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 104-Power to Inspect Application (2)
- The patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495, and
- A power of attorney has not been appointed under 37 CFR 1.32.
Yes, but with limitations. According to MPEP 104:
“A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if the patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495 and a power of attorney has not been appointed under 37 CFR 1.32.”
This means that a representative can execute a power to inspect only if they were named in the initial application papers and no formal power of attorney has been filed. Once a power of attorney is filed, any previously filed power to inspect by a practitioner without power of attorney becomes ineffective.
For more information on power to inspect, visit: power to inspect.
For more information on representative capacity, visit: representative capacity.
MPEP 400 - Representative of Applicant or Owner (7)
What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?
The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.
To learn more:
When filing papers in a representative capacity, a patent practitioner must provide specific information to identify themselves and establish their authority. According to MPEP 402.04:
- Registration number
- Name
- Signature
The MPEP states: “In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.”
This requirement applies even when the practitioner is not of record in the application. It helps facilitate replies on behalf of applicants and eliminates the need for filing powers of attorney in individual applications when there are changes in law firms or corporate patent staffs.
To learn more:
Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
To learn more:
According to MPEP 402.04, there are several important documents that a person acting in a representative capacity generally cannot sign. These include:
- A power of attorney (37 CFR 1.32)
- A document granting access to an application
- A change of correspondence address
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for express abandonment without filing a continuing application (37 CFR 1.138(b))
However, there are some exceptions for applications filed on or after September 16, 2012. In these cases, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- A power of attorney has not been appointed under 37 CFR 1.32(b), and
- The patent practitioner was named in the application transmittal papers.
To learn more:
The rules for acting in a representative capacity differ slightly for applications filed before and after September 16, 2012. According to MPEP 402.04:
For applications filed on or after September 16, 2012:
A patent practitioner acting in a representative capacity must submit papers on behalf of all parties identified as the applicant. They cannot represent only some of the applicant parties.
For applications filed before September 16, 2012:
A patent practitioner may act in a representative capacity on behalf of:
- The applicant, or
- The assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73
Additionally, for pre-September 16, 2012 applications, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- An executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed, and
- The patent practitioner was named in the application transmittal papers.
To learn more:
The USPTO has specific rules regarding withdrawal for practitioners acting in a representative capacity under 37 CFR 1.34:
- The USPTO will not approve withdrawal requests from practitioners acting in a representative capacity.
- These practitioners are responsible for the correspondence they file in the application while acting in a representative capacity.
- There is no need for these practitioners to obtain the USPTO’s permission to withdraw from representation.
However, it’s important to note that practitioners acting in a representative capacity, like those with power of attorney, remain responsible for compliance with 37 CFR 1.56 (duty of disclosure) and 37 CFR 11.18 (signature and certification requirements) for documents they file.
This distinction ensures that practitioners understand their ongoing responsibilities even when acting in a limited representative capacity.
To learn more:
No, a patent practitioner acting in a representative capacity cannot represent only some of the applicants in a joint application. According to MPEP 402.04, when a patent practitioner files a paper in an application filed on or after September 16, 2012, they must be submitting the paper on behalf of all parties identified as the applicant.
The MPEP explicitly states: “The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant.”
For example, if there are three joint inventors who disagree about how to proceed with the application, a patent practitioner representing only one inventor cannot file papers to the exclusion of the other joint inventors. Similarly, when there are multiple assignees identified as the applicant, a patent practitioner cannot file papers on behalf of only some of the parties.
To learn more:
Patent Law (10)
What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?
The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.
To learn more:
When filing papers in a representative capacity, a patent practitioner must provide specific information to identify themselves and establish their authority. According to MPEP 402.04:
- Registration number
- Name
- Signature
The MPEP states: “In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.”
This requirement applies even when the practitioner is not of record in the application. It helps facilitate replies on behalf of applicants and eliminates the need for filing powers of attorney in individual applications when there are changes in law firms or corporate patent staffs.
To learn more:
Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
To learn more:
According to MPEP 402.04, there are several important documents that a person acting in a representative capacity generally cannot sign. These include:
- A power of attorney (37 CFR 1.32)
- A document granting access to an application
- A change of correspondence address
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for express abandonment without filing a continuing application (37 CFR 1.138(b))
However, there are some exceptions for applications filed on or after September 16, 2012. In these cases, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- A power of attorney has not been appointed under 37 CFR 1.32(b), and
- The patent practitioner was named in the application transmittal papers.
To learn more:
Correcting inventorship can potentially affect the power of attorney in a patent application. The MPEP states:
For applications filed on or after September 16, 2012, 37 CFR 1.32(e) provides that if the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to 37 CFR 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 37 CFR 1.48 request.
This means that if a new inventor is added and doesn’t provide a consistent power of attorney, the original power of attorney may be lost. However, the MPEP also notes, This provision does not preclude a practitioner from acting in a representative capacity pursuant to 37 CFR 1.34, if applicable.
It’s important to consider this potential consequence when correcting inventorship in applications filed on or after September 16, 2012.
To learn more:
The rules for acting in a representative capacity differ slightly for applications filed before and after September 16, 2012. According to MPEP 402.04:
For applications filed on or after September 16, 2012:
A patent practitioner acting in a representative capacity must submit papers on behalf of all parties identified as the applicant. They cannot represent only some of the applicant parties.
For applications filed before September 16, 2012:
A patent practitioner may act in a representative capacity on behalf of:
- The applicant, or
- The assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73
Additionally, for pre-September 16, 2012 applications, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- An executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed, and
- The patent practitioner was named in the application transmittal papers.
To learn more:
A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if:
- The patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495, and
- A power of attorney has not been appointed under 37 CFR 1.32.
Once a power of attorney has been filed, any previously filed power to inspect signed by a patent practitioner who does not have a power of attorney will cease to have effect.
The USPTO has specific rules regarding withdrawal for practitioners acting in a representative capacity under 37 CFR 1.34:
- The USPTO will not approve withdrawal requests from practitioners acting in a representative capacity.
- These practitioners are responsible for the correspondence they file in the application while acting in a representative capacity.
- There is no need for these practitioners to obtain the USPTO’s permission to withdraw from representation.
However, it’s important to note that practitioners acting in a representative capacity, like those with power of attorney, remain responsible for compliance with 37 CFR 1.56 (duty of disclosure) and 37 CFR 11.18 (signature and certification requirements) for documents they file.
This distinction ensures that practitioners understand their ongoing responsibilities even when acting in a limited representative capacity.
To learn more:
Yes, but with limitations. According to MPEP 104:
“A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if the patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495 and a power of attorney has not been appointed under 37 CFR 1.32.”
This means that a representative can execute a power to inspect only if they were named in the initial application papers and no formal power of attorney has been filed. Once a power of attorney is filed, any previously filed power to inspect by a practitioner without power of attorney becomes ineffective.
For more information on power to inspect, visit: power to inspect.
For more information on representative capacity, visit: representative capacity.
No, a patent practitioner acting in a representative capacity cannot represent only some of the applicants in a joint application. According to MPEP 402.04, when a patent practitioner files a paper in an application filed on or after September 16, 2012, they must be submitting the paper on behalf of all parties identified as the applicant.
The MPEP explicitly states: “The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant.”
For example, if there are three joint inventors who disagree about how to proceed with the application, a patent practitioner representing only one inventor cannot file papers to the exclusion of the other joint inventors. Similarly, when there are multiple assignees identified as the applicant, a patent practitioner cannot file papers on behalf of only some of the parties.
To learn more:
Patent Procedure (9)
What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?
The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.
To learn more:
When filing papers in a representative capacity, a patent practitioner must provide specific information to identify themselves and establish their authority. According to MPEP 402.04:
- Registration number
- Name
- Signature
The MPEP states: “In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.”
This requirement applies even when the practitioner is not of record in the application. It helps facilitate replies on behalf of applicants and eliminates the need for filing powers of attorney in individual applications when there are changes in law firms or corporate patent staffs.
To learn more:
Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
To learn more:
According to MPEP 402.04, there are several important documents that a person acting in a representative capacity generally cannot sign. These include:
- A power of attorney (37 CFR 1.32)
- A document granting access to an application
- A change of correspondence address
- A terminal disclaimer (37 CFR 1.321(b)(1))
- A request for express abandonment without filing a continuing application (37 CFR 1.138(b))
However, there are some exceptions for applications filed on or after September 16, 2012. In these cases, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- A power of attorney has not been appointed under 37 CFR 1.32(b), and
- The patent practitioner was named in the application transmittal papers.
To learn more:
Correcting inventorship can potentially affect the power of attorney in a patent application. The MPEP states:
For applications filed on or after September 16, 2012, 37 CFR 1.32(e) provides that if the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to 37 CFR 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 37 CFR 1.48 request.
This means that if a new inventor is added and doesn’t provide a consistent power of attorney, the original power of attorney may be lost. However, the MPEP also notes, This provision does not preclude a practitioner from acting in a representative capacity pursuant to 37 CFR 1.34, if applicable.
It’s important to consider this potential consequence when correcting inventorship in applications filed on or after September 16, 2012.
To learn more:
The rules for acting in a representative capacity differ slightly for applications filed before and after September 16, 2012. According to MPEP 402.04:
For applications filed on or after September 16, 2012:
A patent practitioner acting in a representative capacity must submit papers on behalf of all parties identified as the applicant. They cannot represent only some of the applicant parties.
For applications filed before September 16, 2012:
A patent practitioner may act in a representative capacity on behalf of:
- The applicant, or
- The assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73
Additionally, for pre-September 16, 2012 applications, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if:
- An executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed, and
- The patent practitioner was named in the application transmittal papers.
To learn more:
The USPTO has specific rules regarding withdrawal for practitioners acting in a representative capacity under 37 CFR 1.34:
- The USPTO will not approve withdrawal requests from practitioners acting in a representative capacity.
- These practitioners are responsible for the correspondence they file in the application while acting in a representative capacity.
- There is no need for these practitioners to obtain the USPTO’s permission to withdraw from representation.
However, it’s important to note that practitioners acting in a representative capacity, like those with power of attorney, remain responsible for compliance with 37 CFR 1.56 (duty of disclosure) and 37 CFR 11.18 (signature and certification requirements) for documents they file.
This distinction ensures that practitioners understand their ongoing responsibilities even when acting in a limited representative capacity.
To learn more:
Yes, but with limitations. According to MPEP 104:
“A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if the patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495 and a power of attorney has not been appointed under 37 CFR 1.32.”
This means that a representative can execute a power to inspect only if they were named in the initial application papers and no formal power of attorney has been filed. Once a power of attorney is filed, any previously filed power to inspect by a practitioner without power of attorney becomes ineffective.
For more information on power to inspect, visit: power to inspect.
For more information on representative capacity, visit: representative capacity.
No, a patent practitioner acting in a representative capacity cannot represent only some of the applicants in a joint application. According to MPEP 402.04, when a patent practitioner files a paper in an application filed on or after September 16, 2012, they must be submitting the paper on behalf of all parties identified as the applicant.
The MPEP explicitly states: “The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant.”
For example, if there are three joint inventors who disagree about how to proceed with the application, a patent practitioner representing only one inventor cannot file papers to the exclusion of the other joint inventors. Similarly, when there are multiple assignees identified as the applicant, a patent practitioner cannot file papers on behalf of only some of the parties.
To learn more: