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 200 - Types and Status of Application; Benefit and Priority (1)
Yes, an attorney or agent of record can formally abandon your patent application. MPEP 203.05 states that an application can be abandoned:
“through formal abandonment by the applicant or by the attorney or agent of record”
This means that your authorized representative has the power to formally abandon your application. However, they should only do so with your consent or under specific circumstances outlined in their agreement with you. It’s important to maintain clear communication with your patent attorney or agent regarding the status and decisions related to your application.
To learn more:
MPEP 400 - Representative of Applicant or Owner (8)
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:
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)
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.
To learn more:
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.
To learn more:
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:
nn
“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.”
nn
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.
nn
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.
To learn more:
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.
To learn more:
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.
To learn more:
MPEP 402 - Power of Attorney; Naming Representative (1)
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:
nn
“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.”
nn
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.
nn
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.
MPEP 407 - Suspended or Excluded Patent Practitioner (1)
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)
Patent Law (10)
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:
What is the difference between a power of attorney and an authorization to act in a representative capacity?
The main differences between a power of attorney and an authorization to act in a representative capacity are:
- Power of Attorney: Grants the ability to conduct all business before the USPTO on behalf of the applicant or assignee.
- Authorization to Act: Allows the practitioner to represent the applicant or assignee in a limited capacity, typically for a specific application or patent.
According to MPEP 601.02: ‘For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application.’
It’s important to note that while a power of attorney provides broader authority, an authorization to act can be sufficient for many routine patent prosecution matters.
To learn more:
To learn more:
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)
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.
To learn more:
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.
To learn more:
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:
nn
“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.”
nn
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.
nn
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.
To learn more:
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.
To learn more:
Yes, an attorney or agent of record can formally abandon your patent application. MPEP 203.05 states that an application can be abandoned:
“through formal abandonment by the applicant or by the attorney or agent of record”
This means that your authorized representative has the power to formally abandon your application. However, they should only do so with your consent or under specific circumstances outlined in their agreement with you. It’s important to maintain clear communication with your patent attorney or agent regarding the status and decisions related to your application.
To learn more:
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.
To learn more:
Patent Procedure (10)
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:
What is the difference between a power of attorney and an authorization to act in a representative capacity?
The main differences between a power of attorney and an authorization to act in a representative capacity are:
- Power of Attorney: Grants the ability to conduct all business before the USPTO on behalf of the applicant or assignee.
- Authorization to Act: Allows the practitioner to represent the applicant or assignee in a limited capacity, typically for a specific application or patent.
According to MPEP 601.02: ‘For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application.’
It’s important to note that while a power of attorney provides broader authority, an authorization to act can be sufficient for many routine patent prosecution matters.
To learn more:
To learn more:
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)
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.
To learn more:
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.
To learn more:
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:
nn
“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.”
nn
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.
nn
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.
To learn more:
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.
To learn more:
Yes, an attorney or agent of record can formally abandon your patent application. MPEP 203.05 states that an application can be abandoned:
“through formal abandonment by the applicant or by the attorney or agent of record”
This means that your authorized representative has the power to formally abandon your application. However, they should only do so with your consent or under specific circumstances outlined in their agreement with you. It’s important to maintain clear communication with your patent attorney or agent regarding the status and decisions related to your application.
To learn more:
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.
To learn more: