Are there any limitations on what an attorney or agent can do when acting in a representative capacity?
While MPEP § 714.01(c) allows registered attorneys and agents acting in a representative capacity to sign amendments, there are limitations on their authority. The provision specifically states: A registered attorney or agent acting in a representative capacity under 37 CFR 1.34, may sign amendments even though he or she does not have a power of…
Read MoreWhat is the legal basis for an attorney or agent to sign amendments without a power of attorney?
The legal basis for an attorney or agent to sign amendments without a power of attorney is provided in 37 CFR 1.34. This regulation allows registered practitioners to act in a representative capacity without necessarily having a power of attorney. The MPEP § 714.01(c) clarifies this point: A registered attorney or agent acting in a…
Read MoreCan a joint inventor sign an amendment without power of attorney from the other inventor?
No, a joint inventor cannot sign an amendment without proper authorization from the other inventor(s). The MPEP 714.01(a) provides an example of this situation: This applies, for instance, where the amendment is signed by only one of two joint inventors and the one signing has not been given a power of attorney by the other…
Read MoreHow can an attorney or agent become ‘of record’ for a patent application?
To become an attorney or agent ‘of record’ for a patent application, one must follow these steps: File a power of attorney from the applicant or assignee. File an oath or declaration referring to the attorney or agent. Include the attorney or agent’s registration number on the patent application transmittal letter. The MPEP 402 states:…
Read MoreCan an attorney or agent not of record sign amendments to a patent application?
Yes, a registered attorney or agent acting in a representative capacity can sign amendments to a patent application, even if they do not have a power of attorney in the application. This is explicitly stated in MPEP § 714.01(c): A registered attorney or agent acting in a representative capacity under 37 CFR 1.34, may sign…
Read MoreWhat forms are available for appointing a power of attorney in patent applications filed on or after September 16, 2012?
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…
Read MoreWhat forms should be used for powers of attorney in patent applications filed before September 16, 2012?
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…
Read MoreHow does a power of attorney by the assignee affect previous powers of attorney in pre-AIA applications?
In pre-AIA patent applications (filed before September 16, 2012), a power of attorney given by the assignee of the entire interest has significant implications for previous powers of attorney. As stated in the MPEP: A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees…
Read MoreCan an assignee revoke power of attorney in all types of patent applications?
Can an assignee revoke power of attorney in all types of patent applications? An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed: “For applications involved in an interference or derivation proceeding, 37 CFR…
Read MoreHow can an assignee revoke a power of attorney in applications filed on or after September 16, 2012?
For applications filed on or after September 16, 2012, an assignee must first become the applicant under 37 CFR 1.46(c) to revoke a previously given power of attorney and/or grant a new one. This is because, as stated in the MPEP, any power of attorney must be signed by the applicant or patent owner. The…
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