressed under pre-AIA 37 CFR 1.43.
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The MPEP 409.03(g) section on proof of irreparable damage is not applicable to patent applications filed on or after September 16, 2012. This change is due to the implementation of the America Invents Act (AIA), which brought significant reforms to the U.S. patent system. Key changes include:
- Transition from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system
- New procedures for challenging patents at the USPTO
- Expanded definition of prior art
- Changes to inventor oath and declaration requirements
For applications filed on or after September 16, 2012, different rules and procedures apply regarding the representation of applicants and the handling of situations that might have previously fallen under the irreparable damage provisions.
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Pro se applicants make important certifications when filing patent applications. According to MPEP 401:
“In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).”
These certifications include statements about the truthfulness of the application, that it is not being presented for improper purposes, and that claims are warranted by existing law or a good faith argument for changing the law.
When submitting papers to the USPTO, two key certifications are made under 37 CFR 11.18(b):
- Statements made are subject to the declaration clause of 37 CFR 1.68
- The certification required for papers filed in federal court under Rule 11(b) of the Federal Rules of Civil Procedure
Specifically, 37 CFR 11.18(b) states that by presenting any paper to the USPTO, the party certifies that:
‘All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute’
This applies to both practitioners and non-practitioners submitting papers to the USPTO.
When presenting any paper to the USPTO, the party (whether a practitioner or non-practitioner) is making important certifications as outlined in 37 CFR 11.18(b):
- All statements made of the party’s own knowledge are true.
- Statements made on information and belief are believed to be true.
- The paper is not being presented for any improper purpose (e.g., harassment, delay).
- Legal contentions are warranted by existing law or non-frivolous arguments for changes in the law.
- Factual contentions have or are likely to have evidentiary support.
- Denials of factual contentions are warranted or based on lack of information or belief.
The MPEP notes: “37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or non-practitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure.”
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If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, 37 CFR 1.45(a) provides a solution. It states:
“If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor.”
In such cases, the other joint inventor(s) can proceed with the application and execute a substitute statement in lieu of an oath or declaration from the unavailable inventor, as outlined in 37 CFR 1.64. For more information on substitute statements, refer to MPEP § 604.
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The timing of filing a request to withdraw as a patent practitioner is crucial. According to the MPEP:
- The USPTO will review and decide on withdrawal requests filed before the expiration of a time period for reply or before the expiration of a time period that can be extended under 37 CFR 1.136(a).
- Requests filed after these deadlines will be placed in the application file but will not be treated on their merits.
- Revocations of power of attorney filed after these deadlines will also simply be placed in the application file, with the exception of those accompanied by a petition to revive.
It’s important to note that the USPTO may render a decision on a timely filed request even after the stated period for reply, after the application is abandoned, or after proceedings have terminated.
For reexamination proceedings, practitioners should refer to MPEP § 2223 for specific guidance on withdrawal.
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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.
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When multiple parties are prosecuting a patent application, there are specific signature requirements for replies to the USPTO. The MPEP provides clear guidance:
“Each of these parties must sign all subsequent replies submitted to the Office.”
The MPEP also provides examples to illustrate these requirements:
- “If coinventor A has given a power of attorney to a patent practitioner and coinventor B has not, replies must be signed by the patent practitioner of A and by coinventor B.”
- “If coinventors A and B have each appointed their own patent practitioner, replies must be signed by both patent practitioners.”
These examples demonstrate that all parties involved in prosecuting the application must sign subsequent replies, whether they are inventors, attorneys, or agents. This ensures that all parties are aware of and agree to the content of communications with the USPTO.
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According to 37 CFR 11.18(a), all documents filed in the USPTO for patent matters must bear a signature, with some exceptions:
- Documents that are required to be signed by the applicant or party do not need a practitioner’s signature.
- For all other documents, each piece of correspondence filed by a practitioner must be personally signed or have their signature inserted in compliance with 37 CFR 1.4(d).
The MPEP states: “37 CFR 11.18(a) emphasizes that every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party.”
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What are the signature requirements for papers filed by a juristic entity in a patent application?
For papers filed by a juristic entity (e.g., corporation) in a patent application:
- A person authorized to act on behalf of the juristic entity must sign.
- The signer’s name and title must be included.
- The papers must state the signer’s capacity to sign for the juristic entity.
The MPEP states: Papers filed on behalf of juristic entities must be signed by a patent practitioner. 37 CFR 1.33(b)(3).
(MPEP 402.03)
For example, a proper signature might look like: ‘John Smith, President, Corporation XYZ, authorized to sign on behalf of Corporation XYZ’.
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For documents submitted through EFS-Web, the USPTO accepts electronic signatures. According to MPEP 402.03:
Any paper filed in the Office in a patent application, patent file, or other proceeding which is not signed as required by 37 CFR 1.4(d) or (e) will be considered unsigned, and will be treated in accordance with 37 CFR 1.4(d)(1).
The USPTO specifically recognizes S-signatures for EFS-Web submissions. An S-signature is a signature inserted between forward slash marks, like so: /John Smith/. It’s important to note that the signer must manually type their name or use a facsimile or handwritten signature inserted between the slashes.
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S-signatures, or electronic signatures, must meet specific requirements for patent applications:
- Inserted between forward slash marks (//).
- Include the signer’s name.
- Be reasonably specific to identify the signer.
- Be handwritten or a facsimile of a handwritten signature.
According to MPEP 402.03: ‘The signature must consist only of letters, or Arabic numerals, or both. The S-signature must be signed in permanent dark ink or its equivalent.’
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When conducting interviews with patent practitioners in foreign countries, examiners must follow specific guidelines:
- Interviews must be conducted via video conference or telephone.
- In-person interviews in foreign countries are not permitted.
- The same interview policies and procedures apply as for domestic interviews.
As stated in the MPEP 408: ‘For patent practitioners in foreign countries, interviews must be scheduled to be conducted by video conference or telephone. Examiners may not hold in-person interviews with patent practitioners in foreign countries.’
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).
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A non-signing inventor, also known as an “inventor designee,” has certain rights in a patent application filed without their signature. According to MPEP § 409.03(i) (for applications filed before September 16, 2012):
- The non-signing inventor may protest their designation as an inventor
- They are entitled to inspect any paper in the application and order copies
- They can make their position of record in the file wrapper of the application
- They may arrange to do any of the above through a registered patent attorney or agent
However, the non-signing inventor is not entitled to a hearing and cannot prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded or if the proprietary interest of the pre-AIA 37 CFR 1.47(b) applicant has been shown.
For applications filed on or after September 16, 2012, similar principles apply, but the specific procedures may differ.
What are the restrictions on registered practitioners not of record during USPTO interviews?
Registered practitioners who are not of record for a specific patent application face certain restrictions when attending USPTO interviews. According to MPEP 408:
‘The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This means that while a practitioner not of record may accompany the practitioner of record to an interview, their participation is limited. They cannot actively engage in the discussion or negotiation process without explicit authorization from the patent applicant. This restriction is in place to ensure that the applicant’s interests are properly represented by their chosen practitioner of record and to maintain the integrity of the interview process.
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
For more information on registered practitioner, visit: registered practitioner.
What are the requirements for signing patent documents on behalf of juristic entities?
The requirements for signing patent documents on behalf of juristic entities (such as corporations, universities, or other organizations) are specific and strict. According to MPEP 402.04:
“Effective September 16, 2012, any paper submitted on behalf of a juristic entity must be signed by a patent practitioner.”
This means that for juristic entities:
- All patent documents must be signed by a registered patent practitioner (either a patent attorney or a patent agent).
- Employees or officers of the juristic entity cannot sign patent documents, even if they are the inventors.
- The patent practitioner must be officially appointed to represent the juristic entity before the USPTO.
This requirement ensures that juristic entities are properly represented in patent matters and helps maintain the integrity of the patent application process. It’s important for juristic entities to work with qualified patent practitioners to handle their patent applications and related documents.
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Amendments and other papers filed in a patent application must be signed by specific individuals as outlined in 37 CFR 1.33(b):
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
- The applicant (37 CFR 1.42)
It’s important to note that for juristic entities (e.g., corporations), 37 CFR 1.33(b)(3) specifies:
“Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.”
This requirement ensures that juristic entities are properly represented in patent proceedings.
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The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
S-signatures, or electronic signatures, are accepted by the USPTO for patent applications. The requirements for S-signatures include:
- The signature must be between forward slash marks (//).
- The signer’s name must be provided in printed or typed form preferably immediately below or adjacent to the S-signature.
- The S-signature may be any combination of letters, numbers, spaces, and punctuation marks.
The MPEP 402.03 states: An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./).
It’s important to note that the S-signature must be inserted by the person signing the document, not by someone else on their behalf.
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The requirements for representing applicants before international patent authorities vary depending on the specific authority. According to MPEP 402.09 and 37 CFR 11.9(c):
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.
This means that representation rights depend on the specific authority and the individual’s right to practice before the relevant national office or the International Bureau.
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What are the requirements for limited recognition to practice before the USPTO?
To obtain limited recognition to practice before the USPTO in patent matters, an individual must meet the following requirements:
- Be a scientist or engineer with a bachelor’s degree in a recognized technical subject
- Demonstrate scientific and technical training
- Possess good moral character and reputation
- Be competent to advise and assist patent applicants
As stated in MPEP 402.01: ‘The OED Director may grant limited recognition to practice before the Office in patent matters to an individual not registered to practice before the Office.’ This limited recognition is subject to the conditions specified by the OED Director.
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To file an application under pre-AIA 37 CFR 1.47(a) when at least one joint inventor is available, the following requirements must be met:
- All available joint inventors must make an oath/declaration for themselves and on behalf of the nonsigning inventor
- Proof that the nonsigning inventor cannot be found/reached after diligent effort or refuses to execute the application
- The last known address of the nonsigning inventor must be stated
As stated in MPEP 409.03(a): In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements…
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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When conducting interviews with inventors or assignees, examiners must adhere to specific requirements:
- The practitioner of record must authorize and be present for the interview.
- Inventors or assignees cannot participate without the practitioner’s presence.
- Examiners should not conduct interviews directly with inventors or assignees alone.
According to the MPEP 408: ‘Interviews with inventors or assignees and/or their attorneys or agents of record must be authorized by the practitioners of record. The practitioner of record must be present and an examiner may not conduct an interview with an inventor or assignee unless the practitioner is present.’
For more information on patent examination, visit: patent examination.
What are the requirements for a registered practitioner to obtain access to an application?
According to MPEP 405, a registered practitioner may obtain access to an application if they fulfill the following requirements:
- The practitioner must be acting in a representative capacity
- The practitioner must have proper authority from the applicant or attorney or agent of record
- Written consent from the applicant, attorney, or agent of record must be provided
The MPEP states: ‘Access will be given to the entire application file history in the absence of a specific request from the authorizing party for only a portion of the file.’ This means that unless specified otherwise, the practitioner will be granted full access to the application file.
For more information on application access, visit: application access.
For more information on registered practitioner, visit: registered practitioner.
For more information on USPTO procedures, visit: USPTO procedures.
What are the requirements for a power of attorney to be valid in patent applications?
For a power of attorney to be valid in patent applications, it must meet the following requirements:
- It must be signed by the applicant for patent (e.g., the inventor) or the assignee of the entire interest.
- It must be in writing.
- It must name one or more representatives to act on behalf of the principal.
As stated in MPEP 402.04: ‘The power of attorney must be signed by the applicant for patent (e.g., the inventor(s)) or the assignee of the entire interest of the applicant.’ This ensures that only authorized individuals can appoint representatives to act on behalf of the applicant or assignee in patent matters.
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What are the requirements for a power of attorney in applications filed before September 16, 2012?
What are the requirements for a power of attorney in applications filed before September 16, 2012?
For applications filed before September 16, 2012, there are specific requirements for a valid power of attorney. According to MPEP 402.02(b):
“For applications filed before September 16, 2012, the power of attorney must be signed by (1) the applicant, where the inventor is the applicant, or (2) the assignee of the entire interest of the applicant.”
Additionally, the power of attorney must:
- Be in writing
- Name one or more attorneys or agents
- Be signed by the applicant for patent (i.e., all of the inventors) or the assignee of the entire interest of the applicant
It’s important to note that for applications filed before September 16, 2012, a power of attorney may be incorporated in the oath or declaration form if the power of attorney is included in the same document.
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What are the requirements for a patent practitioner to withdraw from representation?
A patent practitioner who wishes to withdraw from representation must follow specific procedures. According to MPEP 403.01(a): A registered patent practitioner acting in a representative capacity in an application filed on or after September 16, 2012, may not withdraw from representation in that application without leave of the Office.
The process for withdrawal typically involves:
- Filing a request to withdraw as attorney or agent of record
- Providing reasons for the withdrawal
- Ensuring that the applicant is notified of the request
- Obtaining Office approval before ceasing representation
For detailed instructions on the withdrawal process, refer to MPEP 402.06. It’s crucial to follow these procedures to ensure a proper transition and to maintain compliance with USPTO regulations.
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What are the requirements for a non-registered individual to obtain limited recognition?
For a non-registered individual to obtain limited recognition, several requirements must be met as outlined in MPEP 402.01:
- The individual must be an attorney who is not registered to practice before the Office.
- They must show that they are acting only as an attorney for a particular named applicant.
- The attorney must be authorized to practice before a court of general jurisdiction of the state where they reside or are employed.
- The OED Director must find that the attorney possesses the scientific and technical qualifications necessary to render valuable service to the applicant.
- The attorney must apply for and be granted limited recognition by the OED Director.
It’s important to note that limited recognition is granted for a specific purpose and duration, and can be withdrawn by the OED Director at any time.
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According to 37 CFR 11.116(b), a practitioner may withdraw from representing a client for several reasons, including:
- Withdrawal can be accomplished without material adverse effect on the client’s interests
- The client persists in a course of action the practitioner reasonably believes is criminal or fraudulent
- The client has used the practitioner’s services to perpetrate a crime or fraud
- The client insists on taking action the practitioner considers repugnant or fundamentally disagrees with
- The client fails to fulfill an obligation regarding the practitioner’s services after reasonable warning
- The representation results in an unreasonable financial burden or has been rendered unreasonably difficult by the client
- Other good cause for withdrawal exists
It’s important to note that when requesting withdrawal, practitioners should be mindful of client confidentiality as required by 37 CFR 11.106. In cases involving sensitive reasons for withdrawal, practitioners should cite ‘irreconcilable differences’ and submit supporting evidence as proprietary material.
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Violations of USPTO signature and certification requirements can result in serious consequences as outlined in 37 CFR 11.18(c) and (d):
- Striking the offending paper
- Referral to the Office of Enrollment and Discipline
- Preclusion from submitting papers or contesting issues
- Affecting the weight given to the offending paper
- Termination of proceedings
- Disciplinary action against practitioners
The MPEP states: “37 CFR 11.18(d) provides that any practitioner violating the provisions of 37 CFR 11.18 may also be subject to disciplinary action, thus clarifying that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 11.18(c) for violations of 37 CFR 11.18.”
Additionally, knowingly making false statements can lead to criminal penalties under 18 U.S.C. 1001.
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Limited recognition in patent matters comes with several restrictions:
- Scope limitation: As stated in 37 CFR 11.9(a), ‘Limited recognition under this paragraph shall not extend further than the application or applications specified.’
- Duration for nonimmigrant aliens: According to 37 CFR 11.9(b), ‘Limited recognition shall be granted for a period consistent with the terms of authorized employment or training.’
- Geographical restrictions: The same regulation states, ‘Limited recognition shall not be granted or extended to a non-United States citizen residing abroad.’
- Automatic expiration: For nonimmigrant aliens, ‘Limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.’
These limitations ensure that limited recognition is granted only for specific circumstances and does not provide the same broad authority as full registration as a patent practitioner.
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For patent applications filed on or after September 16, 2012, the general requirements for powers of attorney are:
- The power of attorney must be in writing.
- It must name one or more representatives.
- It must give the representative power to act on behalf of the principal.
- It must be signed by the applicant for patent or the patent owner.
According to 37 CFR 1.32(b)(4), “A power of attorney must: […] (4) Be signed by the applicant for patent (§ 1.42) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.”
It’s important to note that an assignee who is not an applicant cannot revoke or appoint a power of attorney in a patent application.
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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.
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Violating the certification requirements when submitting papers to the USPTO can have serious consequences. According to 37 CFR 11.18(c), violations may result in:
- Striking the offending paper
- Referring a practitioner’s conduct to the Office of Enrollment and Discipline
- Precluding a party or practitioner from submitting papers or contesting issues
- Affecting the weight given to the offending paper
- Terminating proceedings in the Office
Additionally, 37 CFR 11.18(d) states that practitioners violating these provisions may be subject to disciplinary action. The USPTO Director determines appropriate sanctions after notice and opportunity to respond.
It’s important to note that violations can jeopardize the validity of applications, documents, patents, and trademark registrations. As stated in the MPEP:
‘The submission by an applicant of misleading or inaccurate statements of facts during the prosecution of applications for patent has resulted in the patents issuing on such applications being held unenforceable.’
Several court cases are cited demonstrating how false statements have led to patents being unenforceable.
Submitting unauthorized correspondence to the USPTO for patent applications filed after September 16, 2012, can have serious consequences:
- The correspondence may be returned or not entered into the application
- It could cause delays in the processing of the application
- Important deadlines might be missed, potentially leading to abandonment of the application
- There may be additional fees or costs to rectify the situation
The USPTO has strict rules about who can correspond on behalf of applicants. According to MPEP 403.01(a):
Pursuant to 37 CFR 1.33(a), if an applicant includes more than one correspondence address (37 CFR 1.33(a) ) in a patent application, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
To avoid these issues, ensure that all correspondence is submitted by authorized individuals or entities as specified in the MPEP and relevant USPTO regulations.
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What are the consequences of knowingly submitting false statements to the USPTO?
Submitting false statements to the USPTO can have serious consequences. According to MPEP 410:
“Knowingly submitting false statements or withholding material information from the Office in connection with a patent application or patent may be punishable by fine or imprisonment.”
The MPEP further states that such actions may result in:
- Invalidation of patents
- Unenforceability of patents
- Criminal prosecution
- Disciplinary action against practitioners
It’s crucial for applicants and their representatives to maintain honesty and transparency in all communications with the USPTO to avoid these severe consequences.
For more information on USPTO, visit: USPTO.
Improper signatures on patent documents can have serious consequences:
- The document may be considered unsigned and therefore ineffective.
- It could lead to delays in the patent application process.
- In some cases, it might result in the loss of rights or benefits.
- The USPTO may require a new submission with proper signatures.
MPEP 402.03 states: ‘Signatures on any paper filed in the Office relating to patents must be permanent. The Office will accept and consider electronically submitted papers bearing S-signatures or handwritten signatures.’
To avoid these issues, ensure all signatures meet USPTO requirements and are made by authorized individuals.
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For unpublished patent applications, confidentiality is a critical concern. The MPEP states:
An interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
This means that for unpublished applications, the USPTO will only discuss information provided by the attorney or agent to maintain confidentiality. The examiner cannot disclose any information from the application file that hasn’t been supplied by the practitioner.
For more information on unpublished applications, visit: unpublished applications.
When a patent practitioner dies, the law firm should take the following actions:
- Promptly notify the USPTO’s Office of Enrollment and Discipline (OED) of the practitioner’s death.
- Inform clients with pending applications about the situation and the need to appoint a new representative.
- Assist clients in filing new powers of attorney or authorizations of agent for pending applications.
- Provide the USPTO with updated correspondence addresses for affected applications.
The MPEP 406 states: ‘When it is known that the attorney or agent of record in an application is deceased, the Office should be promptly notified.’ This notification helps ensure a smooth transition and continued proper handling of patent applications.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
What actions can a suspended or excluded practitioner take during the 30-day limited recognition period?
During the 30-day limited recognition period, suspended or excluded practitioners are allowed to perform specific actions to protect their clients’ interests. According to MPEP 407:
“During the 30-day period of limited recognition, the suspended or excluded practitioner may conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of suspension or exclusion.”
Specifically, the practitioner may:
- Receive and forward correspondence related to pending matters
- Make appropriate filings to protect the client’s rights
- Conclude or withdraw from representation in pending proceedings
- Perform limited actions necessary to transfer the client’s case to another registered practitioner
It’s important to note that this limited recognition does not allow the practitioner to take on new clients or file new patent applications during this period.
What actions can a practitioner take to preserve an applicant’s rights without a power of attorney?
A practitioner can take certain actions to preserve an applicant’s rights without a formal power of attorney, but these are generally limited to urgent situations. The MPEP 402.04 provides some examples:
- Filing a patent application to prevent statutory bar
- Filing a response to an Office action with a nearing deadline
- Filing a notice of appeal when the period for appeal is about to expire
The MPEP states: ‘Such actions, if taken by a registered patent practitioner, will be accepted by the Office if submitted in a timely manner.’ However, it’s important to note that these actions are typically allowed only in emergencies to prevent the loss of patent rights. The practitioner should follow up with proper documentation of authority as soon as possible after taking such actions.
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While providing the last known address where the nonsigning inventor customarily receives mail is the primary requirement, the MPEP suggests that additional addresses may be beneficial:
‘Inasmuch as a nonsigning inventor is notified that an application pursuant to pre-AIA 37 CFR 1.47 has been filed on his or her behalf, other addresses at which the nonsigning inventor may be reached should also be given.’
This recommendation aims to increase the chances of successfully notifying the nonsigning inventor about the application. If you’re aware of multiple addresses where the inventor might be reached, it’s advisable to include them all.
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While the last known residence is often the appropriate address to provide, it’s not always the case. The MPEP states:
‘Ordinarily, the last known address will be the last known residence of the nonsigning inventor.’
However, the key is to provide the address where the inventor customarily receives mail. If this differs from their residence, the mailing address should be provided instead. The goal is to increase the likelihood that the nonsigning inventor will receive any USPTO communications.
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The United States Patent and Trademark Office (USPTO) does not require proof of authority to be filed by a legal representative of a deceased or incapacitated inventor. MPEP 409.01(b) states:
“Proof of authority of the legal representative of a deceased or incapacitated inventor is not required.”
However, it’s important to note that while the USPTO doesn’t require this proof, the legal representative should ensure they are properly acting in such a capacity. The MPEP advises:
“Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.”
This means that while formal proof isn’t needed for USPTO purposes, the legal representative should be prepared to demonstrate their authority if challenged in other legal contexts.
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No, MPEP 409.03(g) is not applicable to all patent applications. As stated in the editor’s note at the beginning of the section:
This MPEP section is not applicable to applications filed on or after September 16, 2012.
This means that the guidance provided in MPEP 409.03(g) regarding proof of irreparable damage only applies to patent applications filed before September 16, 2012. For applications filed on or after that date, different rules and procedures may apply.
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No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:
‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’
This is supported by several court cases cited in the MPEP, including:
- Nordberg, Inc. v. Telsmith, Inc.
- FMC Corp. v. Hennessy Indus., Inc.
- American Hoist & Derrick Co. v. Sowa & Sons, Inc.
The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.
When handling interview requests from practitioners not of record, examiners should follow these guidelines:
- Verify the requester’s authority to conduct the interview.
- Ensure the practitioner of record has authorized the interview.
- If authorization is not provided, decline the interview request.
The MPEP 408 states: ‘Interviews with practitioners not of record should be conducted only with the consent of the practitioner of record.’ It further advises: ‘An examiner should not conduct an interview with an attorney or agent who is not of record unless the attorney or agent presents either a power of attorney or a letter signed by the attorney or agent of record authorizing the interview.’
For more information on patent examination, visit: patent examination.
When handling interview requests from multiple attorneys or agents, examiners should follow these guidelines:
- Generally, only one interview is granted per application.
- If multiple practitioners request interviews, coordinate with the practitioner of record.
- Additional interviews may be granted at the examiner’s discretion.
The MPEP 408 states: ‘An interview should normally be conducted with the attorney or agent of record in an application.’ It further advises: ‘If more than one attorney or agent request an interview in an application, it is the responsibility of the attorney or agent of record to resolve any conflict.’
For more information on patent examination, visit: patent examination.
For more information on practitioner of record, visit: practitioner of record.
The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:
- Changes in patent laws or regulations
- New court decisions affecting patent examination
- Evolving USPTO policies and procedures
- Feedback from patent examiners and practitioners
Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.
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.
For continuing applications where application papers from a prior application are used, special attention must be paid to the correspondence address. According to 37 CFR 1.33(f):
“Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.”
This means that applicants must explicitly specify the desired correspondence address for the continuing application to ensure proper communication with the USPTO.
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Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations:
- The inventor must be presented with the application papers.
- The inventor must understand what they are being asked to sign.
- The inventor must expressly refuse to accept the application papers.
The MPEP states:
‘A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers.’
It’s important to document the circumstances of the presentation and refusal, including time, place, and any written evidence of refusal.
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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.”
When two patent practitioners are appointed, the handling of correspondence depends on how and when they were appointed. According to MPEP 403.02:
“If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record.”
This means that the USPTO will use the most recently provided correspondence address. It’s important to note that this is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets.
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When two patent practitioners are appointed for the same application:
- If appointed simultaneously, the applicant should specify which address to use for correspondence.
- If a second practitioner is added later, correspondence will be sent to the most recently provided correspondence address.
- A new power of attorney appointing only the second practitioner effectively revokes the power of the first practitioner.
According to MPEP 403.02: “If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. … If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. … 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.”
When multiple parties are prosecuting a patent application, the USPTO has specific procedures for handling correspondence. The MPEP states:
“Double correspondence will still not be permitted. Accordingly, when the acceptance of such papers results in an attorney or agent and at least one applicant or owner prosecuting the application, correspondence will be mailed to the attorney or agent.”
Furthermore, when multiple attorneys or agents are involved:
“When the acceptance of such papers results in more than one attorney or agent prosecuting the application, the correspondence address will continue to be that of the attorney or agent first named in the application, unless all parties agree to a different correspondence address.”
Key points to remember:
- Correspondence is typically sent to the attorney or agent if one is involved.
- If multiple attorneys are prosecuting, the first-named attorney receives correspondence unless otherwise agreed.
- Each attorney or agent must indicate whom they represent in subsequent papers.
- All parties involved must sign replies to the USPTO.
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The processing of a pre-AIA 37 CFR 1.47 application involves several steps:
- A filing date is assigned if the application meets the requirements of 37 CFR 1.53(b).
- A filing receipt is sent to the applicant.
- The application or an electronic message about the petition is forwarded to the Office of Petitions.
- If the papers are found acceptable, the Office of Petitions enters a decision in the file.
- A notice is published in the Official Gazette with application details.
- The USPTO notifies the nonsigning inventor(s) or legal representative(s) by letter.
As stated in the MPEP, When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).
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In international patent applications, a common representative can be appointed in several ways. According to MPEP 402.09 and 37 CFR 1.455(b):
Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
If no specific appointment is made and there are multiple applicants, the first named applicant who is entitled to file with the U.S. Receiving Office is considered the common representative by default, as stated in 37 CFR 1.455(a).
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When a practitioner withdraws and the correspondence address will change as a result, the withdrawing practitioner(s) must request that the USPTO direct all future correspondence to one of the following:
- The first named inventor or assignee that has properly made itself of record (for applications filed before September 16, 2012)
- The applicant (for applications filed on or after September 16, 2012)
- The assignee of record (for proceedings involving issued patents)
Practitioners can specify either the correspondence address or the address associated with the Customer Number of the appropriate party. It’s important to note that withdrawing practitioners cannot change the correspondence address to another law firm’s Customer Number or any other address except those mentioned above.
This ensures that the patent application or proceeding remains properly managed after the practitioner’s withdrawal.
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The USPTO has specific methods to verify the authenticity of S-signatures:
- Comparison with other documents: The USPTO may compare the S-signature with other signatures from the same person in their records.
- Certification statement: MPEP 402.03 states: ‘The person inserting a permanent S-signature must present a statement certifying that the inserted signature is his or her own signature.’
- Audit trail: Electronic filing systems may maintain an audit trail of who submitted the document.
- Additional verification: In case of doubt, the USPTO may request additional verification or clarification.
While the USPTO generally presumes the authenticity of signatures, it’s crucial to ensure all S-signatures are genuine and properly certified to avoid potential legal issues.
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According to MPEP 406, the USPTO follows a specific procedure to notify client-applicants:
‘The Office of Enrollment and Discipline will notify the client-applicant of the availability of a list of patent practitioners who may be available to represent the client-applicant.’
This notification ensures that the client-applicant is aware of the situation and has resources to find new representation if needed.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on USPTO notification, visit: USPTO notification.
How does the USPTO notify applicants of their practitioner’s suspension or exclusion?
The USPTO has a specific process for notifying applicants when their patent practitioner has been suspended or excluded. The MPEP 407 outlines this process:
“The OED Director will… notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner. The notification will be sent to the address of record in the application.”
This notification serves several purposes:
- Informs the applicant of their practitioner’s status change
- Advises the applicant of the practitioner’s limited recognition period
- Allows the applicant to take necessary actions to protect their patent application
It’s crucial for applicants to promptly respond to such notifications to ensure their patent applications are not adversely affected by their practitioner’s disciplinary status.
For more information on USPTO notification, visit: USPTO notification.
When an inventor is deceased, the MPEP 409.03(d) provides specific guidance:
In the case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may sign the necessary oath or declaration.
This means that:
- The legal representative of the deceased inventor can sign the required oath or declaration
- Proof of the inventor’s death and the legal representative’s authority should be provided
- The application can proceed with the legal representative acting on behalf of the deceased inventor
It’s important to note that the legal representative must have the authority to act on behalf of the deceased inventor’s estate. This typically requires documentation such as a death certificate and letters of administration or executorship.
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The USPTO has specific rules for representation by foreign attorneys or agents:
- Foreign attorneys or agents who are not registered to practice before the USPTO and do not reside in the U.S. are not permitted to represent patent applicants before the USPTO.
- There is an exception for Canadian patent agents under limited recognition.
- Applicants may be represented by a registered attorney or agent who is not residing in the United States.
According to MPEP 402.01: No attorney or agent residing in a foreign country may be registered to practice before the United States Patent and Trademark Office.
This emphasizes the importance of proper registration and residency for patent practitioners.
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The USPTO has specific guidelines for handling proof of refusal from a non-signing inventor. According to MPEP 409.03(d):
In the case of refusal, the proof that a bona fide attempt was made to present a copy of the application papers to the non-signing inventor for signature, but the inventor refused to sign the papers, must be submitted.
To demonstrate proof of refusal, an applicant should:
- Provide evidence of attempts to present the application to the inventor
- Document the inventor’s explicit refusal to sign
- Include any communication or statements from the inventor indicating refusal
- Submit an affidavit or declaration detailing the refusal circumstances
The USPTO will review this evidence to determine if it constitutes a valid proof of refusal.
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How does the USPTO handle proof of proprietary interest for deceased inventors?
The USPTO has specific provisions for handling proof of proprietary interest when an inventor is deceased. According to MPEP 409.03(f):
‘In the case of a deceased inventor, the proof of proprietary interest must be signed by the legal representative (executor, administrator, etc.) of the deceased inventor’s estate.’
This means that:
- The legal representative of the deceased inventor’s estate must provide the necessary documentation.
- This could be an executor or administrator appointed by the court.
- The proof should demonstrate that the legal representative has the authority to act on behalf of the deceased inventor’s estate in matters related to the patent application.
It’s important to note that the USPTO requires proper documentation to ensure that the rights of the deceased inventor are properly represented and that the application is prosecuted by those with legitimate authority to do so.
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The USPTO takes specific actions regarding powers of attorney granted to suspended or excluded practitioners. According to MPEP 407:
The Office of Enrollment and Discipline (OED) Director will contact the Director of the Technology Center (TC) managing the application when a practitioner has been suspended or excluded from practice. The OED Director will request that the TC Director review a pending application to determine whether the practitioner has been granted a power of attorney. If the suspended or excluded practitioner was given a power of attorney, the TC Director will notify the applicant and request a new power of attorney.
The process typically involves:
- Identification of affected applications by the OED Director
- Review of power of attorney status by the TC Director
- Notification to the applicant if a power of attorney exists
- Request for a new power of attorney from the applicant
- Potential application abandonment if no response is received within 30 days
For more information on power of attorney, visit: power of attorney.
How does the USPTO handle patent applications when an inventor is legally incapacitated?
The USPTO has provisions for handling patent applications when an inventor is legally incapacitated. The MPEP 409.03(b) states:
“If a person is legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
In these cases:
- The legal guardian or conservator acts on behalf of the incapacitated inventor
- They must provide proof of their legal authority to represent the incapacitated inventor
- The guardian or conservator executes the necessary oath or declaration
- They handle all aspects of the patent application process on behalf of the inventor
This approach ensures that the intellectual property rights of legally incapacitated inventors are protected and that their inventions can still be patented.
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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.”
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When multiple correspondence addresses are provided, the USPTO has a specific process for selection. According to 37 CFR 1.33(a):
“If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.”
This means that the USPTO will choose one address for all official communications, with a preference for Customer Number addresses if provided. Applicants should be aware of this to ensure they provide the most appropriate address for correspondence.
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How does the USPTO handle interviews for applications with multiple practitioners of record?
The USPTO has specific guidelines for handling interviews when multiple practitioners are of record for a patent application. MPEP 408 provides guidance on this situation:
‘Where a registered practitioner has been given a power of attorney or authorization of agent, only that practitioner, a practitioner appointed in an associate power of attorney or authorization of agent, or another registered practitioner who has the permission of one of the aforementioned practitioners may conduct an interview.’
This means that when multiple practitioners are of record, any one of them can conduct the interview. However, it’s important to note that clear communication between the practitioners is crucial to ensure consistent representation of the applicant’s interests. The USPTO typically communicates with the practitioner who initiated the interview or the one designated as the primary contact for the application.
For more information on patent examination, visit: patent examination.
For more information on power of attorney, visit: power of attorney.
How does the USPTO handle inequitable conduct in patent applications?
The USPTO takes inequitable conduct in patent applications very seriously. According to MPEP 410:
“[T]he Office will consider equitable and public policy principles in assessing whether to issue a patent to an applicant who has engaged in inequitable conduct.”
Inequitable conduct typically involves:
- Failure to disclose material information
- Submitting false material information
- Intentional misrepresentation of facts
If inequitable conduct is found, the consequences may include:
- Rejection of the patent application
- Invalidation of an issued patent
- Disciplinary action against registered practitioners
The USPTO may also refer cases of suspected fraud to the U.S. Department of Justice for potential criminal prosecution. It’s crucial for applicants and their representatives to maintain honesty and transparency throughout the patent application process.
For more information on fraud, visit: fraud.
For more information on USPTO, visit: USPTO.
How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?
When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:
- The correspondence address in the ADS takes precedence if filed with the initial application papers.
- A customer number provided in a single paper with a clear power of attorney overrides the ADS.
- If no power of attorney is filed, the correspondence address in the ADS is used.
The MPEP states:
Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record.
(MPEP 403)
It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.
For more information on application data sheet, visit: application data sheet.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO, visit: USPTO.
In a Pre-AIA 37 CFR 1.47 application, the USPTO follows specific procedures for handling correspondence. According to MPEP 409.03(j):
‘The Notice of Acceptance under 37 CFR 1.47 should remind the applicant that the nonsigning inventor has access to the application papers. Applicant may petition under 37 CFR 1.14(e) for access restriction. See MPEP § 104.’
This means that:
- The USPTO will send a Notice of Acceptance to the applicant.
- The non-signing inventor has the right to access application papers.
- The applicant can petition for access restriction if necessary.
- Regular correspondence will be sent to the applicant or their representative.
It’s important to note that while the application is prosecuted by the applicant under 37 CFR 1.47, the non-signing inventor retains certain rights, including access to the application file.
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How does the USPTO handle correspondence if no practitioner is of record in a patent application?
When no practitioner is of record in a patent application, the USPTO follows specific procedures for handling correspondence. Here’s what you need to know:
- Correspondence is sent to the applicant’s correspondence address
- The address used is the one shown in the application or the Patent Application Locating and Monitoring (PALM) system
- It’s crucial for applicants to keep their correspondence information up to date
As stated in MPEP 403.01(a): ‘If a practitioner is not of record, correspondence will be sent to the applicant’s correspondence address as shown in the application or the Patent Application Locating and Monitoring (PALM) system.’
This policy ensures that even without a practitioner of record, the USPTO can maintain communication with the applicant. It’s important for applicants to regularly check and update their correspondence information to avoid missing critical communications from the USPTO.
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How does the USPTO handle correspondence from multiple patent practitioners?
When multiple patent practitioners are involved in an application, the USPTO has specific rules for handling correspondence. MPEP 403.01(a) states: Where more than one practitioner is of record in an application, the Office will direct correspondence to the practitioner first named in the request for representation unless the request for representation specifies otherwise.
This means:
- The USPTO will typically communicate with the first-named practitioner.
- Applicants can specify a different practitioner for correspondence if desired.
- All practitioners of record have the authority to act on behalf of the applicant.
It’s important for the applicant and all involved practitioners to clearly communicate their roles and preferences for correspondence to ensure smooth communication with the USPTO. For more information on correspondence procedures, visit the USPTO’s MPEP 403 page.
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How does the USPTO handle correspondence from multiple attorneys in a patent application?
The USPTO has specific guidelines for handling correspondence from multiple attorneys in a patent application:
- If multiple attorneys are listed on the Power of Attorney form, the USPTO will direct all correspondence to the first listed attorney.
- The first listed attorney is considered the ‘correspondence address’ for official communications.
- As stated in MPEP 403.01(a): ‘If more than one attorney is of record, the Office will direct correspondence to the first listed attorney in the Power of Attorney.’
- Other listed attorneys can still communicate with the USPTO, but official correspondence will be sent to the designated address.
This approach ensures clear communication channels and prevents confusion in multi-attorney cases.
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For juristic entities (e.g., corporations, organizations), the USPTO has specific requirements for correspondence and signatures. According to 37 CFR 1.33(b)(3):
Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
This means that:
- A juristic entity must prosecute a patent application through a registered patent practitioner.
- All correspondence, amendments, and other papers must be signed by a patent practitioner on behalf of the juristic entity.
- The juristic entity cannot directly correspond with the USPTO or sign documents without representation by a patent practitioner.
This requirement ensures that juristic entities have proper legal representation in patent matters, which can be complex and have significant legal implications.
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How does the USPTO handle correspondence for applications with multiple attorneys or agents?
When an application has multiple attorneys or agents of record, the USPTO follows specific guidelines for correspondence:
- The USPTO will direct all correspondence to the first named attorney or agent of record, unless otherwise specified.
- If a customer number is provided, correspondence will be sent to the address associated with that customer number.
- Applicants can designate one or more attorneys or agents to receive correspondence by filing a power of attorney or including the information in an application data sheet.
As stated in the MPEP:
If applicant provides, in a single paper, a list of patent practitioners and a correspondence address without also filing a clear power of attorney to a patent practitioner, the Office will direct all correspondence to the correspondence address pursuant to 37 CFR 1.33(a).
(MPEP 403)
It’s important to clearly designate correspondence preferences to ensure proper communication with the USPTO.
For more information on patent agents, visit: patent agents.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO correspondence, visit: USPTO correspondence.
How does the USPTO handle correspondence for applications with multiple applicants?
The USPTO has specific rules for handling correspondence in applications with multiple applicants:
- For applications filed on or after September 16, 2012, the USPTO will direct correspondence to the first named applicant, unless a practitioner is appointed.
- For applications filed before September 16, 2012, correspondence is sent to the first named inventor, unless a practitioner is of record.
As stated in MPEP 403: ‘Where more than one attorney or agent is of record, the Office will direct correspondence to the first named attorney or agent of record, unless otherwise requested.’ This ensures clear communication channels for multi-applicant applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.
How does the USPTO handle conflicting powers of attorney in a patent application?
When conflicting powers of attorney are submitted in a patent application, the USPTO follows specific procedures to resolve the conflict. According to MPEP 402.10:
Where a written power of attorney is submitted in an application without the signature of one or more inventors or assignees, the power of attorney is not accepted until either (1) the nonsigning inventor or assignee provides a power of attorney consistent with the power of attorney provided by the other parties, or (2) the nonsigning inventor or assignee is removed from the application.
In practice, this means:
- The USPTO will not accept a power of attorney unless it is signed by all parties or consistent with previously filed powers.
- If conflicting powers are received, the Office will contact the applicants to resolve the discrepancy.
- The application may be delayed until the conflict is resolved.
- In some cases, the nonsigning inventor or assignee may need to be removed from the application for prosecution to proceed.
It’s crucial for applicants to coordinate and agree on representation to avoid such conflicts and potential delays in the patent application process.
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How does the USPTO handle conflicting instructions from multiple representatives?
When multiple representatives are authorized to act on behalf of an applicant or assignee, conflicts may arise if they provide contradictory instructions. The USPTO has a clear procedure for handling such situations. According to MPEP 402.04, “Where an applicant is represented by more than one practitioner, the Office will direct all communications to the first named representative (the representative of record) in absence of a request to the contrary or in absence of revocation of power of attorney.” This means that if conflicting instructions are received, the USPTO will generally follow the guidance provided by the representative of record, ensuring a clear line of communication and decision-making.
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The USPTO handles confidentiality in 37 CFR 1.47(a) petitions with care, recognizing the sensitive nature of the information provided. The MPEP 409.03(b) states:
‘Petitions under 37 CFR 1.47 are not available to the public since they are contained in the application file… The petition will be available to the nonsigning inventor upon request.’
This means:
- Petition documents are kept confidential as part of the non-public application file.
- The general public cannot access these petitions.
- The nonsigning inventor has the right to request and view the petition.
- The USPTO balances the need for transparency with the protection of potentially sensitive information.
Applicants should be aware that while the petition is generally confidential, the nonsigning inventor may still access it, which could affect strategies for presenting information in the petition.
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After an attorney withdraws from a patent application, the USPTO adjusts its communication process as follows:
- The Office communicates directly with the applicant or assignee.
- This direct communication continues until a new registered patent practitioner is appointed.
- The applicant or assignee who originally appointed the withdrawing attorney becomes the point of contact for all purposes in the application.
According to MPEP 402.06: ‘For applications in which the attorney or agent has withdrawn from representation, the Office will communicate directly with the applicant … until such time as a new attorney or agent is appointed.’
It’s crucial for applicants to stay responsive and consider appointing new representation promptly to ensure smooth prosecution of their patent application.
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The USPTO has specific procedures for handling changes in power of attorney and correspondence address. According to MPEP 403:
‘A new power of attorney or change of correspondence address filed in a patent application or patent does not change the correspondence address for any other application or patent.’
Key points to remember:
- Each application or patent is treated separately.
- A change in one application doesn’t automatically apply to others, even if filed by the same applicant or assignee.
- To change multiple applications, you must file separate requests for each one.
- Using a customer number can simplify this process for multiple applications.
It’s crucial to ensure that any changes are properly filed and recorded to maintain effective communication with the USPTO.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
How does the USPTO handle applications filed before September 16, 2012?
Applications filed before September 16, 2012, are subject to different correspondence rules. As stated in MPEP 403.01(a): For applications filed before September 16, 2012, pre-AIA 37 CFR 1.33(a) applies.
This means that for these older applications, the correspondence rules and procedures outlined in pre-AIA 37 CFR 1.33(a) are still in effect. It’s important to check the filing date of your application to determine which set of rules applies.
For more detailed information on pre-AIA rules, you can refer to MPEP 403 which covers correspondence for applications filed before September 16, 2012.
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The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution.
When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.
To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
The USPTO determines the correspondence address based on the most recent information provided. According to MPEP 403.02:
“If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record.”
This means that the USPTO will use the most recently provided correspondence address, regardless of which practitioner it is associated with. This practice is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets. It’s crucial for applicants and practitioners to keep the correspondence address up to date to ensure proper communication with the USPTO.
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How does the USPTO define ‘material information’ in patent applications?
The USPTO considers information to be material if it affects the patentability of an invention. According to MPEP 410:
“Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.”
In simpler terms, material information includes any facts that could affect the USPTO’s decision to grant a patent. This may include prior art, conflicting statements, or any other information that could impact the novelty or non-obviousness of the claimed invention.
For more information on prior art, visit: prior art.
For more information on USPTO, visit: USPTO.
When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:
- For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
- For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.
This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.
For international patent applications filed by non-inventor applicants, there are specific requirements outlined in 37 CFR 1.46(b):
If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
This means that for PCT applications entering the U.S. national stage or for international design applications, the non-inventor applicant must have been properly identified as the applicant for the United States during the international phase or in the international registration publication.
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The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:
- They maintain consistent numbering in the MPEP, aiding navigation and referencing
- They allow for future expansion of examination guidelines without major restructuring
- They serve as potential indicators of areas where the USPTO may develop new policies or procedures
Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.
The Manual of Patent Examining Procedure (MPEP) addresses the issue of unavailable joint inventors for applications filed on or after September 16, 2012, in section 409.02. This section provides guidance on how to proceed when a joint inventor is unavailable or unwilling to participate in the patent application process.
Key points from MPEP 409.02 include:
- Joint inventors must apply for a patent jointly and each must make an inventor’s oath or declaration.
- If a joint inventor refuses to join or cannot be found after diligent effort, the other joint inventor(s) may proceed with the application.
- A substitute statement can be executed in lieu of an oath or declaration from the unavailable inventor.
For applications filed before September 16, 2012, different procedures apply, which are covered in MPEP § 409.03 et seq.
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The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f):
“An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).”
This means that even if an original application has been assigned, and that assignment includes language covering continuations and divisions, it does not automatically cover a continuation-in-part application. This is because a CIP application, by definition, contains new matter not present in the original application.
When dealing with a CIP application under pre-AIA 37 CFR 1.47(b), applicants need to ensure that the assignment or proof of proprietary interest specifically covers the new matter included in the CIP. A new assignment or demonstration of proprietary interest may be necessary for the portions of the CIP that were not present in the original application.
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The death of an inventor can have significant implications for power of attorney in a patent application. According to MPEP 409.01(a):
Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of an inventor who is an applicant party terminates the power of attorney given by the deceased inventor in an application filed on or after September 16, 2012.
This means that in most cases, when an inventor who is also an applicant dies, any power of attorney they had given is automatically terminated. As a result:
- If the deceased inventor was the sole inventor-applicant, a new power of attorney is necessary.
- If all powers of attorney in the application have been terminated due to the inventor’s death, a new power of attorney is required.
- The new power of attorney must come from the heirs, administrators, executors, or assignees of the deceased inventor.
It’s important for legal representatives and other parties involved in the patent application to be aware of this and take appropriate action to ensure the application can continue to be prosecuted effectively.
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How does the AIA impact power of attorney for applications filed before September 16, 2012?
The America Invents Act (AIA) does not significantly change the power of attorney requirements for applications filed before September 16, 2012. As stated in MPEP 402.02(b):
For applications filed before September 16, 2012, all parties having the right to prosecute the application at the time of filing the power of attorney must act together in appointing a power of attorney.
This means that the pre-AIA rules continue to apply for these older applications. However, it’s important to note that any new applications filed on or after September 16, 2012, are subject to the updated AIA rules regarding power of attorney.
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How does the AIA change the process for applications with deceased or incapacitated inventors?
The America Invents Act (AIA) introduced significant changes to the patent application process, including how applications with deceased or legally incapacitated inventors are handled. According to MPEP 409.01(a):
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent.”
Key changes under the AIA include:
- Allowing assignees or those with sufficient proprietary interest to file applications
- Introduction of the substitute statement to replace inventor oaths in certain circumstances
- Simplified process for continuing prosecution when an inventor becomes unavailable
- Removal of the need for heirs or legal representatives to expressly petition to file on behalf of a deceased inventor
These changes streamline the application process and provide more flexibility when dealing with situations involving deceased or incapacitated inventors, making it easier for the remaining inventors or interested parties to pursue patent protection.
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When a power of attorney is revoked, it affects pending applications as follows:
- The revocation is effective upon receipt in the USPTO.
- It applies to all pending applications in which the attorney or agent was appointed, unless specifically limited.
- The Office will not communicate further with the revoked attorney/agent.
- The applicant must appoint a new representative or correspond directly with the Office.
As stated in MPEP 402.05: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ This means the revocation can occur at any point during the patent application process.
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When a power of attorney is revoked, it’s important to understand its impact on pending amendments in a patent application. According to MPEP 402.05:
Any amendments made in an application after the filing date of the application will not be effective to revoke a power of attorney.
This means that if an applicant submits an amendment to revoke a power of attorney after the application’s filing date, that amendment will not be effective in revoking the power of attorney. To properly revoke a power of attorney, the applicant must follow the specific procedures outlined in the MPEP, such as submitting a separate revocation document or a new power of attorney.
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MPEP 409.03(f) provides guidance on handling patent applications when an inventor is deceased or legally incapacitated. The section states:
‘When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or assignee on compliance with the foregoing provisions.’
This means that in cases of a deceased inventor, the patent can still be issued to their legal representative or assignee, provided they comply with the requirements for proving proprietary interest. For legally incapacitated inventors, similar provisions apply, allowing the legal guardian or other authorized representative to act on behalf of the inventor in patent matters.
It’s important to note that in these situations, additional documentation such as death certificates or court orders establishing legal guardianship may be required to establish the authority of the person acting on behalf of the inventor.
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MPEP 402.08 has significant implications for patent attorneys involved in derivation proceedings. The key provision states:
For patent attorneys, this means:
- Any changes in representation must go through the PTAB, not regular USPTO channels.
- There may be delays in processing power of attorney changes due to PTAB review.
- Attorneys must be prepared to justify changes in representation to the PTAB if necessary.
- The timing of representation changes may be influenced by the ongoing derivation proceeding.
Patent attorneys should be aware of these special procedures to ensure smooth transitions in representation during derivation proceedings.
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Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.
This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:
- See MPEP § 1807 for representation in international applications (PCT)
- See MPEP § 2911 for representation in international design applications
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When an inventor becomes legally incapacitated before filing a patent application and executing the required oath or declaration, a legal representative must be appointed to act on their behalf. According to 37 CFR 1.43 (pre-AIA):
“In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”
The legal representative, typically appointed by a court of competent jurisdiction, can then execute the oath or declaration and proceed with the patent application process on behalf of the incapacitated inventor.
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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.
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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:
- 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.”
- 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.”
- 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.
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How does attorney withdrawal affect the power of attorney in a patent application?
When an attorney withdraws from a patent application, it affects the power of attorney status. According to MPEP 402.06:
“The Office will not remove the names of practitioners who have been granted a power of attorney or authorization of agent from the list of practitioners of record at the request of the practitioner filing the withdrawal.”
This means that even after withdrawal, the attorney’s name may remain on record unless specific actions are taken. However, the withdrawn attorney no longer has the authority to act on behalf of the application. To fully revoke the power of attorney, the applicant must file a revocation and/or new power of attorney. It’s crucial for applicants to update their power of attorney promptly after an attorney’s withdrawal to ensure proper representation and communication with the USPTO.
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How does attorney withdrawal affect pending patent applications?
When an attorney withdraws from representation in a pending patent application, it can have several implications:
- The applicant becomes responsible for prosecuting the application.
- Official correspondence will be sent directly to the applicant.
- Deadlines and response periods remain in effect.
- The applicant may need to find new representation quickly.
According to MPEP 402.06:
“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”
It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.
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How does an attorney or agent officially withdraw from a patent application?
To officially withdraw from a patent application, an attorney or agent must follow these steps:
- Submit a request to withdraw as attorney or agent of record.
- The request must be signed by the attorney or agent of record.
- Include the application number and filing date.
- Provide the names of the inventors and assignee (if applicable).
- State the reason for withdrawal.
The MPEP 402.06 states: ‘When an attorney or agent of record in an application withdraws… the Office of Enrollment and Discipline should be notified by the withdrawing attorney or agent.’ This notification ensures proper processing of the withdrawal request.
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How does an assignee become of record in a patent application?
An assignee must become of record in a patent application before they can revoke the power of attorney given by the applicant. According to MPEP 402.07, this process involves:
- Filing a statement under 37 CFR 3.73(c)
- Complying with the requirements of 37 CFR 3.71
The MPEP states:
“The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”
This typically involves submitting documentary evidence of the chain of title from the original owner to the assignee, such as assignment documents. Once the USPTO recognizes the assignee as the owner of record, they can proceed with revoking the existing power of attorney and appointing a new one.
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To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:
- Show that the invention has been assigned to the applicant
- Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
- Otherwise demonstrate a proprietary interest in the subject matter of the application
The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”
For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).
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Adding an inventor to a patent application can affect an existing power of attorney under certain circumstances. According to MPEP 402.05(a):
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.
This means that if a new inventor is added to the application and does not provide a power of attorney that matches the existing one, the original power of attorney will be lost when the request to add the inventor is granted. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34 if applicable.
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Adding an inventor to a patent application can potentially affect an existing power of attorney. According to MPEP 402.02(a):
“If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.”
This means that if a new inventor is added to the application and does not provide a power of attorney consistent with the existing one, the original power of attorney will be lost. However, this provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable.
It’s important for applicants and practitioners to be aware of this potential consequence when adding inventors to an application, and to take appropriate steps to maintain or reestablish the desired power of attorney.
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The rules for acting in a representative capacity differ slightly for applications filed before and after September 16, 2012. According to MPEP 402.04:
For applications filed on or after September 16, 2012:
A patent practitioner acting in a representative capacity must submit papers on behalf of all parties identified as the applicant. They cannot represent only some of the applicant parties.
For applications filed before September 16, 2012:
A patent practitioner may act in a representative capacity on behalf of:
- The applicant, or
- The assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73
Additionally, for pre-September 16, 2012 applications, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- An executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed, and
- The patent practitioner was named in the application transmittal papers.
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In pre-AIA patent applications (filed before September 16, 2012), a power of attorney given by the assignee of the entire interest has significant implications for previous powers of attorney. As stated in the MPEP:
A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b).
This means that when the assignee of the entire interest files a new power of attorney, it effectively cancels all previous powers of attorney given by the applicant or any prior assignees. However, the assignee must properly establish their right to take action in the application according to the relevant regulations.
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To show ‘sufficient proprietary interest’ for filing a patent application, an individual or entity must demonstrate a significant legal or equitable interest in the invention. According to MPEP 409.05:
Quote: ‘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.’
To establish sufficient proprietary interest, the applicant must:
- Provide proof of the relevant facts demonstrating their interest in the invention
- Show that filing the application is necessary to preserve the rights of all parties involved
- Submit a petition under 37 CFR 1.46 to the Office of Petitions
The Director of the USPTO will then determine if the evidence sufficiently demonstrates proprietary interest.
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If an inventor becomes legally incapacitated after signing the oath or declaration, the application can still proceed. According to MPEP 409.01:
If an inventor who executed the oath or declaration becomes legally incapacitated after the application is filed but before the patent issues, no substitute oath or declaration is required.
This means that the previously signed oath or declaration remains valid, and the application can continue through the patent process without requiring additional documentation regarding the inventor’s incapacitation.
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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.
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How do I update the list of practitioners associated with a Customer Number?
To update the list of practitioners associated with a Customer Number, follow these steps:
- Complete the Change of Correspondence Address Form (PTO/SB/122)
- Provide the Customer Number and the updated list of registered practitioners
- Submit the form to the USPTO
The MPEP 403 specifies:
‘A request to change the correspondence address or list of registered practitioners associated with a Customer Number must be made in writing.’
It’s important to note that:
- Only registered practitioners can be added to a Customer Number
- Changes will affect all applications associated with the Customer Number
- The USPTO recommends using the online Electronic Business Center (EBC) for faster processing
Keeping the practitioner list up-to-date ensures proper communication and representation for all linked patent applications.
For more information on Customer Number, visit: Customer Number.
For more information on USPTO correspondence, visit: USPTO correspondence.
When filing a patent application, you must specify a correspondence address in one of two ways:
- In an application data sheet (ADS) under 37 CFR 1.76, or
- Elsewhere in the application papers in a clearly identifiable manner
As stated in 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 will be used by the USPTO to send all official communications regarding your application.
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To revoke a power of attorney in a patent application:
- The applicant or assignee of the entire interest must submit a revocation signed by them.
- The revocation should be submitted to the USPTO in writing.
- It can be done by filing a new power of attorney (Form PTO/AIA/82) and checking the revocation box.
- Alternatively, you can submit a document specifically revoking the previous power of attorney.
As stated in the MPEP 402: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ It’s important to note that revoking a power of attorney does not remove attorneys from the list of patent practitioners associated with an application. To do that, you must file a separate request.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
To prove an invention has been assigned in a pre-AIA 37 CFR 1.47(b) application, you must submit the following:
- A copy of the assignment in English
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
According to MPEP 409.03(f):
“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. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324).”
It’s important to note that the assignment must specifically cover the invention described in the application. General assignments may not be sufficient.
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Joint inventors who are the applicant can appoint a power of attorney in a patent application using Form PTO/AIA/81. This form allows joint inventors to give one or more joint inventor-applicants the power of attorney to sign on behalf of all joint inventor-applicants.
According to the MPEP:
“Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by ‘the applicant,’ all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney.”
For example, if there are four joint inventors (A, B, C, and D) who are all applicants, and they wish to appoint inventor-applicant C as having power of attorney, all four inventors (A, B, C, and D) must sign the power of attorney form appointing C.
It’s important to note that all joint inventor-applicants must sign the power of attorney, even those who are being given the power to act on behalf of the others.
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How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
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How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
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.
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To prove that a joint inventor cannot be found or refuses to sign the patent application, you must provide evidence of your diligent efforts. According to MPEP 409.03(a):
“The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers.”
For specific guidance on what constitutes acceptable proof, refer to MPEP 409.03(d). This may include documented attempts to contact the inventor, returned mail, or written statements from the unavailable inventor indicating their refusal to sign.
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The USPTO provides several ways to find a registered patent attorney or agent, as mentioned in MPEP 401:
- Visit the USPTO website: www.uspto.gov/FindPatentAttorney for a searchable listing of registered practitioners.
- Write to the Office of Enrollment and Discipline (OED) to request a list of registered patent practitioners in your area:
Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
These resources can help you locate a qualified patent professional to assist with your patent application.
How can I change the correspondence address for multiple patent applications?
Changing the correspondence address for multiple patent applications can be efficiently done using the USPTO’s Customer Number practice. Here’s how:
- Obtain a customer number if you don’t already have one.
- Associate your patent applications with the customer number.
- Update the address linked to the customer number.
The MPEP explains:
A Customer Number may be used to: … (2) change the correspondence address, fee address, or list of practitioners of record for a plurality of applications or patents through a single request.
(MPEP 403)
This process eliminates the need to file separate change of address forms for each application, saving time and reducing the risk of errors. To make changes, use the USPTO’s Electronic Filing System (EFS-Web) or file a written request with the USPTO.
For more information on Customer Number, visit: Customer Number.
Applicants can find a new registered patent attorney or agent through resources provided by the USPTO. According to MPEP § 407: “Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO website, https://oedci.uspto.gov/OEDCI/, or by calling the Office of Enrollment and Discipline at (571) 272-4097.” These resources allow applicants to search for qualified practitioners who can represent them before the USPTO.
For more information on USPTO Resources, visit: USPTO Resources.
When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:
- Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
- Calling the Office of Enrollment and Discipline at (571) 272-4097
This information is provided in Form Paragraph 4.07 of MPEP § 407.
An heir of a deceased inventor can file a patent application under certain conditions. The MPEP 409.01(b) states:
If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or heirs of the deceased inventor.
To file the application, the heir should:
- Obtain legal recognition as the heir or legal representative
- File the application on behalf of the deceased inventor
- Provide documentation proving their status as heir or legal representative
- Complete the necessary oath or declaration
It’s advisable to consult with a patent attorney to ensure all legal requirements are met.
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An attorney or agent who has been given power of attorney can withdraw by submitting a request to the USPTO. According to MPEP 402.06:
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“A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director.”
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The request should briefly state the reason(s) for withdrawal. If based on issues like lack of compensation, it’s recommended to cite “irreconcilable differences” to maintain client confidentiality. The withdrawal is effective when approved by the USPTO, not when received.
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Practitioners must take steps to protect the client’s interests when withdrawing, such as giving reasonable notice and allowing time to hire new counsel. The Request for Withdrawal As Attorney or Agent form (PTO/AIA/83) can be used.
For more information on patent representation, visit: patent representation.
For more information on power of attorney, visit: power of attorney.
How can an associate power of attorney be given in applications filed before September 16, 2012?
For applications filed before September 16, 2012, an associate power of attorney can be given by a principal attorney or agent to one or more associate attorneys or agents. According to MPEP 402.02(b):
“For applications filed before September 16, 2012, a power of attorney may be given to one or more attorneys or agents. (37 CFR 1.32(c)(1)). A principal attorney or agent may appoint an associate attorney or agent.”
The associate power of attorney must be signed by the principal attorney or agent who was appointed in the application. It’s important to note that the associate power does not have to be approved by the Office and becomes effective upon submission.
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For applications filed on or after September 16, 2012, an assignee must first become the applicant under 37 CFR 1.46(c) to revoke a previously given power of attorney and/or grant a new one. This is because, as stated in the MPEP, any power of attorney must be signed by the applicant or patent owner
. The process involves:
- The assignee becoming the applicant
- Revoking the previous power of attorney
- Granting a new power of attorney
For more details on establishing the right of an assignee to take action, refer to MPEP § 325.
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For applications filed on or after September 16, 2012:
- The other joint inventor(s) may file the application on behalf of themselves and the non-signing inventor.
- A substitute statement can be filed in lieu of an oath or declaration for the non-signing inventor.
As stated in MPEP § 409.02: “If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor.”
For more information on substitute statement, visit: substitute statement.
How can an applicant revoke a power of attorney?
An applicant can revoke a power of attorney by submitting a new power of attorney (Form AIA/82 for applications filed on or after September 16, 2012, or Form PTO/SB/80 for applications filed before September 16, 2012) or by submitting a revocation signed by the applicant. As stated in the MPEP:
“A power of attorney may be revoked at any stage in the proceedings of a case, and an applicant may appoint a new attorney or agent at any stage in the proceedings of the case by filing a new power of attorney.” (MPEP 402)
It’s important to note that the revocation should be clear and unambiguous, and it should be submitted to the USPTO for proper processing.
For more information on power of attorney, visit: power of attorney.
For more information on revocation, visit: revocation.
For patent applications filed before September 16, 2012, an applicant can revoke a power of attorney using Form PTO/SB/81. According to MPEP 402.05(b), “Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012.” The revocation can be done at any stage of the proceedings by an applicant for patent or an assignee of the entire interest of the applicant.
It’s important to note that fewer than all of the applicants or assignees may revoke the power of attorney only upon showing sufficient cause and paying a petition fee. The patent practitioner will be notified of the revocation, and the notice will be mailed to the correspondence address for the application in effect before the revocation.
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How can an applicant revoke a power of attorney filed on or after September 16, 2012?
An applicant can revoke a power of attorney filed on or after September 16, 2012, by following these steps:
- Submit a new power of attorney (Form AIA/82 or equivalent) that is properly executed by the applicant.
- File a revocation of the previous power of attorney. This can be done using the revocation form PTO/AIA/82A or by submitting a clear instruction to revoke the previous power of attorney.
According to MPEP 402.02(a):
“The power of attorney may be revoked by filing a revocation of power of attorney. The revocation may be signed by the applicant for patent (all parties identified as the applicant or invention) or the patent owner. A new power of attorney from the applicant for patent (all parties identified as the applicant) or the patent owner may also be filed, which will act as a revocation of the previous power.”
It’s important to note that the new power of attorney must be properly executed by all applicants to be effective in revoking the previous power of attorney.
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Under pre-AIA 37 CFR 1.47(b), an applicant can prove irreparable damage by providing a statement that demonstrates the necessity of a filing date. According to MPEP 409.03(g):
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
This statement should explain why obtaining a specific filing date is crucial for preserving the applicant’s rights or preventing significant harm to their interests.
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How can an applicant proceed if an inventor is deceased?
If an inventor is deceased, the applicant can proceed with the patent application by filing a petition under 37 CFR 1.47(b). The MPEP states:
“When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or heir of the inventor upon proper intervention.”
To file the petition, the applicant must:
- Submit the petition fee set forth in 37 CFR 1.17(g)
- Provide proof of the inventor’s death, such as a death certificate
- Include an oath or declaration by the legal representative or heir
The legal representative or heir should state their relationship to the deceased inventor and that they are the legal representative or heir.
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If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:
- Submitting a legal memorandum
- Providing an affidavit or declaration of firsthand knowledge
- Including copies of relevant statutes or court decisions (if non-U.S.)
MPEP 409.03(f) states:
“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”
The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.
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When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP 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.
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Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
A registered patent attorney or agent who has been given a power of attorney can withdraw as attorney or agent of record by following these steps:
- File an application for withdrawal with the USPTO Director
- Obtain approval from the Director
- Provide notice to the client
As stated in 37 CFR 1.36(b): A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent.
It’s important to note that the withdrawal is effective only when approved by the USPTO, not when the request is received.
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How can a practitioner become of record in a patent application filed on or after September 16, 2012?
A practitioner can become of record in a patent application filed on or after September 16, 2012, through the following methods:
- Filing an Application Data Sheet (ADS) that names the practitioner as the representative
- Filing a power of attorney (POA) signed by the applicant
- Filing a patent application transmittal letter signed by the applicant and naming the practitioner as a representative
- Being named as the representative in the oath or declaration
As stated in MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This allows for easier management of multiple practitioners associated with a single customer number.
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A person who shows sufficient proprietary interest in an invention can file a patent application as the applicant. According to MPEP § 409.05, such a person must submit a petition including:
- The fee set forth in 37 CFR 1.17(g)
- A showing of sufficient proprietary interest in the matter
- A statement that making the application on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The proprietary interest can be demonstrated by a legal memorandum showing that a court would likely award title of the invention to the applicant. Supporting facts and documentation should be provided.
For more information on proprietary interest, visit: proprietary interest.
A registered patent attorney or agent who has been given a power of attorney may withdraw as attorney or agent of record by submitting a request to the USPTO. The process involves:
- Filing a request for withdrawal with the USPTO
- Obtaining approval from the Director of the USPTO
- Notifying the applicant or patent owner of the withdrawal
MPEP 402.06 states: “When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request.”
The practitioner must also take steps to protect the client’s interests, such as giving reasonable notice and allowing time for the client to find new representation.
How can a legal representative file a patent application for a deceased inventor?
For patent applications filed on or after September 16, 2012, a legal representative can file a patent application for a deceased inventor by following these steps:
- Submit an Application Data Sheet (ADS) naming the deceased inventor
- Include a substitute statement in lieu of an inventor’s oath or declaration
- Provide documentation showing the legal representative’s authority to act on behalf of the deceased inventor’s estate
The MPEP states: If an inventor dies during the prosecution of an application, or before an application is filed, the legally recognized representative of the inventor may make the substitute statement.
(MPEP 409.01(a))
It’s important to note that the legal representative must have the authority to act on behalf of the deceased inventor’s estate or other legal entity holding the appropriate rights.
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How can a legal representative file a patent application for a deceased inventor after September 16, 2012?
For patent applications filed on or after September 16, 2012, a legal representative can file an application for a deceased inventor by following these steps:
- File the application normally, listing the deceased inventor
- Submit an Application Data Sheet (ADS) identifying the legal representative
- Include a substitute statement in lieu of an inventor’s oath or declaration
According to MPEP 409.01(a): “If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent as provided in 37 CFR 1.43.” The legal representative must provide documentation of their authority to act on behalf of the deceased inventor.
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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.
How can a joint inventor apply for a patent if another joint inventor is deceased or legally incapacitated?
If a joint inventor is deceased or legally incapacitated, the other joint inventor(s) can still apply for a patent by following these steps:
- File the application naming the deceased or legally incapacitated inventor
- Submit a statement identifying the unavailable inventor and their last known address
- Show that the signing inventor is obligated to assign the patent to the same entity as the unavailable inventor, or has sufficient proprietary interest
- Submit the oath or declaration by the available inventor(s)
As stated in MPEP 409.01(a): “In the case of a deceased or legally incapacitated joint inventor, the applicant should identify the unavailable inventor on an application data sheet (ADS) or a substitute statement.”
This process allows the patent application to move forward despite the unavailability of one of the joint inventors.
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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.
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When all inventors are unavailable or unwilling to sign a patent application, there are still options for filing. According to MPEP § 409.03(b) (for applications filed before September 16, 2012) and MPEP § 409.05 (for applications filed on or after September 16, 2012):
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest in the matter may file the application
In such cases, substitute statements would need to be filed in lieu of inventors’ oaths or declarations, along with the necessary petitions and evidence of the applicant’s right to file the application.
For more information on assignee applicant, visit: assignee applicant.
For more information on proprietary interest, visit: proprietary interest.
In a pre-AIA 37 CFR 1.47 application, papers filed by an inventor who did not initially join the application are handled as follows:
“Papers filed by an inventor who did not originally join in the application, and papers relating to its pre-AIA 37 CFR 1.47 status, will be placed in the file wrapper.”
This means that any documents submitted by the previously non-signing inventor, as well as any paperwork related to the application’s pre-AIA 37 CFR 1.47 status, are included in the official application file for record-keeping and potential future reference.
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The USPTO accepts handwritten signatures in patent applications, but they must meet specific requirements:
- The signature must be personally applied by the signer.
- It can be in permanent dark ink or its equivalent.
- The entire signature must be contained within the signature area of the document.
According to MPEP 402.03: A handwritten signature must be personally applied by the signer. See 37 CFR 1.4(d)(1).
It’s important to note that while handwritten signatures are accepted, the USPTO encourages electronic filing and signatures for efficiency and accuracy in processing applications.
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For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.
This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.
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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.
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Pre-AIA 37 CFR 1.47 does not directly apply to deceased inventors. The MPEP clearly states: Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.
However, pre-AIA 37 CFR 1.47 does apply in cases where a known legal representative of a deceased inventor:
- Cannot be found or reached after diligent effort, or
- Refuses to make application
In such situations, the last known address of the legal representative must be provided, as per MPEP § 409.03(e).
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Can the USPTO independently verify information provided by patent applicants?
Yes, the USPTO has the authority to independently verify information provided by patent applicants. MPEP 410 states:
“The Office is not the guarantor of the accuracy, correctness or completeness of the information supplied by the applicant.”
This means that while the USPTO relies on the information provided by applicants, it may:
- Conduct its own investigations
- Request additional information or evidence
- Consult external sources to verify claims
Applicants should be aware that the USPTO can and may verify any information submitted during the patent application process. It’s crucial to provide accurate and complete information to avoid potential legal issues or loss of patent rights.
For more information on patent application information, visit: patent application information.
No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:
- A listing is available at www.uspto.gov/FindPatentAttorney
- Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)
Patent practitioners should not rely on information from reserved MPEP sections, as these sections do not contain any official guidance or information. A reserved section, such as MPEP 404, is essentially a placeholder and does not provide any substantive content. Practitioners should instead:
- Refer to active, non-reserved sections of the MPEP
- Consult the most recent USPTO guidelines and notices
- Stay updated on changes to patent laws and regulations
- Seek guidance from official USPTO sources when needed
It’s important to always use the most current and official information when dealing with patent matters.
Can one co-inventor revoke a power of attorney in a patent application?
No, a single co-inventor cannot unilaterally revoke a power of attorney in a patent application. The MPEP 402.10 states:
A power of attorney may not be revoked by less than all of the applicants or owners of the entire interest without good and sufficient reason, and the revocation must be approved by the Director.
This means that to revoke a power of attorney, all co-inventors or owners of the entire interest must agree to the revocation. If a single co-inventor wishes to revoke the power of attorney, they must provide a good and sufficient reason, and the revocation must be approved by the Director of the USPTO.
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Yes, non-US citizens, specifically nonimmigrant aliens residing in the United States, can obtain limited recognition for patent matters under certain conditions. According to MPEP 402.09 and 37 CFR 11.9(b):
A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.
However, it’s important to note that limited recognition is not granted to non-US citizens residing abroad and automatically expires upon the nonimmigrant alien’s departure from the United States.
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No, non-registered representatives should not be contacted for patent application actions, even if they appear to be authorized by the attorney or agent of record. The MPEP clearly states:
In addition, non-registered representatives of the practitioner of record should not be contacted for such actions, even if apparently authorized by the attorney or agent of record.
This restriction helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in critical communications.
Generally, the USPTO maintains only one correspondence address for each patent application. As stated in MPEP 403:
‘The Office will direct all notices, official letters, and other communications relating to the application to a single correspondence address.’
However, there are exceptions:
- Powers of attorney to different practitioners may be present in an application, but only one correspondence address is recognized.
- In reexamination proceedings, a ‘duplicate copy’ may be sent to a different address.
- Maintenance fee reminders may be sent to a ‘fee address’ that differs from the correspondence address.
It’s important to note that while multiple addresses may be associated with an application for specific purposes, the USPTO will generally communicate with only one primary correspondence address.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on USPTO, visit: USPTO.
While it’s possible to include multiple correspondence addresses for a single patent application filed after September 16, 2012, the USPTO will ultimately select only one for official use. Here’s what you need to know:
- Multiple addresses can be provided in the application
- The USPTO will choose one address as the official correspondence address
- If a Customer Number is provided, it may be given preference
- Only the selected address will receive official communications
The MPEP 403.01(a) states:
Pursuant to 37 CFR 1.33(a), if an applicant includes more than one correspondence address (37 CFR 1.33(a) ) in a patent application, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address.
To ensure clear communication, it’s best to designate a single, preferred correspondence address for your application. If you need to change this address later, you can file a request with the USPTO.
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Yes, multiple attorneys can be appointed in a patent application. According to MPEP 402.02:
More than one attorney, agent, or other party may be appointed as representative of the applicant or owner.
When appointing multiple attorneys:
- Use the appropriate power of attorney form (PTO/AIA/82 for applications filed on or after September 16, 2012, or PTO/SB/81 for earlier applications).
- List all attorneys or agents to be appointed.
- Specify if they are to act independently or as a team.
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Can limited recognition be granted to Canadian patent agents?
Yes, limited recognition can be granted to Canadian patent agents. According to MPEP 402.01: Canadian patent agents are not authorized to practice before the Office without proper recognition from the OED Director. Canadian patent agents who are registered and in good standing with the Canadian Patent Office may be granted limited recognition to represent a named applicant in a specific application if the named applicant also appoints a registered U.S. practitioner.
This provision allows Canadian patent agents to participate in specific applications, but with certain restrictions and requirements.
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Yes, individuals granted limited recognition can file certain documents in patent applications. According to the MPEP 402.01:
Persons granted limited recognition are considered practitioners under 37 CFR 11.1 and thus permitted to perform the same patent prosecution functions of registered patent agents and registered patent attorneys when prosecuting a specified patent application or specified patent applications.
Specifically, they can file:
- A power of attorney (37 CFR 1.32(b)(4))
- A document granting access to an application (37 CFR 1.14(c))
- A change of correspondence address (37 CFR 1.33(a))
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for an express abandonment (37 CFR 1.138(b))
However, it’s important to note that these individuals are still subject to the restrictions expressed in their grant, including temporal, employer, and visa limitations.
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Yes, in most cases. According to MPEP 401, “An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office.” However, there are important considerations:
- Juristic entities (e.g., companies) must be represented by a patent practitioner
- Pro se applicants are subject to the same rules and potential sanctions as represented applicants
- Lack of familiarity with patent procedures may result in missed opportunities for optimal protection
Yes, heirs can apply for a patent on behalf of a deceased inventor under certain circumstances. According to MPEP 409.01(b):
“Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.”
In such cases, the heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64. This allows heirs to proceed with the patent application process when no formal legal representative has been appointed.
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Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:
The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.
This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.
Can an inventor’s attorney conduct an interview without a power of attorney?
Yes, an inventor’s attorney can conduct an interview without a power of attorney under certain conditions. The MPEP 405 provides guidance on this matter:
Interviews may be granted to an attorney or agent who is not of record in an application if the conditions of 37 CFR 1.33(b)(3) are satisfied.
This means that if the attorney or agent complies with the requirements set forth in 37 CFR 1.33(b)(3), they can conduct an interview even without a formal power of attorney. These requirements typically include providing evidence of their authority to act on behalf of the applicant.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO procedures, visit: USPTO procedures.
No, an inventor cannot authorize another individual to act as their agent to sign the application oath or declaration on their behalf. The MPEP is clear on this point, stating: “An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf.”
This prohibition is supported by legal precedents, as the MPEP cites: “Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm’r Pat. 1973).” These cases reinforce the requirement for the inventor’s personal signature on the oath or declaration.
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Can an attorney withdraw from patent representation without client consent?
While it’s generally preferable to obtain client consent, an attorney can withdraw from patent representation without client consent under certain circumstances. However, they must still follow proper procedures and notify the USPTO. The MPEP 402.06 states:
“The requirements for withdrawal of an attorney or agent are set forth in 37 CFR 1.36. The Office of Enrollment and Discipline (OED) handles withdrawal of entire firms.”
Key points to consider:
- The attorney must provide notice to the client and the USPTO.
- Reasons for withdrawal without consent may include ethical conflicts or non-payment of fees.
- The USPTO may require the attorney to show good cause for withdrawal.
- The withdrawal should not unduly prejudice the client’s interests.
Attorneys should consult 37 CFR 1.36 and applicable state bar rules when considering withdrawal without client consent.
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Can an attorney withdraw from a patent application without the applicant’s consent?
Yes, an attorney can withdraw from a patent application without the applicant’s consent under certain circumstances. However, the withdrawal must be approved by the USPTO. The MPEP 402.06 states:
‘An attorney or agent may withdraw from representing an applicant or assignee in a patent application pending before the USPTO… When appropriate, the Office will require the applicant or assignee to revoke the previous power of attorney and appoint new attorney(s) of record.’
While the applicant’s consent is not explicitly required, the USPTO considers the following factors when deciding whether to approve a withdrawal:
- The reasons for withdrawal
- The stage of prosecution
- The potential impact on the applicant
The USPTO may deny the withdrawal if it would unduly prejudice the applicant or delay the prosecution of the application.
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Can an assignee revoke power of attorney in all types of patent applications?
An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:
“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”
This means assignees can revoke power of attorney in:
- Applications involved in interference or derivation proceedings
- National stage applications under 35 U.S.C. 371
For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.
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In general, an assignee can revoke a power of attorney in most applications. However, there is an exception for certain government-owned applications. The MPEP states:
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.
This implies that in some government-owned applications, an irrevocable right to prosecute may have been granted, which would prevent the assignee from revoking the power of attorney. If you’re dealing with a government-owned application, it’s crucial to check whether such an irrevocable right exists before attempting to revoke a power of attorney.
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Can an assignee revoke a power of attorney given by the applicant in a patent application?
Yes, an assignee can revoke a power of attorney given by the applicant in a patent application, provided certain conditions are met. According to MPEP 402.07:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner.”
This is possible when:
- The assignee has properly become of record pursuant to 37 CFR 3.71.
- The application is involved in an interference or derivation proceeding.
- The application is national stage application filed under 35 U.S.C. 371.
It’s important to note that the assignee must follow proper procedures and file the necessary documents with the USPTO to effectuate this change.
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Yes, for applications filed on or after September 16, 2012, an assignee can file a patent application as the applicant. According to MPEP § 409.05:
“An assignee or obligated assignee may file a patent application as the applicant. An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) as provided for in 37 CFR part 3 no later than the date the issue fee is paid in the application.”
However, to be the sole applicant, the assignee must have been assigned the entire interest in the application.
For more information on patent applicant, visit: patent applicant.
Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:
- The assignee must have originally appointed the withdrawing attorney or agent.
- The assignee becomes recognized by the Office for all purposes in the application.
- The assignee can sign amendments and other papers related to the prosecution.
The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’
It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.
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An assignee’s ability to appoint a power of attorney in a patent application depends on whether the assignee is the applicant. According to the MPEP:
- An assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71.
- An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c), which requires compliance with 37 CFR 3.71 and 3.73.
As stated in the MPEP, “An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71.” However, “An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73).”
It’s important to note that an assignee who is not an applicant cannot revoke or appoint a power of attorney in a patent application without first becoming the applicant.
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Can an applicant communicate directly with the USPTO if they have a registered patent attorney?
Generally, when an applicant is represented by a registered patent attorney or agent, direct communication between the applicant and the USPTO is discouraged. The USPTO has specific rules regarding this situation:
- The USPTO will communicate directly with the registered attorney or agent of record.
- Applicants should channel their communications through their appointed representative.
- Direct communication from the applicant may not be officially recognized or acted upon by the USPTO.
MPEP 403.01 clearly states: “The Office will not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director.” This policy ensures clear and efficient communication channels and prevents potential confusion or contradictory instructions. If an applicant wishes to communicate directly, they should first revoke the power of attorney or authorization of agent on record.
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Yes, an applicant can appoint two patent practitioners for the same application. However, when doing so, it’s important to specify the correspondence address. As stated in the MPEP:
“If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address.”
This ensures clear communication between the USPTO and the applicant’s representatives. For more details, refer to MPEP § 403, MPEP § 403.01(a), and MPEP § 403.01(b).
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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.
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No, a third party or its representative cannot use the provisions of 37 CFR 1.34 to conduct an interview or take other actions not specifically permitted by the rules of practice. MPEP 405 states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that attempting to use 37 CFR 1.34 for unauthorized actions could lead to disciplinary consequences for registered practitioners.
Generally, third parties are not permitted to conduct interviews or take actions in patent applications. The MPEP clearly states:
The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
This means that only authorized representatives (such as registered attorneys or agents with proper authorization) can conduct interviews or take actions on behalf of the applicant. Third parties attempting to do so may face disciplinary action, especially if they are registered practitioners.
For more information on disciplinary action, visit: disciplinary action.
For more information on patent interviews, visit: patent interviews.
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.
Yes, registered patent practitioners can file papers in patent applications and reexamination proceedings without being of record. MPEP 405 states:
Papers may be filed in patent applications and reexamination proceedings by registered attorneys or agents not of record under 37 CFR 1.34. Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the practitioner is implicitly stating they have authorization to act on behalf of the applicant, even if they are not officially recorded as the attorney or agent of record.
Yes, a pre-AIA 37 CFR 1.47 application can be published as a Statutory Invention Registration, but with a specific condition. According to the MPEP:
“An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).”
It’s important to note that this option is only available for requests filed before March 16, 2013, as the America Invents Act eliminated Statutory Invention Registrations for applications filed on or after that date.
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Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:
‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’
This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.
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The USPTO has specific rules regarding withdrawal for practitioners acting in a representative capacity under 37 CFR 1.34:
- The USPTO will not approve withdrawal requests from practitioners acting in a representative capacity.
- These practitioners are responsible for the correspondence they file in the application while acting in a representative capacity.
- There is no need for these practitioners to obtain the USPTO’s permission to withdraw from representation.
However, it’s important to note that practitioners acting in a representative capacity, like those with power of attorney, remain responsible for compliance with 37 CFR 1.56 (duty of disclosure) and 37 CFR 11.18 (signature and certification requirements) for documents they file.
This distinction ensures that practitioners understand their ongoing responsibilities even when acting in a limited representative capacity.
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Can a practitioner act on behalf of an applicant without a power of attorney?
Yes, a practitioner can act on behalf of an applicant without a power of attorney in certain circumstances. According to MPEP 402.04:
‘A practitioner may in some circumstances within the discretion of the Office act without any power of attorney or authorization of agent when it appears necessary to preserve the rights of the applicant.’
This provision allows for urgent action to be taken to protect the applicant’s interests, even if a formal power of attorney is not in place. However, it’s important to note that this is at the discretion of the USPTO and is typically limited to situations where immediate action is necessary to prevent loss of rights.
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Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:
- For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
- For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.
MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”
Can a power of attorney be revoked in applications filed before September 16, 2012?
Yes, a power of attorney can be revoked in applications filed before September 16, 2012. The MPEP 402.02(b) states:
“A power of attorney may be revoked at any stage in the proceedings of a case.”
The revocation process for pre-September 16, 2012 applications involves the following:
- The revocation must be in writing.
- It must be signed by the applicant or the assignee of the entire interest of the applicant.
- The revocation is not effective until it is accepted by the Office.
It’s important to note that revoking a power of attorney does not automatically grant power to a new attorney. A new power of attorney must be filed to appoint a new representative.
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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.
The revocation of a power of attorney must be done in writing and cannot be accomplished through informal means such as telephone or email. The MPEP 402.05 states:
A power of attorney may not be revoked by a telephone call.
While this quote specifically mentions telephone calls, the same principle applies to emails or other informal communications. To properly revoke a power of attorney, applicants must submit a written revocation document or a new power of attorney that complies with the requirements set forth in MPEP 402. This ensures that the revocation is properly documented and effective in the patent application process.
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Yes, a power of attorney can be revoked by fewer than all of the applicants, but with certain conditions. According to MPEP 402.05:
‘A power of attorney may be revoked by fewer than all of the applicants (or fewer than all patent owners in a reexamination proceeding or supplemental examination proceeding) if the power was granted by fewer than all of the applicants or patent owners.’
This means:
- If the original power of attorney was granted by all applicants, it must be revoked by all applicants.
- If the original power was granted by a subset of applicants, that same subset can revoke it.
- In cases of joint inventors, careful consideration must be given to who originally granted the power.
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No, a power of attorney cannot be partially revoked for specific patent applications. The MPEP 402.05 states:
‘A principal cannot revoke selected powers of the power of attorney while leaving other powers in effect.’
This means that when revoking a power of attorney, it must be revoked in its entirety for all applications and patents to which it was applied. If you wish to maintain representation for certain applications while revoking others, you would need to file a new power of attorney for those specific applications you want to keep under representation.
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Can a power of attorney be granted to a foreign patent attorney or agent?
In general, a power of attorney in U.S. patent applications can only be granted to practitioners who are registered to practice before the USPTO. According to MPEP 402.02:
“The Office cannot recognize more than one power of attorney in an application at any given time. However, a registered attorney or agent may be appointed in a representative capacity under 37 CFR 1.34 in addition to any power of attorney that may be in effect.”
While foreign patent attorneys or agents cannot be directly granted power of attorney, they can work with U.S. registered practitioners who can be appointed. Additionally, foreign attorneys can be recognized as representatives under 37 CFR 1.34 for limited purposes, such as filing papers or receiving Office communications.
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Can a power of attorney be granted to a foreign attorney or agent for US patent applications?
A power of attorney for US patent applications can only be granted to individuals who are registered to practice before the USPTO. Foreign attorneys or agents who are not registered with the USPTO cannot be granted power of attorney.
According to MPEP 402: “The Office cannot recognize more than one power of attorney or authorization to act in a representative capacity in a particular application or patent at any given time.” This means that only USPTO-registered practitioners can be given power of attorney.
However, foreign attorneys can work with US-registered patent practitioners who can be granted power of attorney. The foreign attorney can then collaborate with the US-registered practitioner to manage the application.
For more information on power of attorney, visit: power of attorney.
Generally, papers giving or revoking a power of attorney in an application require signatures from all applicants or owners. However, there are exceptions:
- For revocation: A petition under 37 CFR 1.36(a) with a fee and showing of sufficient cause is required.
- For appointment: A petition under 37 CFR 1.183 with a fee, demonstrating an extraordinary situation where justice requires waiver of the requirement in 37 CFR 1.32(b)(4), is necessary.
As stated in the MPEP: “Papers giving or revoking a power of attorney in an application generally require signature by all the applicants or owners of the application.”
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Yes, a petition under 37 CFR 1.47(a) can be filed for multiple unavailable inventors. The MPEP 409.03(b) states:
‘Where there are joint inventors, each nonsigning inventor must be petitioned for separately, even if more than one nonsigning inventor is unavailable.’
This means that while a single petition can cover multiple unavailable inventors, the petition must address each inventor individually, providing specific information and evidence for each one’s unavailability.
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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.
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No, a patent practitioner acting in a representative capacity cannot represent only some of the applicants in a joint application. According to MPEP 402.04, when a patent practitioner files a paper in an application filed on or after September 16, 2012, they must be submitting the paper on behalf of all parties identified as the applicant.
The MPEP explicitly states: “The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant.”
For example, if there are three joint inventors who disagree about how to proceed with the application, a patent practitioner representing only one inventor cannot file papers to the exclusion of the other joint inventors. Similarly, when there are multiple assignees identified as the applicant, a patent practitioner cannot file papers on behalf of only some of the parties.
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Yes, a registered patent practitioner who is not of record can conduct an interview if they have proper authorization from the applicant. According to MPEP 405:
Interviews may be conducted with a registered practitioner who has proper authority from the applicant, or an attorney or agent of record in the form of a power of attorney or authorization to act in a representative capacity, whether or not the practitioner has a copy of the application file.
The practitioner can show authorization by completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A) or using Form/PTO/SB/84, ‘Authorization to Act in a Representative Capacity’.
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.
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No, a patent practitioner cannot appoint a substitute to take over their cases after death. The MPEP 406 clearly states: “The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.” This means that any arrangements made by a practitioner for a substitute after their death will not be valid in the eyes of the USPTO.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO policy, visit: USPTO policy.
No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.
(MPEP 406)
Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:
Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.
This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.
For more information on patent filing, visit: patent filing.
For more information on USPTO procedures, visit: USPTO procedures.
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.
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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.
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Can a patent application be filed if the sole inventor is deceased?
Yes, a patent application can be filed even if the sole inventor is deceased. The MPEP 409.03(b) provides guidance on this situation:
“When an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative or assignee of the deceased inventor.”
In such cases, the legal representative (such as an executor or administrator of the inventor’s estate) can file the application on behalf of the deceased inventor. They must provide proof of their authority to act on behalf of the deceased inventor’s estate, typically in the form of Letters Testamentary or Letters of Administration.
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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.
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Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
No, a partial assignee cannot file a patent application as the sole applicant. The MPEP clarifies this point:
Because all parties having any portion of ownership in a patent property must act together as a composite entity in patent matters before the Office, a partial assignee (e.g., a party who owns 50% of the interest) cannot on its own file a patent application as the applicant.
This means that if multiple parties have ownership interests in the invention, they must act together to file the patent application. For more information on joint ownership, see MPEP § 301.
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A nonsigning inventor who subsequently joins an application cannot revoke or grant a power of attorney in certain situations. MPEP 402.05(a) explains:
37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
This means that if a nonsigning inventor later submits an oath or declaration in an application filed under specific circumstances (such as joint inventors, deceased or legally incapacitated inventors, or assignee filing), they cannot use this submission to revoke an existing power of attorney or grant a new one.
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In a pre-AIA 37 CFR 1.47 application, a nonsigning inventor has limited rights regarding the power of attorney. According to MPEP 402.05(b):
A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.
This means that while a nonsigning inventor can later join the application by submitting the required oath or declaration, they do not have the authority to unilaterally revoke or grant a power of attorney. Any such action would require the agreement of the original pre-AIA 37 CFR 1.47 applicant.
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Yes, a nonsigning inventor can join a pre-AIA 37 CFR 1.47 application. However, there are specific requirements and limitations to this process.
According to MPEP 409.03(i):
“A nonsigning inventor may join in a pre-AIA 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate pre-AIA 37 CFR 1.63 oath or declaration.”
It’s important to note that even if the nonsigning inventor joins the application, they have limited powers. The MPEP further states:
“Even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the 37 CFR 1.47 applicant.”
This means that while the nonsigning inventor can become part of the application, they do not gain full control over it and must still work in agreement with the original applicant.
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Can a non-inventor appoint a power of attorney in a pre-September 16, 2012 application?
Yes, under certain circumstances, a non-inventor can appoint a power of attorney in applications filed before September 16, 2012. The MPEP 402.02(b) states:
If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.
This means that a non-inventor, such as an assignee or other party with proper authority, can appoint a power of attorney if:
- No power of attorney is currently on file
- They provide proper documentation showing ownership or authority to act on behalf of all applicants
- They follow the same rules that would apply to inventors appointing a power of attorney
It’s important to note that the non-inventor must have the authority to act for all applicants, not just some of them.
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Can a non-attorney represent an applicant before the USPTO?
Yes, a non-attorney can represent an applicant before the USPTO under certain circumstances. According to MPEP 402.04, there are specific provisions for non-attorney representation:
- Patent agents: Registered patent agents who are not attorneys can represent applicants in patent matters before the USPTO.
- Limited recognition: Individuals granted limited recognition by the USPTO Director can represent applicants in specific patent matters.
- Pro se representation: Applicants can represent themselves (pro se) in their own patent applications.
However, it’s important to note that “Effective September 16, 2012, any paper submitted on behalf of a juristic entity must be signed by a patent practitioner.” This means that corporations and other non-human entities must be represented by a registered patent practitioner, who may be either a patent attorney or a patent agent.
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Yes, a new patent practitioner can be appointed after the death of the previous one. The USPTO explicitly states in Form Paragraph 4.03: A new registered attorney or agent may be appointed.
This allows the applicant or patent owner to ensure continued representation in patent matters following the death of their previous practitioner.
Can a legal representative use an S-signature for patent documents?
Yes, a legal representative can use an S-signature for patent documents, provided they meet the following requirements:
- The S-signature must be inserted between forward slash marks
- The signer’s name must be presented in printed or typed form
- The capacity of the signer must be included with the signature
The MPEP 402.03 states: ‘When an S-signature is employed in a document filed with the Office in connection with a patent or application, it must be accompanied by the printed or typed name of the signer. The number and qualification of persons required to execute a particular document are governed by the statute requiring the document and applicable regulations.’
For legal representatives, it’s crucial to include their capacity (e.g., attorney, agent) along with their S-signature to ensure compliance with USPTO requirements.
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Can a legal representative sign the oath or declaration for an unavailable joint inventor?
Yes, in certain circumstances, a legal representative can sign the oath or declaration for an unavailable joint inventor. According to MPEP 409.03(a):
‘If an inventor is deceased or legally incapacitated, the legal representative of the inventor may sign the oath or declaration as the inventor.’
The legal representative must provide proof of their authority to act on behalf of the unavailable inventor. This might include:
- Death certificate and letters testamentary for a deceased inventor
- Court order appointing a guardian for a legally incapacitated inventor
It’s important to note that this provision applies only to deceased or legally incapacitated inventors, not to those who are simply unavailable or unwilling to sign.
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Yes, a legal representative can sign patent documents on behalf of the inventor under certain circumstances. The MPEP 402.03 states:
Where a power of attorney or authorization of agent is given to a customer number, a practitioner must sign the correspondence if an applicant is to be represented.
This means that if a power of attorney has been granted, the authorized practitioner can sign documents on behalf of the inventor. However, it’s important to note that certain documents, such as the inventor’s oath or declaration, must still be signed by the inventor personally unless specific conditions are met (e.g., the inventor is deceased, legally incapacitated, or cannot be found after diligent effort).
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Can a juristic entity appoint a power of attorney in a patent application?
Yes, a juristic entity (such as a corporation or organization) can appoint a power of attorney in a patent application. However, there are specific requirements for doing so:
- The power of attorney must be signed by a person authorized to act on behalf of the juristic entity
- The person signing must have apparent authority to bind the juristic entity
The MPEP provides guidance on this matter:
A power of attorney from a juristic entity must be signed by a person authorized to act on behalf of the juristic entity. […] A power of attorney to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest of the applicant is the power of attorney of the applicant or assignee, not the power of attorney of the practitioner.
(MPEP 402.02(a))
It’s important to note that the power of attorney belongs to the juristic entity, not to the practitioner who is appointed.
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Can a juristic entity applicant sign a power of attorney form for a patent application?
No, a juristic entity applicant (such as a corporation or organization) cannot directly sign a power of attorney form for a patent application. Instead, the power of attorney must be signed by a person authorized to act on behalf of the juristic entity.
According to MPEP 402.02(a):
“A power of attorney must be signed by the applicant for patent (37 CFR 1.42) or the patent owner (for reissue applications or reexamination proceedings). A power of attorney may only be signed by the applicant for patent (37 CFR 1.42) or the patent owner of record of the entire interest or their representative. An applicant for patent that is the assignee must comply with 37 CFR 3.71 and 3.73 to establish ownership of the application.”
For juristic entity applicants, this typically means that an officer or employee of the organization who has the authority to bind the organization must sign the power of attorney. This could be a CEO, president, or other authorized representative of the company.
It’s important to note that the person signing on behalf of a juristic entity should also provide their title or position within the organization to demonstrate their authority to act on behalf of the applicant.
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Can a joint inventor apply for a patent if another joint inventor is unavailable or refuses to join?
Yes, a joint inventor can apply for a patent even if another joint inventor is unavailable or refuses to join the application. The MPEP 409 states: ‘If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor.’
The process involves:
- Filing the application on behalf of all inventors
- Submitting a petition under 37 CFR 1.45
- Providing proof of the unavailability or refusal of the non-signing inventor
- Including an oath or declaration by the participating inventor(s)
This provision ensures that the patent application process can proceed even when not all joint inventors are available or willing to participate.
For more information on joint inventors, visit: joint inventors.
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.
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Can a deceased inventor’s legal representative sign an assignment for a patent application?
Yes, a deceased inventor’s legal representative can sign an assignment for a patent application. According to MPEP 409.01(a):
“The legal representative (executor, administrator, etc.) of a deceased inventor may make an assignment of the deceased inventor’s rights in the application as well as sign the substitute statement. See MPEP § 409.01(b).”
This provision allows the legal representative to manage the deceased inventor’s intellectual property rights, including assigning those rights to other parties. It’s important to note that the legal representative must have proper authority to act on behalf of the deceased inventor’s estate, which typically requires documentation such as letters testamentary or letters of administration.
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Can a Customer Number be used for multiple patent applications?
Yes, a Customer Number can be used for multiple patent applications. This is one of the primary benefits of the Customer Number system. The MPEP 403 states:
‘The Customer Number practice permits applicants, attorneys, and agents of record to change their correspondence address for a number of applications with one request.’
This means that:
- A single Customer Number can be associated with multiple patent applications
- Changes to the correspondence address or list of registered practitioners can be made once and applied to all linked applications
- It simplifies portfolio management for applicants and law firms handling multiple patents
Using a Customer Number for multiple applications streamlines communication with the USPTO and helps ensure consistent handling of related patent matters.
For more information on Customer Number, visit: Customer Number.
Yes, a corporation can file a patent application under pre-AIA 37 CFR 1.47(b). The MPEP explicitly states that “Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration.”
Additionally, “A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf.” However, proper authorization or proof of authority may be required in such cases.
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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.
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Yes, there are significant restrictions on contacting patent practitioners who are not of record for a patent application. According to MPEP § 408, Registered attorneys or agents not of record in a patent application (i.e., there is no power of attorney present in the file that appoints the patent practitioner(s)) and acting in a representative capacity under 37 CFR 1.34 should not be contacted for restriction requirements or approval of examiner’s amendments.
This policy is in place to ensure that only properly authorized representatives are involved in making decisions about patent applications. For more information on interviews with patent practitioners not of record, refer to MPEP § 405.
Yes, there are strict restrictions on communicating with unregistered, suspended, or excluded attorneys regarding patent applications. The MPEP clearly states:
Office employees are forbidden from holding either oral or written communication with an unregistered, suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant.
This rule helps maintain the integrity of the patent application process and ensures that only qualified, registered practitioners are involved in patent-related communications with the USPTO.
Yes, there are exceptions to the requirement for all applicants to sign power of attorney documents. The MPEP provides one specific exception:
“In an application filed under pre-AIA 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who has signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183.”
This exception applies to applications filed before the America Invents Act (AIA) under specific circumstances. However, it’s important to note that this exception does not apply in all cases. The MPEP also states:
“However, in applications accepted under pre-AIA 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the application will not be granted.”
For more information on these exceptions, refer to MPEP § 402.07 and MPEP § 409.03(i).
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Yes, juristic entities (e.g., organizational assignees) must be represented by a patent practitioner. As stated in MPEP 401:
An applicant who is a juristic entity must be represented by a patent practitioner.
This requirement ensures that organizations have proper legal representation when navigating the complex patent application process. Individual inventors and joint inventors, however, may represent themselves if they choose to do so.
For more information on juristic entity, visit: juristic entity.
For more information on organizational assignee, visit: organizational assignee.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.
No, nonsigning inventors are not entitled to a hearing in pre-AIA 37 CFR 1.47 cases. This is explicitly stated in MPEP 409.03(i):
“A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972))”
This precedent, set by the case of Cogar v. Schuyler, establishes that while nonsigning inventors have certain rights, such as inspecting application papers and making their position of record, they do not have the right to a formal hearing in these cases.
Additionally, the MPEP states:
“While the U.S. Patent and Trademark Office will grant the nonsigning inventor access to the application, inter partes proceedings will not be instituted in a pre-AIA 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm’r Pat. 1955).”
This further emphasizes that while nonsigning inventors have access to application information, they cannot initiate inter partes proceedings, which would include hearings, in pre-AIA 37 CFR 1.47 cases.
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