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 300 - Ownership and Assignment (1)
What is the purpose of Form PTO/AIA/96?
Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325:
“Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application filed on or after September 16, 2012.”
This form is crucial for assignees who wish to prosecute the application or take other actions on behalf of the inventors. It serves as a declaration that the assignee has the right to take action in the application, which is necessary under 37 CFR 3.71(b).
For more information on assignee rights, visit: assignee rights.
For more information on USPTO Forms, visit: USPTO Forms.
MPEP 400 - Representative of Applicant or Owner (10)
When terminating representation, a practitioner must take several steps to protect the client’s interests, as outlined in 37 CFR 11.116(d):
- Give reasonable notice to the client
- Allow time for the client to employ other counsel
- Surrender papers and property to which the client is entitled
- Refund any advance payment of fees or expenses that have not been earned or incurred
Additionally, the practitioner must comply with applicable laws requiring notice to or permission from a tribunal when terminating representation, as per 37 CFR 11.116(c).
The USPTO provides forms (PTO/SB/83 or PTO/AIA/83) that include a section for practitioners to certify the completion of these necessary activities. Practitioners can also file a Web-based e-petition for withdrawal.
To learn more:
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:
- Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
- Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
- Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.
The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.
It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.
To learn more:
For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.
Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.
To learn more:
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:
Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.
The process involves:
- The assignee signing the power of attorney (Form PTO/SB/80)
- Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)
Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.
To learn more:
The USPTO provides several forms for appointing a power of attorney in patent applications filed on or after September 16, 2012. These forms are available on the USPTO website and include:
- PTO/AIA/80: For use by assignees who are either the named applicant or are becoming the applicant.
- PTO/AIA/81: For use by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney.
- PTO/AIA/82: For use by the applicant for patent to appoint one or more patent practitioners.
- PTO/AIA/81A: For use in appointing a power of attorney in a patent resulting from an application filed on or after September 16, 2012.
Each form has specific uses and requirements. For example, Form PTO/AIA/80 must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) and must be signed by the named assignee or a person authorized to act on behalf of the assignee.
To learn more:
There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:
- Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
- Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
- Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.
It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.
To learn more:
How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
MPEP 403 - Correspondence — With Whom Held; Customer Number Practice (2)
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
MPEP 405 - Interviews With Patent Practitioner Not of Record (1)
Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
MPEP 408 - Interviews With Patent Practitioner of Record (1)
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
Patent Law (17)
When terminating representation, a practitioner must take several steps to protect the client’s interests, as outlined in 37 CFR 11.116(d):
- Give reasonable notice to the client
- Allow time for the client to employ other counsel
- Surrender papers and property to which the client is entitled
- Refund any advance payment of fees or expenses that have not been earned or incurred
Additionally, the practitioner must comply with applicable laws requiring notice to or permission from a tribunal when terminating representation, as per 37 CFR 11.116(c).
The USPTO provides forms (PTO/SB/83 or PTO/AIA/83) that include a section for practitioners to certify the completion of these necessary activities. Practitioners can also file a Web-based e-petition for withdrawal.
To learn more:
What is the purpose of Form PTO/AIA/96?
Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325:
“Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application filed on or after September 16, 2012.”
This form is crucial for assignees who wish to prosecute the application or take other actions on behalf of the inventors. It serves as a declaration that the assignee has the right to take action in the application, which is necessary under 37 CFR 3.71(b).
For more information on assignee rights, visit: assignee rights.
For more information on USPTO Forms, visit: USPTO Forms.
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:
- Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
- Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
- Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.
The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.
It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.
To learn more:
For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.
Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.
To learn more:
Patent examiners have several forms at their disposal to communicate about replacement drawings:
- Form Paragraph 6.37: Used to acknowledge receipt of replacement drawing sheets.
- Form PTOL-324: Can be used instead of Form Paragraph 6.37 to provide explanations about drawing compliance.
- Form PTOL-326 (Office Action Summary): Includes a specific block for acknowledging replacement drawings.
The MPEP 608.02(h) provides guidance on using these forms:
“Form paragraph 6.37 may be used to acknowledge replacement drawing sheets. […] Form PTOL-324 may be used instead of this form paragraph to provide the explanation. Alternatively, PTOL-326 Office Action Summary includes a block for acknowledgment of replacement drawings.”
These forms help ensure clear and consistent communication between examiners and applicants regarding the status and acceptability of replacement drawings.
To learn more:
The United States Patent and Trademark Office (USPTO) provides several forms that can be used for submitting an inventor’s oath or declaration in patent applications filed on or after September 16, 2012. These forms are:
- Forms PTO/AIA/01 through PTO/AIA/11
These forms are designed to ensure that all required information and statements are included in the oath or declaration. They can be found on the USPTO website at www.uspto.gov/PatentForms.
In addition to these forms, the USPTO provides an ‘AIA Inventor’s Oath or Declaration Quick Reference Guide’ to assist applicants in properly completing and submitting the inventor’s oath or declaration.
While using these forms is not mandatory, they can help ensure compliance with the requirements set forth in 37 CFR 1.63 and 35 U.S.C. 115. If not using these forms, applicants must ensure that all required information and statements are included in their custom oath or declaration.
To learn more:
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:
Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.
The process involves:
- The assignee signing the power of attorney (Form PTO/SB/80)
- Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)
Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.
To learn more:
The USPTO provides several forms for appointing a power of attorney in patent applications filed on or after September 16, 2012. These forms are available on the USPTO website and include:
- PTO/AIA/80: For use by assignees who are either the named applicant or are becoming the applicant.
- PTO/AIA/81: For use by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney.
- PTO/AIA/82: For use by the applicant for patent to appoint one or more patent practitioners.
- PTO/AIA/81A: For use in appointing a power of attorney in a patent resulting from an application filed on or after September 16, 2012.
Each form has specific uses and requirements. For example, Form PTO/AIA/80 must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) and must be signed by the named assignee or a person authorized to act on behalf of the assignee.
To learn more:
There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:
- Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
- Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
- Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.
It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.
To learn more:
Yes, the USPTO provides an official form for requesting correction of inventorship or inventor name. The MPEP states:
The Office has a form PTO/AIA/40 to request correction in a patent application (other than a reissue application) relating to inventorship, an inventor name, or order of names.
This form, PTO/AIA/40, can be used for various corrections related to inventorship and inventor names. It’s available on the USPTO website at www.uspto.gov/PatentForms. Using this official form can help ensure that you provide all necessary information for your request and may streamline the process of correcting inventorship or inventor names in your patent application.
To learn more:
Examiners have several methods to acknowledge the receipt of replacement drawing sheets:
- Using Form Paragraph 6.37
- Using Form PTOL-324
- Using the PTOL-326 Office Action Summary
The MPEP 608.02(h) provides the following example of Form Paragraph 6.37:
“The drawings were received on [1]. These drawings are [2].”
In this form paragraph, the examiner would insert the date of receipt in [1] and either ‘acceptable’ or ‘unacceptable’ in [2]. If the drawings are unacceptable, the examiner must provide an explanation, which may include identifying any drawings not entered due to new matter and explaining necessary corrections for resubmission.
To learn more:
How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
Fees for multiple dependent claims are calculated differently from regular dependent claims. According to MPEP 608.01(n):
- A multiple dependent claim is considered to be that number of dependent claims to which it refers.
- Any claim depending from a multiple dependent claim is also considered as the number of dependent claims as referred to in the multiple dependent claim from which it depends.
- If at least one multiple dependent claim is proper, the multiple dependent claim fee set forth in 37 CFR 1.16(j) will be required.
The USPTO uses Form PTO/SB/07 to assist in the computation of fees for multiple dependent claims. This form is placed in the application file by the Office of Patent Application Processing (OPAP) or the Technology Center (TC) technical support staff.
To learn more:
Yes, the USPTO allows the use of certain alternative forms for submitting application data, as described in MPEP 601.05:
- Patent Law Treaty Model International Forms can be used to present priority or benefit claims, references to previously filed applications, and applicant information.
- The Patent Cooperation Treaty Request Form can be used in national stage applications to present benefit claims and applicant information.
However, there are specific requirements and limitations:
- When using a Patent Cooperation Treaty Request Form in an application under 35 U.S.C. 111, it must be accompanied by a clear indication that treatment as an application under 35 U.S.C. 111 is desired.
- If there are inconsistencies between an ADS and these forms, the ADS will govern.
While these alternative forms are accepted, the USPTO generally prefers the use of its official ADS form for clarity and consistency in processing.
To learn more:
Patent Procedure (17)
When terminating representation, a practitioner must take several steps to protect the client’s interests, as outlined in 37 CFR 11.116(d):
- Give reasonable notice to the client
- Allow time for the client to employ other counsel
- Surrender papers and property to which the client is entitled
- Refund any advance payment of fees or expenses that have not been earned or incurred
Additionally, the practitioner must comply with applicable laws requiring notice to or permission from a tribunal when terminating representation, as per 37 CFR 11.116(c).
The USPTO provides forms (PTO/SB/83 or PTO/AIA/83) that include a section for practitioners to certify the completion of these necessary activities. Practitioners can also file a Web-based e-petition for withdrawal.
To learn more:
What is the purpose of Form PTO/AIA/96?
Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325:
“Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application filed on or after September 16, 2012.”
This form is crucial for assignees who wish to prosecute the application or take other actions on behalf of the inventors. It serves as a declaration that the assignee has the right to take action in the application, which is necessary under 37 CFR 3.71(b).
For more information on assignee rights, visit: assignee rights.
For more information on USPTO Forms, visit: USPTO Forms.
To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:
- Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
- The form should identify the participants of the interview.
- Propose a date for the interview.
- Specify whether the interview will be personal, telephonic, or via video conference.
- Include a brief description of the issues to be discussed.
As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
This procedure helps ensure productive and efficient interviews.
For more information on patent examination, visit: patent examination.
For more information on USPTO Forms, visit: USPTO Forms.
Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:
- Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
- Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
- Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.
The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.
It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.
To learn more:
For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.
Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.
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Patent examiners have several forms at their disposal to communicate about replacement drawings:
- Form Paragraph 6.37: Used to acknowledge receipt of replacement drawing sheets.
- Form PTOL-324: Can be used instead of Form Paragraph 6.37 to provide explanations about drawing compliance.
- Form PTOL-326 (Office Action Summary): Includes a specific block for acknowledging replacement drawings.
The MPEP 608.02(h) provides guidance on using these forms:
“Form paragraph 6.37 may be used to acknowledge replacement drawing sheets. […] Form PTOL-324 may be used instead of this form paragraph to provide the explanation. Alternatively, PTOL-326 Office Action Summary includes a block for acknowledgment of replacement drawings.”
These forms help ensure clear and consistent communication between examiners and applicants regarding the status and acceptability of replacement drawings.
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The United States Patent and Trademark Office (USPTO) provides several forms that can be used for submitting an inventor’s oath or declaration in patent applications filed on or after September 16, 2012. These forms are:
- Forms PTO/AIA/01 through PTO/AIA/11
These forms are designed to ensure that all required information and statements are included in the oath or declaration. They can be found on the USPTO website at www.uspto.gov/PatentForms.
In addition to these forms, the USPTO provides an ‘AIA Inventor’s Oath or Declaration Quick Reference Guide’ to assist applicants in properly completing and submitting the inventor’s oath or declaration.
While using these forms is not mandatory, they can help ensure compliance with the requirements set forth in 37 CFR 1.63 and 35 U.S.C. 115. If not using these forms, applicants must ensure that all required information and statements are included in their custom oath or declaration.
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The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:
Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.
The process involves:
- The assignee signing the power of attorney (Form PTO/SB/80)
- Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)
Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.
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The USPTO provides several forms for appointing a power of attorney in patent applications filed on or after September 16, 2012. These forms are available on the USPTO website and include:
- PTO/AIA/80: For use by assignees who are either the named applicant or are becoming the applicant.
- PTO/AIA/81: For use by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney.
- PTO/AIA/82: For use by the applicant for patent to appoint one or more patent practitioners.
- PTO/AIA/81A: For use in appointing a power of attorney in a patent resulting from an application filed on or after September 16, 2012.
Each form has specific uses and requirements. For example, Form PTO/AIA/80 must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) and must be signed by the named assignee or a person authorized to act on behalf of the assignee.
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There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:
- Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
- Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
- Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.
It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.
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Yes, the USPTO provides an official form for requesting correction of inventorship or inventor name. The MPEP states:
The Office has a form PTO/AIA/40 to request correction in a patent application (other than a reissue application) relating to inventorship, an inventor name, or order of names.
This form, PTO/AIA/40, can be used for various corrections related to inventorship and inventor names. It’s available on the USPTO website at www.uspto.gov/PatentForms. Using this official form can help ensure that you provide all necessary information for your request and may streamline the process of correcting inventorship or inventor names in your patent application.
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Examiners have several methods to acknowledge the receipt of replacement drawing sheets:
- Using Form Paragraph 6.37
- Using Form PTOL-324
- Using the PTOL-326 Office Action Summary
The MPEP 608.02(h) provides the following example of Form Paragraph 6.37:
“The drawings were received on [1]. These drawings are [2].”
In this form paragraph, the examiner would insert the date of receipt in [1] and either ‘acceptable’ or ‘unacceptable’ in [2]. If the drawings are unacceptable, the examiner must provide an explanation, which may include identifying any drawings not entered due to new matter and explaining necessary corrections for resubmission.
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How do I request a Customer Number from the USPTO?
To request a Customer Number from the USPTO, follow these steps:
- Complete the Customer Number Request Form (PTO/SB/125)
- Include the names of registered practitioners associated with the Customer Number
- Provide the correspondence address for the Customer Number
- Submit the form to the USPTO
According to MPEP 403, ‘A Customer Number may be requested by (A) a registered attorney or agent of record, (B) an assignee of the entire interest of the applicant, or (C) the applicant.’ The USPTO will process the request and assign a unique Customer Number, which can then be used for managing correspondence and access to patent applications.
For more information on USPTO Forms, visit: USPTO Forms.
Registered practitioners can show authorization to conduct an interview in several ways:
- By being an attorney or agent of record with a power of attorney
- By having an authorization to act in a representative capacity
- By completing, signing, and filing an Applicant Initiated Interview Request Form (PTOL-413A)
The MPEP states: Registered practitioners, when acting in a representative capacity, can show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A).
This method is particularly convenient as it eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
Alternatively, practitioners can use Form PTO/SB/84, ‘Authorization to Act in a Representative Capacity,’ available on the USPTO website.
For more information on USPTO Forms, visit: USPTO Forms.
Fees for multiple dependent claims are calculated differently from regular dependent claims. According to MPEP 608.01(n):
- A multiple dependent claim is considered to be that number of dependent claims to which it refers.
- Any claim depending from a multiple dependent claim is also considered as the number of dependent claims as referred to in the multiple dependent claim from which it depends.
- If at least one multiple dependent claim is proper, the multiple dependent claim fee set forth in 37 CFR 1.16(j) will be required.
The USPTO uses Form PTO/SB/07 to assist in the computation of fees for multiple dependent claims. This form is placed in the application file by the Office of Patent Application Processing (OPAP) or the Technology Center (TC) technical support staff.
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Yes, the USPTO allows the use of certain alternative forms for submitting application data, as described in MPEP 601.05:
- Patent Law Treaty Model International Forms can be used to present priority or benefit claims, references to previously filed applications, and applicant information.
- The Patent Cooperation Treaty Request Form can be used in national stage applications to present benefit claims and applicant information.
However, there are specific requirements and limitations:
- When using a Patent Cooperation Treaty Request Form in an application under 35 U.S.C. 111, it must be accompanied by a clear indication that treatment as an application under 35 U.S.C. 111 is desired.
- If there are inconsistencies between an ADS and these forms, the ADS will govern.
While these alternative forms are accepted, the USPTO generally prefers the use of its official ADS form for clarity and consistency in processing.
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