Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

Here’s the complete FAQ:

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MPEP 104-Power to Inspect Application (1)

For patent applications filed before September 16, 2012, the rules for granting power to inspect are slightly different. According to MPEP 104:

“For applications filed prior to September 16, 2012, if an executed oath or declaration pursuant to 37 CFR 1.63 or 1.497 has been filed, no person but the applicant (any one of joint applicants), an attorney or agent of record (if a power of attorney was filed), or an assignee whose assignment is of record will be permitted to have access to the file of any pending application kept in confidence under 35 U.S.C. 122(a), except as provided for under 37 CFR 1.11, 1.14, 41.6, or 42.412.”

This means that for older applications, access is more restricted once an oath or declaration has been filed, limiting it to the applicant, attorney or agent of record, or assignee of record, unless specific exceptions apply.

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

For more information on power to inspect, visit: power to inspect.

For more information on pre-AIA applications, visit: pre-AIA applications.

MPEP 200 - Types and Status of Application; Benefit and Priority (1)

For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05:

‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.

However, it’s important to note that while the best mode requirement is not applied to benefit claims for applications filed on or after September 16, 2012 (the effective date of the AIA), it still applies to applications filed before this date. For pre-AIA applications, failure to disclose the best mode in the prior-filed application could result in the loss of the benefit claim if it is determined that the best mode was not carried forward to the later-filed application.

To learn more:

MPEP 300 - Ownership and Assignment (9)

For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways:

  • A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary, or treasurer).
  • Any person, if the submission clearly states that the person is authorized to act on behalf of the assignee.
  • A person empowered by an organizational resolution, if a copy of the resolution is submitted.

The MPEP notes: Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required. It’s important to ensure that the proper authority is established to avoid delays in patent prosecution.

For more information on assignee rights, visit: assignee rights.

For more information on authorized signatories, visit: authorized signatories.

For more information on pre-AIA applications, visit: pre-AIA applications.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

  • Signs a request for status of an application
  • Gives a power to inspect an application
  • Appoints its own registered attorney or agent to prosecute an application
  • Signs a disclaimer under 37 CFR 1.321
  • Consents to the filing of a reissue application
  • Consents to the correction of inventorship in a patent
  • Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP ยงยง 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP ยง 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP ยง 1490); consents to the filing of a reissue application (MPEP ยง 1410.01); consents to the correction of inventorship in a patent (MPEP ยง 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP ยง 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:

  • Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
  • Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).

As stated in the MPEP: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. This ensures that the assignee has the right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on pre-AIA applications, visit: pre-AIA applications.

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

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

  • The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
  • A statement affirming that the documentary evidence was or is being submitted for recordation.
  • The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to ยง 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:

  • An assignment document recorded in the USPTO
  • A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee

According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

  1. (A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
  2. (B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.

It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on chain of title, visit: chain of title.

For more information on documentary evidence, visit: documentary evidence.

For more information on pre-AIA applications, visit: pre-AIA applications.

An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:

  • Signing a reply to an Office action
  • Requesting a continued prosecution application (CPA)
  • Signing a terminal disclaimer
  • Submitting a Fee(s) Transmittal form
  • Requesting status of an application
  • Appointing a registered patent practitioner to prosecute the application
  • Granting power to inspect an application
  • Consenting to the filing of a reissue application
  • Consenting to the correction of inventorship

The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.

For more information on assignee rights, visit: assignee rights.

For more information on patent prosecution, visit: patent prosecution.

For more information on pre-AIA applications, visit: pre-AIA applications.

When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows:

  1. Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement.
  2. In each submission, the extent of the assignee’s ownership interest must be clearly stated.
  3. The USPTO needs to determine if it has obtained action by all of the right, title, and interest holders (owners).
  4. If the extent of ownership is not clearly set forth, the USPTO may refuse to accept the submission.

This is outlined in MPEP 324, section VIII, which states:

“When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners).”

The MPEP further notes: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.”

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

  1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
  2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

For pre-AIA patent applications (filed before September 16, 2012), partial assignees have specific rights and requirements when it comes to patent ownership and prosecution. According to MPEP 324:

A partial assignee is any assignee of record having less than the entire right, title and interest in the application. Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application.

This means that if there are multiple partial assignees or a combination of partial assignees and inventors, they must act together to prosecute the application. Additionally, when establishing ownership:

  • Each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b).
  • The extent of each assignee’s interest must be clearly stated.
  • The Office must be able to determine if it has obtained action by all of the right, title, and interest holders.

If the extent of ownership is not clear, the USPTO may refuse to accept the submission as an establishment of ownership interest.

For more information on joint ownership, visit: joint ownership.

For more information on partial assignees, visit: partial assignees.

For more information on pre-AIA applications, visit: pre-AIA applications.

MPEP 400 - Representative of Applicant or Owner (7)

What happens if not all inventors sign the power of attorney in a pre-September 16, 2012 application?

For applications filed before September 16, 2012, it’s crucial that all inventors who have not assigned their rights sign the power of attorney. According to MPEP 402.02(b):

If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.

If not all inventors sign, the power of attorney may be considered incomplete or invalid. In such cases, the USPTO may require a new power of attorney signed by all parties with the right to prosecute the application, or may accept communications only from the inventors themselves until the issue is resolved.

To learn more:

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:

How does the USPTO handle applications filed before September 16, 2012?

Applications filed before September 16, 2012, are subject to different correspondence rules. As stated in MPEP 403.01(a): For applications filed before September 16, 2012, pre-AIA 37 CFR 1.33(a) applies. This means that for these older applications, the correspondence rules and procedures outlined in pre-AIA 37 CFR 1.33(a) are still in effect. It’s important to check the filing date of your application to determine which set of rules applies.

For more detailed information on pre-AIA rules, you can refer to MPEP 403 which covers correspondence for applications filed before September 16, 2012.

To learn more:

How does the AIA impact power of attorney for applications filed before September 16, 2012?

The America Invents Act (AIA) does not significantly change the power of attorney requirements for applications filed before September 16, 2012. As stated in MPEP 402.02(b):

For applications filed before September 16, 2012, all parties having the right to prosecute the application at the time of filing the power of attorney must act together in appointing a power of attorney.

This means that the pre-AIA rules continue to apply for these older applications. However, it’s important to note that any new applications filed on or after September 16, 2012, are subject to the updated AIA rules regarding power of attorney.

To learn more:

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 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:

Can a non-inventor appoint a power of attorney in a pre-September 16, 2012 application?

Yes, under certain circumstances, a non-inventor can appoint a power of attorney in applications filed before September 16, 2012. The MPEP 402.02(b) states:

If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.

This means that a non-inventor, such as an assignee or other party with proper authority, can appoint a power of attorney if:

  • No power of attorney is currently on file
  • They provide proper documentation showing ownership or authority to act on behalf of all applicants
  • They follow the same rules that would apply to inventors appointing a power of attorney

It’s important to note that the non-inventor must have the authority to act for all applicants, not just some of them.

To learn more:

Patent Law (18)

For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways:

  • A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary, or treasurer).
  • Any person, if the submission clearly states that the person is authorized to act on behalf of the assignee.
  • A person empowered by an organizational resolution, if a copy of the resolution is submitted.

The MPEP notes: Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required. It’s important to ensure that the proper authority is established to avoid delays in patent prosecution.

For more information on assignee rights, visit: assignee rights.

For more information on authorized signatories, visit: authorized signatories.

For more information on pre-AIA applications, visit: pre-AIA applications.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

  • Signs a request for status of an application
  • Gives a power to inspect an application
  • Appoints its own registered attorney or agent to prosecute an application
  • Signs a disclaimer under 37 CFR 1.321
  • Consents to the filing of a reissue application
  • Consents to the correction of inventorship in a patent
  • Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP ยงยง 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP ยง 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP ยง 1490); consents to the filing of a reissue application (MPEP ยง 1410.01); consents to the correction of inventorship in a patent (MPEP ยง 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP ยง 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:

  • Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
  • Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).

As stated in the MPEP: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. This ensures that the assignee has the right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on pre-AIA applications, visit: pre-AIA applications.

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

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

  • The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
  • A statement affirming that the documentary evidence was or is being submitted for recordation.
  • The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to ยง 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:

  • An assignment document recorded in the USPTO
  • A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee

According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

  1. (A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
  2. (B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.

It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on chain of title, visit: chain of title.

For more information on documentary evidence, visit: documentary evidence.

For more information on pre-AIA applications, visit: pre-AIA applications.

What happens if not all inventors sign the power of attorney in a pre-September 16, 2012 application?

For applications filed before September 16, 2012, it’s crucial that all inventors who have not assigned their rights sign the power of attorney. According to MPEP 402.02(b):

If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.

If not all inventors sign, the power of attorney may be considered incomplete or invalid. In such cases, the USPTO may require a new power of attorney signed by all parties with the right to prosecute the application, or may accept communications only from the inventors themselves until the issue is resolved.

To learn more:

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 assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:

  • Signing a reply to an Office action
  • Requesting a continued prosecution application (CPA)
  • Signing a terminal disclaimer
  • Submitting a Fee(s) Transmittal form
  • Requesting status of an application
  • Appointing a registered patent practitioner to prosecute the application
  • Granting power to inspect an application
  • Consenting to the filing of a reissue application
  • Consenting to the correction of inventorship

The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.

For more information on assignee rights, visit: assignee rights.

For more information on patent prosecution, visit: patent prosecution.

For more information on pre-AIA applications, visit: pre-AIA applications.

When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows:

  1. Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement.
  2. In each submission, the extent of the assignee’s ownership interest must be clearly stated.
  3. The USPTO needs to determine if it has obtained action by all of the right, title, and interest holders (owners).
  4. If the extent of ownership is not clearly set forth, the USPTO may refuse to accept the submission.

This is outlined in MPEP 324, section VIII, which states:

“When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners).”

The MPEP further notes: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.”

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

  1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
  2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

How does the USPTO handle applications filed before September 16, 2012?

Applications filed before September 16, 2012, are subject to different correspondence rules. As stated in MPEP 403.01(a): For applications filed before September 16, 2012, pre-AIA 37 CFR 1.33(a) applies. This means that for these older applications, the correspondence rules and procedures outlined in pre-AIA 37 CFR 1.33(a) are still in effect. It’s important to check the filing date of your application to determine which set of rules applies.

For more detailed information on pre-AIA rules, you can refer to MPEP 403 which covers correspondence for applications filed before September 16, 2012.

To learn more:

For patent applications filed before September 16, 2012, the rules for granting power to inspect are slightly different. According to MPEP 104:

“For applications filed prior to September 16, 2012, if an executed oath or declaration pursuant to 37 CFR 1.63 or 1.497 has been filed, no person but the applicant (any one of joint applicants), an attorney or agent of record (if a power of attorney was filed), or an assignee whose assignment is of record will be permitted to have access to the file of any pending application kept in confidence under 35 U.S.C. 122(a), except as provided for under 37 CFR 1.11, 1.14, 41.6, or 42.412.”

This means that for older applications, access is more restricted once an oath or declaration has been filed, limiting it to the applicant, attorney or agent of record, or assignee of record, unless specific exceptions apply.

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

For more information on power to inspect, visit: power to inspect.

For more information on pre-AIA applications, visit: pre-AIA applications.

For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05:

‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.

However, it’s important to note that while the best mode requirement is not applied to benefit claims for applications filed on or after September 16, 2012 (the effective date of the AIA), it still applies to applications filed before this date. For pre-AIA applications, failure to disclose the best mode in the prior-filed application could result in the loss of the benefit claim if it is determined that the best mode was not carried forward to the later-filed application.

To learn more:

How does the AIA impact power of attorney for applications filed before September 16, 2012?

The America Invents Act (AIA) does not significantly change the power of attorney requirements for applications filed before September 16, 2012. As stated in MPEP 402.02(b):

For applications filed before September 16, 2012, all parties having the right to prosecute the application at the time of filing the power of attorney must act together in appointing a power of attorney.

This means that the pre-AIA rules continue to apply for these older applications. However, it’s important to note that any new applications filed on or after September 16, 2012, are subject to the updated AIA rules regarding power of attorney.

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For pre-AIA patent applications (filed before September 16, 2012), partial assignees have specific rights and requirements when it comes to patent ownership and prosecution. According to MPEP 324:

A partial assignee is any assignee of record having less than the entire right, title and interest in the application. Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application.

This means that if there are multiple partial assignees or a combination of partial assignees and inventors, they must act together to prosecute the application. Additionally, when establishing ownership:

  • Each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b).
  • The extent of each assignee’s interest must be clearly stated.
  • The Office must be able to determine if it has obtained action by all of the right, title, and interest holders.

If the extent of ownership is not clear, the USPTO may refuse to accept the submission as an establishment of ownership interest.

For more information on joint ownership, visit: joint ownership.

For more information on partial assignees, visit: partial assignees.

For more information on pre-AIA applications, visit: pre-AIA applications.

How can an associate power of attorney be given in applications filed before September 16, 2012?

For applications filed before September 16, 2012, an associate power of attorney can be given by a principal attorney or agent to one or more associate attorneys or agents. According to MPEP 402.02(b):

“For applications filed before September 16, 2012, a power of attorney may be given to one or more attorneys or agents. (37 CFR 1.32(c)(1)). A principal attorney or agent may appoint an associate attorney or agent.”

The associate power of attorney must be signed by the principal attorney or agent who was appointed in the application. It’s important to note that the associate power does not have to be approved by the Office and becomes effective upon submission.

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Can a power of attorney be revoked in applications filed before September 16, 2012?

Yes, a power of attorney can be revoked in applications filed before September 16, 2012. The MPEP 402.02(b) states:

“A power of attorney may be revoked at any stage in the proceedings of a case.”

The revocation process for pre-September 16, 2012 applications involves the following:

  • The revocation must be in writing.
  • It must be signed by the applicant or the assignee of the entire interest of the applicant.
  • The revocation is not effective until it is accepted by the Office.

It’s important to note that revoking a power of attorney does not automatically grant power to a new attorney. A new power of attorney must be filed to appoint a new representative.

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Can a non-inventor appoint a power of attorney in a pre-September 16, 2012 application?

Yes, under certain circumstances, a non-inventor can appoint a power of attorney in applications filed before September 16, 2012. The MPEP 402.02(b) states:

If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.

This means that a non-inventor, such as an assignee or other party with proper authority, can appoint a power of attorney if:

  • No power of attorney is currently on file
  • They provide proper documentation showing ownership or authority to act on behalf of all applicants
  • They follow the same rules that would apply to inventors appointing a power of attorney

It’s important to note that the non-inventor must have the authority to act for all applicants, not just some of them.

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Patent Procedure (18)

For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways:

  • A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary, or treasurer).
  • Any person, if the submission clearly states that the person is authorized to act on behalf of the assignee.
  • A person empowered by an organizational resolution, if a copy of the resolution is submitted.

The MPEP notes: Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required. It’s important to ensure that the proper authority is established to avoid delays in patent prosecution.

For more information on assignee rights, visit: assignee rights.

For more information on authorized signatories, visit: authorized signatories.

For more information on pre-AIA applications, visit: pre-AIA applications.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

  • Signs a request for status of an application
  • Gives a power to inspect an application
  • Appoints its own registered attorney or agent to prosecute an application
  • Signs a disclaimer under 37 CFR 1.321
  • Consents to the filing of a reissue application
  • Consents to the correction of inventorship in a patent
  • Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP ยงยง 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP ยง 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP ยง 1490); consents to the filing of a reissue application (MPEP ยง 1410.01); consents to the correction of inventorship in a patent (MPEP ยง 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP ยง 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:

  • Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
  • Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).

As stated in the MPEP: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. This ensures that the assignee has the right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on pre-AIA applications, visit: pre-AIA applications.

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

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

  • The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
  • A statement affirming that the documentary evidence was or is being submitted for recordation.
  • The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to ยง 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:

  • An assignment document recorded in the USPTO
  • A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee

According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

  1. (A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
  2. (B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.

It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on chain of title, visit: chain of title.

For more information on documentary evidence, visit: documentary evidence.

For more information on pre-AIA applications, visit: pre-AIA applications.

What happens if not all inventors sign the power of attorney in a pre-September 16, 2012 application?

For applications filed before September 16, 2012, it’s crucial that all inventors who have not assigned their rights sign the power of attorney. According to MPEP 402.02(b):

If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.

If not all inventors sign, the power of attorney may be considered incomplete or invalid. In such cases, the USPTO may require a new power of attorney signed by all parties with the right to prosecute the application, or may accept communications only from the inventors themselves until the issue is resolved.

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What are the requirements for a power of attorney in applications filed before September 16, 2012?

For applications filed before September 16, 2012, there are specific requirements for a valid power of attorney. According to MPEP 402.02(b):

“For applications filed before September 16, 2012, the power of attorney must be signed by (1) the applicant, where the inventor is the applicant, or (2) the assignee of the entire interest of the applicant.”

Additionally, the power of attorney must:

  • Be in writing
  • Name one or more attorneys or agents
  • Be signed by the applicant for patent (i.e., all of the inventors) or the assignee of the entire interest of the applicant

It’s important to note that for applications filed before September 16, 2012, a power of attorney may be incorporated in the oath or declaration form if the power of attorney is included in the same document.

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An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:

  • Signing a reply to an Office action
  • Requesting a continued prosecution application (CPA)
  • Signing a terminal disclaimer
  • Submitting a Fee(s) Transmittal form
  • Requesting status of an application
  • Appointing a registered patent practitioner to prosecute the application
  • Granting power to inspect an application
  • Consenting to the filing of a reissue application
  • Consenting to the correction of inventorship

The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.

For more information on assignee rights, visit: assignee rights.

For more information on patent prosecution, visit: patent prosecution.

For more information on pre-AIA applications, visit: pre-AIA applications.

When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows:

  1. Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement.
  2. In each submission, the extent of the assignee’s ownership interest must be clearly stated.
  3. The USPTO needs to determine if it has obtained action by all of the right, title, and interest holders (owners).
  4. If the extent of ownership is not clearly set forth, the USPTO may refuse to accept the submission.

This is outlined in MPEP 324, section VIII, which states:

“When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners).”

The MPEP further notes: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.”

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

  1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
  2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

How does the USPTO handle applications filed before September 16, 2012?

Applications filed before September 16, 2012, are subject to different correspondence rules. As stated in MPEP 403.01(a): For applications filed before September 16, 2012, pre-AIA 37 CFR 1.33(a) applies. This means that for these older applications, the correspondence rules and procedures outlined in pre-AIA 37 CFR 1.33(a) are still in effect. It’s important to check the filing date of your application to determine which set of rules applies.

For more detailed information on pre-AIA rules, you can refer to MPEP 403 which covers correspondence for applications filed before September 16, 2012.

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For patent applications filed before September 16, 2012, the rules for granting power to inspect are slightly different. According to MPEP 104:

“For applications filed prior to September 16, 2012, if an executed oath or declaration pursuant to 37 CFR 1.63 or 1.497 has been filed, no person but the applicant (any one of joint applicants), an attorney or agent of record (if a power of attorney was filed), or an assignee whose assignment is of record will be permitted to have access to the file of any pending application kept in confidence under 35 U.S.C. 122(a), except as provided for under 37 CFR 1.11, 1.14, 41.6, or 42.412.”

This means that for older applications, access is more restricted once an oath or declaration has been filed, limiting it to the applicant, attorney or agent of record, or assignee of record, unless specific exceptions apply.

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

For more information on power to inspect, visit: power to inspect.

For more information on pre-AIA applications, visit: pre-AIA applications.

For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05:

‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.

However, it’s important to note that while the best mode requirement is not applied to benefit claims for applications filed on or after September 16, 2012 (the effective date of the AIA), it still applies to applications filed before this date. For pre-AIA applications, failure to disclose the best mode in the prior-filed application could result in the loss of the benefit claim if it is determined that the best mode was not carried forward to the later-filed application.

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How does the AIA impact power of attorney for applications filed before September 16, 2012?

The America Invents Act (AIA) does not significantly change the power of attorney requirements for applications filed before September 16, 2012. As stated in MPEP 402.02(b):

For applications filed before September 16, 2012, all parties having the right to prosecute the application at the time of filing the power of attorney must act together in appointing a power of attorney.

This means that the pre-AIA rules continue to apply for these older applications. However, it’s important to note that any new applications filed on or after September 16, 2012, are subject to the updated AIA rules regarding power of attorney.

To learn more:

For pre-AIA patent applications (filed before September 16, 2012), partial assignees have specific rights and requirements when it comes to patent ownership and prosecution. According to MPEP 324:

A partial assignee is any assignee of record having less than the entire right, title and interest in the application. Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application.

This means that if there are multiple partial assignees or a combination of partial assignees and inventors, they must act together to prosecute the application. Additionally, when establishing ownership:

  • Each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b).
  • The extent of each assignee’s interest must be clearly stated.
  • The Office must be able to determine if it has obtained action by all of the right, title, and interest holders.

If the extent of ownership is not clear, the USPTO may refuse to accept the submission as an establishment of ownership interest.

For more information on joint ownership, visit: joint ownership.

For more information on partial assignees, visit: partial assignees.

For more information on pre-AIA applications, visit: pre-AIA applications.

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 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:

Can a non-inventor appoint a power of attorney in a pre-September 16, 2012 application?

Yes, under certain circumstances, a non-inventor can appoint a power of attorney in applications filed before September 16, 2012. The MPEP 402.02(b) states:

If no power of attorney is on file, then a party who is not an inventor, but who has given a proper showing of ownership or of authority to take action for and on behalf of all of the applicant may appoint an attorney or agent to prosecute the application, subject to the same exception noted above.

This means that a non-inventor, such as an assignee or other party with proper authority, can appoint a power of attorney if:

  • No power of attorney is currently on file
  • They provide proper documentation showing ownership or authority to act on behalf of all applicants
  • They follow the same rules that would apply to inventors appointing a power of attorney

It’s important to note that the non-inventor must have the authority to act for all applicants, not just some of them.

To learn more: