Patent Law FAQ

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 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.

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.

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)

There are two main forms that can be used to authorize a patent practitioner for an interview:

1. Applicant Initiated Interview Request Form (PTOL-413A)
2. 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.

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:

1. Filing a request for withdrawal with the USPTO
2. Obtaining approval from the Director of the USPTO
3. 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.

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.

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.

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’.

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.

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.

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.

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)

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:

1. Filing a request for withdrawal with the USPTO
2. Obtaining approval from the Director of the USPTO
3. 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.

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.

There are two main forms that can be used to authorize a patent practitioner for an interview:

1. Applicant Initiated Interview Request Form (PTOL-413A)
2. 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.

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’.

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)

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.

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.

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.

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 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.

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.

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)

There are two main forms that can be used to authorize a patent practitioner for an interview:

1. Applicant Initiated Interview Request Form (PTOL-413A)
2. 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.

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:

1. Filing a request for withdrawal with the USPTO
2. Obtaining approval from the Director of the USPTO
3. 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.

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.

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.

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’.

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.

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 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.

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.

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)

There are two main forms that can be used to authorize a patent practitioner for an interview:

1. Applicant Initiated Interview Request Form (PTOL-413A)
2. 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.

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:

1. Filing a request for withdrawal with the USPTO
2. Obtaining approval from the Director of the USPTO
3. 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.

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.

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.

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’.

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.