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 (13)
The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:
See MPEP ยง 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 ยง 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 ยง 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Unpublished patent applications are subject to confidentiality requirements under 35 U.S.C. 122(a).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 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 ยง 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 ยง 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 ยง 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.
Patent Law (13)
The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:
See MPEP ยง 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 ยง 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 ยง 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.
Patent Procedure (13)
The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:
See MPEP ยง 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 ยง 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 ยง 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.