What steps must a practitioner take when terminating representation?
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…
Read MoreWhat is a substitute statement for a deceased inventor and when is it required?
What is a substitute statement for a deceased inventor and when is it required? A substitute statement is a document that replaces the inventor’s oath or declaration when the inventor is deceased, legally incapacitated, or otherwise unavailable. For a deceased inventor, it is required when filing a patent application on or after September 16, 2012.…
Read MoreWhat is a substitute statement and when can it be used in place of an inventor’s oath or declaration?
A substitute statement is a document that can be used in place of an inventor’s oath or declaration under certain circumstances. According to 37 CFR 1.64, an applicant may execute a substitute statement if the inventor: Is deceased Is under a legal incapacity Has refused to execute the oath or declaration Cannot be found or…
Read MoreWhat is a substitute statement in patent applications involving deceased or incapacitated inventors?
A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a): See 37 CFR 1.64 and MPEP ยง 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or…
Read MoreWhat are the time constraints for filing a request to withdraw as a patent practitioner?
The timing of filing a request to withdraw as a patent practitioner is crucial. According to the MPEP: The USPTO will review and decide on withdrawal requests filed before the expiration of a time period for reply or before the expiration of a time period that can be extended under 37 CFR 1.136(a). Requests filed…
Read MoreWhat can be done if a joint inventor is unavailable or refuses to join in a patent application?
If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, 37 CFR 1.45(a) provides a solution. It states: “If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or…
Read MoreWhat happens if the legal representative of a deceased inventor is unavailable?
When the legal representative of a deceased inventor is unavailable, the process depends on whether the application was filed before or after September 16, 2012: For applications filed before September 16, 2012: If the legal representative cannot be found or reached after diligent effort, or refuses to make application, pre-AIA 37 CFR 1.47 applies. In…
Read MoreWhat happens if not all inventors sign the power of attorney in a pre-September 16, 2012 application?
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…
Read MoreCan an applicant communicate directly with the USPTO if they have a registered patent attorney?
Can an applicant communicate directly with the USPTO if they have a registered patent attorney? Generally, when an applicant is represented by a registered patent attorney or agent, direct communication between the applicant and the USPTO is discouraged. The USPTO has specific rules regarding this situation: The USPTO will communicate directly with the registered attorney…
Read MoreHow does the USPTO handle confidentiality in 37 CFR 1.47(a) petitions?
The USPTO handles confidentiality in 37 CFR 1.47(a) petitions with care, recognizing the sensitive nature of the information provided. The MPEP 409.03(b) states: ‘Petitions under 37 CFR 1.47 are not available to the public since they are contained in the application file… The petition will be available to the nonsigning inventor upon request.’ This means:…
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