A. 37 CFR 1.27
- Small Entity Status
A1.
If an application is filed prior to September 8, 2000 with the small
entity basic filing fee and an assertion that the applicant is a small
entity, but no small entity statement in compliance with former 37 CFR
1.27: (1) what must the applicant do to establish small entity
status; (2) is a surcharge under 37 CFR 1.16(e) (or (l)) required; and
(3) does it matter whether the Office has issued a Notice to File Missing
Parts of Application as of September 8, 2000?
(1) Nothing
is necessary to establish small entity status. The change to
37 CFR 1.27 applies to the application as of September 8, 2000, that
is, the applicant is considered to have established small entity status
in the application on September 8, 2000.
(2) The (small
entity) surcharge under 37 CFR 1.16 is required. The appropriate
basic filing fee was not present on filing (since the application
was filed before September 8, 2000, and small entity status was
not established until September 8, 2000), and 37 CFR 1.53(f)
(or (g)) requires payment of the surcharge under 37 CFR 1.16(e)
(or (l)) if the appropriate basic filing fee is not present on filing.
(3) No.
Regardless of whether the Office has issued a Notice to File Missing
Parts of Application as of September 8, 2000, the appropriate basic
filing fee was not present on filing and 37 CFR 1.53(f) (or (g))
requires payment of the surcharge under 37 CFR 1.16(e) (or (l))
if the appropriate basic filing fee is not present on filing.
A2. I tried to access the PTO form site to download a
small entity form for a small business and have found out that the Office
is no longer making any of the four small entity forms available.
Must I apply for small entity status only by payment of the small entity
basic filing fee?
No.
The Office recommends that you not rely solely on the payment of the
exact small entity amount for the basic filing fee (although you can
so rely).
A small entity
need no longer obtain a specialized form to request small entity
status. Small entity status can be obtained by a simple one
sentence request for such status. The request need not take
any particular form, it just must convey the concept that small
entity status is being requested and should be submitted in an easily
recognizable manner.
For the convenience
of applicants, the Office has reformatted some other existing forms,
such as the application transmittal forms, to provide a check box
for claiming small entity status.
A3. Although the Office no longer makes available the
four small entity forms, can I still use them (as I have a blank electronic
or paper copy) if I desire to do so?
Yes. Applicants may continue to use the former small entity
forms or similar forms to assert entitlement to small entity status.
As the rule change to 37 CFR 1.27 has not changed the requirement
for an investigation for entitlement to small entity status, some
practitioners have stated that they feel more comfortable using the
old form to ensure that a proper investigation is made.
A4. How should I respond to the Notice to File Missing
Parts of Application stating that I owe a large entity filing fee and
a large entity surcharge when I submitted an unsigned small entity statement
with no authorization to charge fees prior to the effective date of
the rule change?
You must
timely respond to the Notice to File Missing Parts to avoid abandonment
of the application. Your response may request reevaluation of
your prior attempt to claim small entity status since the Office will
not on its own reevaluate your prior attempt to claim small entity
status. Additionally, the response should include a new written
assertion of entitlement to small entity status (e.g., Your attempt
to claim small entity status while being ineffective under the former
rule, is effective under the amended rule since an unsigned small
entity statement accompanied application papers that were signed.).
A small entity
surcharge should also be submitted since the surcharge is owed even
if the Office accords small entity status, pursuant to the rule
change, based on the previous ineffective attempt to claim small
entity status.
A5. When does the
three month period for requesting a refund under 37 CFR 1.28(a) start
if the fee paper was filed using a Certificate of Mailing under 37 CFR
1.8 or filed by Express Mail under 37 CFR 1.10?
The three
month period for requesting a refund under 37 CFR 1.28(a) starts on
the date that a full fee has been paid. Payment by authorization
to charge a deposit account is treated for refund purposes the same
as payments by other means (e.g., check or credit card authorization),
with each being treated as paid (for refund purposes) on the date
of receipt in the Office as defined by 37 CFR 1.6. If a payment
is mailed with a Certificate of Mailing under 37 CFR 1.8, the three
month period for requesting a refund will start on the actual date
of receipt in the Office, not the Certificate of Mailing date.
If a payment is filed by Express Mail under 37 CFR 1.10, the date
of deposit with the United States Postal Service (shown by the “date-in”
on the Express Mail mailing label or other official USPS notation)
is the date of receipt of the payment and the three month period starts
on this date.
A6. An application
is filed before September 8, 2000, which did not comply with former
rule 1.27, but which does comply with amended 37 CFR 1.27. The
application contained a general authorization to charge fees.
The large entity fees were charged by the Office before September 8,
2000, and the application was processed by the Office of Initial Patent
Examination and forwarded to the Technology Center for examination.
What must applicant do to establish small entity status and to obtain
a refund of the difference between the large and small entity fee amount?
Small entity
status is automatically established as of September 8, 2000.
To obtain a refund, applicant must file a refund request in accordance
with 37 CFR 1.28(a). 37 CFR 1.28(a) was amended (effective November
7, 2000) to provide for refund requests within three months of the
date of payment of the full fee (instead of the former two-month period).
The date of payment of the fee is the date of receipt in the Office
as defined by 37 CFR 1.6. The date of receipt of an authorization
to charge fees starts the period for refunds under 37 CFR 1.28(a).
Therefore, applicant must explicitly timely request a refund within
three months of the submission of the authorization to charge fees
if the request for refund is filed on or after November 7, 2000.
Any request for refund under 37 CFR 1.28(a) filed before November
7, 2000, must be filed within two months of the date of payment of
the full fee in accordance with the version of 37 CFR 1.28(a) in effect
at that time.
A7. An application was filed before September 8, 2000,
which did not comply with former 1.27, but which does comply with amended
37 CFR 1.27. The small entity filing fee was paid on filing and
the Office processed the application as a small entity after September
8, 2000. Between the filing date of the application and the establishment
of small entity status on September 8, 2000, applicant signed a license
agreement with a large entity. What should applicant do?
Applicant
should file a paper under 37 CFR 1.28(c) requesting that small entity
status be withdrawn and pay the remaining amount owed for the filing
fee as a large entity. A surcharge is not required.
A8. I still have some questions regarding claiming small
entity status. Who can I talk to?
Eugenia
Jones (Legal Advisor, Office of Patent Legal Administration, (703)
306-5586)
A9. 37 CFR
1.27(a)(2)(i) and (ii) set forth two requirements for qualifying for
small entity status as a small business. The first relates to the
lack of transfer of rights to a large entity, and the second relates
to qualification as to the standards set forth by the Small Business
Administration in 13 CFR part 121. Are the two requirements meant
to be additive or alternative? (Posted 11/8/01)
37 CFR 1.27(a)(2)(i)
and (ii) are additive requirements and a party seeking to qualify
as a small business must meet both requirements as to transfer of
rights and SBA requirements.
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B. 37 CFR 1.72 -
Title and Abstract
B1.
Must the title of the invention appear as a heading on the first page
of the specification?
No.
The title of the invention is not required (nor has it been under
the previous version of §1.72) to be part of the specification. To
the extent that practitioners feel an important identification purpose
is served by supplying a title on the specification, it should appear
as a heading on the first page of the specification. Alternatively,
the title may now be supplied in an application data sheet (§ 1.76).
B2. How long may the abstract be?
The abstract
may not exceed 150 words in length. This is a departure from the former
37 CFR 1.72, which allowed an abstract to be up to 250 words in length.
The reduction in the number of words allowed in the abstract is necessary
to harmonize USPTO practice with PCT guidelines.
B3. What will happen if an application is filed with an
abstract that has more than 150 words?
When an
application is originally filed with an abstract having more than
150 words, the Office of Initial Patent Examination (OIPE) will send
applicant a notice to correct the abstract (with a period for reply
of two months). The application file will be held in OIPE and not
released to the assigned Technology Center for examination until an
acceptable abstract is filed. The mere presence of an abstract
which fails to comply with amended § 1.72 will not prevent an application
from being accorded a filing date. It will, however, delay the
initiation of the examination. Failure to comply to the notice
within 3 months, in an application subject to Patent Term Adjustment,
may cause a reduction of any patent term adjustment.
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C. 37 CFR 1.184 -
Standards for Drawings
C1.
Why are all applications with drawings reviewed in the Office of Initial
Patent Examination? Can applications which are not going to be
published as part of the pre-grant publication process be reviewed later?
All applications
with drawings need to be reviewed in OIPE to determine whether the
drawings are capable of reproduction (can be copied and/or scanned
in black and white) and are in the English language. Further
compliance with 37 CFR 1.84 will not be required by OIPE. Reproducable
drawings are required even if an application is not going to be published,
so that the Office will be able to provide a certified copy of the
application for foreign priority and other purposes. Furthermore,
since applicants may rescind a non-publication request, all applications
need to be reviewed according to the same standards regardless of
whether they are to be published. In addition, an English translation
of the application is required pursuant to 37 CFR 1.52(d)(1).
Aside from the non-English text and for the need to have a black and
white copy of color drawings/photographs in plant applications (see
37 CFR 1.165(b)), this drawing review during scanning is the same
review that has been performed for several years. The Office
does not anticipate requiring very many more drawing corrections in
OIPE as a result of pre-grant publication.
As a result of
this minimal screening, the Office will not be requiring applicant
to submit “formal drawings” during preexamination under 37 CFR 1.215(a),
the Office will merely require drawings that can be copied and are
in the English language. Drawings that are filed in reply
to a preexamination notice requiring drawings that can be copied
in black and white or are in the English language will be rescanned
and included in the patent application publication. If applicant
desires to have better drawings included in the pre-grant publication,
the drawings will have to be submitted in paper on filing or in
electronic form through the Electronic Filing System (EFS) within
one month of the filing date of the application, or fourteen months
from any priority date claimed 35 U.S.C. §§ 119, 120, 121 or 365(c).
See 37 CFR 1.215(c).
Applicants should
also note that the Office may require “formal drawings” at allowance
merely because applicant originally indicated the drawings as informal.
In addition, the patent examiner may find errors in the drawings
and require correction of the drawings. If the application
was filed after May 29, 2000, any formal or corrected drawings filed
after allowance will result in a reduction to any patent term adjustment.
See 37 CFR 1.704(c)(10).
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D. 37 CFR 1.121 -
Amendment by Paragraph Replacement
D1.
If an applicant elects to utilize optional paragraph numbering as per
§ 1.52(b)(6), would amendments to the specification (under §1.121) which
add new paragraphs require a renumbering of all the paragraphs?
No.
If the method for numbering paragraphs suggested by the Office is
used, a single new paragraph replacing a single original paragraph
would retain the same number as the paragraph being replaced.
If more than one paragraph replaces a single original paragraph, the
additional paragraphs would be numbered with sequential integers following
a single decimal, e.g., [0071], [0071.1] and [0071.2] would replace
original paragraph [0071]. Original unamended paragraphs before
and after the affected paragraph would retain their original numbering.
D2. Are there software products
currently on the market which will automatically number paragraphs?
Yes. At the very least, recent releases of Word (Office
97 or later) and WordPerfect (9.0) have features for automatically
numbering paragraphs.
D3. What is the effective
date for implementing the requirements for amendments by replacement
paragraph/claims?
Mandatory
compliance with the revised rule is not required until March 1, 2001.
It is suggested, however, that applicants adopt the revised procedures
on or after November 7, 2000, in order to adjust to the changes in
amendment practice. The time period prior to November 7 will
be used by the Office to train technical support personnel on the
changes of the new rule.
On or after March
1, 2001, all amendments must comply with revised § 1.121.
D4. How do I amend claims which were previously amended
prior to the change to 37 CFR 1.121?
After the
effective date of the rule change, the latest amended version of a
claim must be presented in clean form, including all changes made
by the current, as well as any earlier, amendment. A marked-up
version showing changes made by only the current amendment must accompany
the clean version.
Applicants will
also be able to submit a clean set of all pending claims, consolidating
all previous versions of pending claims from a series of separate
amendments into a single clean version in a single amendment paper.
This submission of a clean version of all of the pending claims
will be construed as directing the cancellation of all previous
versions of any pending claims. No marked-up version will
be required to accompany the clean version where no changes other
than the consolidation are being made.
D5. What if I fail
to amend my specification/claims according to the revised rule after
March 1, 2001?
The amendment
may be considered not fully responsive and treated by the examiner
under 37 CFR 1.135(c). The examiner, however, will not give
applicant additional time for correcting amendments submitted after
final rejection. See MPEP Sec. 714.03.
D6. Would the Office treat an amendment with a certificate
of mailing dated before 3/1/01 (the effective date of revised rule 37
CFR 1.121) as non-compliant if the amendment was submitted without meeting
the requirements of revised § 1.121?
No.
If an amendment is filed with a certificate of mailing dated before
3/1/01, the Office will not treat the amendment as non-compliant.
Furthermore, if the amendment is an unentered amendment after final
and the Office subsequently withdraws the finality of the last Office
action after 3/1/01, the Office will not treat the amendment as non-compliant
because the certificate of mailing is dated before 3/1/01.
For example, if
the applicant subsequently resubmits an amendment after final with
a certificate of mailing dated before 3/1/01 as a preliminary amendment
in a CPA filed after 3/1/01, the Office will not treat the amendment
as non-compliant. Similarly, the Office will not treat the
amendment after final as non-compliant if the applicant subsequently
submits it as a submission in a RCE under 37 CFR 1.114.
D7. How would the Office treat an amendment that is not
in compliance with 37 CFR 1.121?
If a preliminary
amendment (with a date of certificate of mailing on or after 3/1/01)
is non-compliant, the applicant will be given one month from the mailing
date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to resubmit
the amendment in compliance with § 1.121. This period of time
is not extendable. The examination on the merits of the application
may commence without the entry of the preliminary amendment unless
the applicant resubmits the amendment in compliance with § 1.121 within
the one-month time period.
If an amendment
(with a date of certificate of mailing on or after 3/1/01) filed
in response to a non-final Office action is a bona fide reply, but
is non-compliant with 37 CFR 1.121, the applicant will be given
one-month (or 30 days, if longer) from the mailing date of the Notice
of Non-Compliant Amendment (37 CFR 1.121) to correct the non-compliance
in order to avoid abandonment. This period of time is extendable
under 37 CFR 1.136(a).
If an amendment
after final (with a date of certificate of mailing on or after 3/1/01)
is non-compliant, the unentered amendment will be forwarded to the
examiner. The examiner will address the non-compliance in
an Advisory Action. Additional time will not be given to make
the amendment compliant with the rule. Applicant will have
the remainder of the time period (if any) set forth in the final
Office action to correct the non-compliance.
If an amendment
under 37 CFR 1.312 (with a date of certificate of mailing on or
after 3/1/01) filed before the payment of issue fee is non-compliant,
the 312 amendment will be addressed by the examiner in a Response
to 312 Amendment (PTO-271). Additional time will not be given
to correct the non-compliance. Applicant will have the remainder
of the time period (if any) set forth in the Notice of Allowance
to correct the non-compliance before, or filed with, the payment
of issue fee.
D8. Can an amendment after final that was not in compliance
with 37 CFR 1.121 be a proper submission for a RCE that was filed with
a fee?
If an amendment
after final (with a date of certificate of mailing on or after 3/1/01)
is a bona fide reply meeting the reply requirement under 37 CFR 1.111,
but is non-compliant with § 1.121, the amendment after final could
be considered as a proper submission for a RCE under 37 CFR 1.114.
The Office will process the RCE as a proper RCE and withdraw the finality
of the last Office action. Applicant will be given one-month
(or 30 days, if longer) from the mailing date of the Notice of Non-Compliant
Amendment (37 CFR 1.121) to correct the non-compliance in order to
avoid abandonment. This period of time is extendable under 37
CFR 1.136(a).
D9. Is there a provision
for entry of section headings (e.g., "SUMMARY OF THE INVENTION") under
the revised § 1.121 practice?
Section headings
may be added to the specification by merely identifying the precise
location for entry followed by the clean version of the exact heading
to be entered. The Legal Instruments Examiner (LIE) will enter the
heading as a block insert. Applicants are not required to add headings
by total paragraph or section replacement, nor is a marked-up version
needed.
D10. How can
Microsoft Word® software be used in preparing "clean"
and "marked-up" versions of an amendment in order to comply
with revised 37 CFR 1.121? (Posted 11/8/01)
In either Word
97 or Word 2000, open the document to be amended. Go to Tools and
select Track Changes then Highlight Changes from the pull-down menu.
Place a check mark before all three selections in the Highlight
Changes dialog box (1. Track Changes while editing; 2. Highlight
changes on screen; 3. Highlight changes in printed document). Under
"Options" in the same box, select "underline"
for inserted text, and "strikethrough" for deleted text.
Click on "OK." Click on "OK" again to return
to the document. Proceed to amend the document. The document can
now be printed showing the underlining and strikethrough. This is
the "marked-up version."
To print the "clean version," go back to the Highlight
Changes box under Tools and remove the check mark before "Highlight
changes in printed document." Click "OK" and print
the document. This is the "clean version" of the amended
document, and does not include any markings showing deleted or added
subject matter.
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E. 37 CFR 1.322 -
Certificate of Correction of Office Mistake
E1.
Under what conditions may the Commissioner issue a certificate of correction
to correct a mistake in a patent incurred through the fault of the Office?
The Commissioner
may pursuant to 35 U.S.C. 254 issue a certificate of correction to
correct a mistake in a patent incurred through the fault of the Office,
which mistake is clearly disclosed in the records of the Office, (1)
At the request of the patentee or the patentee's assignee, (2) Acting
sua sponte for mistakes that the Office discovers, and (3) Acting
on information about a mistake supplied by a third party.
E2. Do third parties have
standing to demand that the Office issue or refuse to issue a certificate
of correction?
No. Third
parties do not having standing to demand that the Office issue or
refuse to issue a certificate of correction. See Hallmark Card,
Inc. v. Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C.
1997). The Office is, however, cognizant of the need for the
public to have correct information about published patents and may
therefore accept information about mistakes in patents from third
parties and may issue certificates of correction based upon that information
(whether or not it is accompanied by a specific request for issuance
of a certificate of correction).
E3. Where third parties
submit information or a request for a certification of correction, will
the Office correspond with the third parties about their submission
or request?
No. The
Office does not intend to correspond with third parties about the
information they submitted either to inform the third parties of whether
it intends to issue a certificate of correction or to issue a denial
of any request for issuance of a certificate of correction that may
accompanying the information. The Office will confirm to the
party submitting such information that such information has in fact
been received by the Office if a stamped, self-addressed post card
has been submitted. See MPEP 503. The status of the patented
file, including issuance of any certificate of correction, may be
monitored via the web using the Patent Application Information Retrieval
(PAIR) system.
E4. Is there a fee for submission
of information by a third party?
No.
A fee has not been imposed for submission of information by a third
party.
E5. Will papers containing a submission of information or request
for a certificate of correction submitted by a third party be made record
of and kept in the patent file?
No. Papers
containing a submission of information or request for a certificate
of correction submitted by a third party will not be made of record
in the file that they relate to or be retained by the Office.
E6. Will all mistakes incurred by the Office and identified
by the patentee, the patentee's assignee, the Office, or a third party
be corrected?
No.
The Office intends to retain its discretion and may not issue a certificate
of correction even if a mistake is identified, particularly if the
identified mistake is not a significant one that would justify the
cost and time to issue a certificate of correction.
E7. Where the Office discovers a mistake or receives a submission
of information or request for a certificate of correction from a third
party, will the patentee be notified prior to the issuance of any certificate
of correction?
Yes. The
Office will not issue a certification of correction under 37 CFR 1.322
without first notifying the patentee (including any assignee of record)
at the correspondence address of record as specified in § 1.33(a)
and affording the patentee or an assignee an opportunity to be heard.
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F. FORMS
F1.
I noticed that the recently modified declaration forms (PTO/SB/01, PTO/SB/03
and PTO/SB/04) no longer have language to appoint an attorney or authorize
an agent. How do I appoint a power of attorney or authorize an
agent when filing my application?
To appoint
a power of attorney or authorize an agent to act for you, you can
use form PTO/SB/81 "Power of Attorney or Authorization of Agent" (also
on the USPTO's printable forms website). The power of the attorney
portion was removed from the declaration forms because while all the
inventors must sign a declaration form, it is not always required
that all the inventors sign a power of attorney. For example,
it is acceptable to have the assignee(s) appoint the power of attorney.
See 37 CFR 3.71. The combined declaration and power of attorney
forms will still be accepted by the Office.
F2. I noticed that the new declaration forms no longer
have a box to claim domestic priority under 35 U.S.C. 119(e) and 120.
Why was this deleted from the forms?
The domestic
priority box was removed from the declaration forms because it is
not required by the statutes or by the related rules to state a domestic
priority claim in the declaration. The presence of this
box created confusion, and may have caused unnecessary objections
to declarations when this box was not filled out and applicant was
indeed claiming domestic priority to another application. To
claim domestic priority under 35 U.S.C. 119(e) and 120, applicant
must comply with 37 CFR 1.78 which requires, in part, that the priority
claim information be in either the first line of the specification
or in an application data sheet.
F3. Why were the small entity forms (PTO/SB/9-12)
deleted from the website and how do I now claim small entity status?
The small
entity forms were deleted because effective September 8, 2000, small
entity status can be established at any time by a simple written assertion
of entitlement to small entity status. Specific forms, like
PTO/SB/9-12, are no longer required but the Office will still accept
them as a written assertion of entitlement to small entity status.
The Office will liberally construe any written reference to small
entity status to be a request for small entity status. Several
PTO forms, such as the transmittal forms (PTO/SB/5,17,21,50 and 56)
and the provisional cover sheet (PTO/SB/16), have been modified to
include a box which can be checked to establish small entity status.
For more information, see "Simplified Small Entity Status Practice"
at http://www.uspto.gov/web/offices/dcom/olia/pbg/cpr.htm.
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G. REISSUE
G1.
If amendment by paragraph replacement is now required by the Office
for amendments submitted during prosecution, how should I amend the
specification in a reissue application at the time of filing?
Amendment
of a reissue specification at the time of filing can be accomplished
either by (1) paragraph replacement in a preliminary amendment, or
(2) “cut and paste” of a two column copy of the original patent, whereby
minor changes are inserted at a cut portion of a column and the remainder
of the column rejoined. Unlike amendment practice for non-reissue
applications, no clean copy of a replacement paragraph should be submitted;
rather, underlining and bracketing (to show additions and deletions,
respectively) must be employed in the paragraph to be inserted.
No accompanying marked-up version of the amended paragraph should
be submitted.
G2. Can I merely make
a request for transfer of drawings (from the patent file to the reissue
application) to satisfy the drawing requirements for a reissue application?
The Office
will no longer grant or act on a request for transfer of drawings.
If good quality copies of the patent drawings are submitted at the
time of filing, and the drawing copies satisfy the requirements of
§ 1.84, the copies will be accepted in lieu of formal drawings, and
the reissue patent will be printed using the copies of the drawings.
G3. If a reissue application
is filed which broadens the claims of the invention of the original
patent as well as adds claims to a different invention, will the broadened
claims of the original invention still be considered to be constructively
elected under revised § 1.176?
Yes. Even though the original patent claims have been broadened,
they are still considered as being drawn to the same invention as
was claimed in the original patent. Short of a disclaimer of
the original claims being filed in the reissue application, claims
to the invention claimed in the original patent (even if broadened)
will always be considered the elected invention in a first reissue
application which additionally contains claims to another invention.
If the constructively elected broadened claims correct a legitimate
error in the original patent, the first reissue application may be
able to issue prior to the completed examination of any later filed
divisional applications. If no error is corrected by the constructively
elected claims, and the claims are found to be allowable, prosecution
of the first reissue application may have to be suspended pending
the completion of the examination of any later filed divisional application,
at which time the claims will be recombined into a single application
for issuance.
G4. If multiple reissue applications are filed, into which
application should the original patent claims be placed, and how should
the claims be numbered in each of the applications?
The original
patent claims should be submitted in each of the multiple reissue
applications as either (1) unamended, (2) amended (including underlined
and/or bracketed material, or (3) deleted (bracketed) claims.
They should retain their original numbering in each of the multiple
reissues. Claims added to any of the reissues should be numbered
beginning with the next highest number following the last original
claim. Unamended original claims may only appear in one of the
reissue applications for examination.
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H.
Miscellaneous
H1. If an attorney
represents an assignee of an invention of a patent application, what
is the preferred way for that attorney to obtain his/her power of
attorney and become of record as applicant's attorney to prosecute
the case? (Posted 3/20/02)
In order to
become of record, the attorney for the assignee should submit all
of the following:
(1) § 3.71(a) statement:
A statement setting forth that the assignee, by way of its attorney,
is entering the record pursuant to 37 CFR 3.71(c), and assignee,
by way of its attorney, wishes to conduct and control the prosecution
pursuant to § 3.71(a) to the exclusion of any other entity.
(2) §
3.73(b) statement: A statement under § 3.73(b) establishing
the assignee as the owner of the application; user form PTO/SB/96
is recommended for this purpose.
(3) Power of
attorney: A power of attorney from the assignee to the attorney
or to practitioners of a customer number; user form PTO/SB/81
is recommended for this purpose.
(4) Correspondence address: The correspondence address to be used
for the application should be set forth; user form PTO/SB/121
is recommended for this purpose.
These four submissions
can be made as separate papers, e.g., using the above-recommended
PTO/SB forms where appropriate, or one or more of papers (1) - (4)
may be consolidated.
The granting
of the power of attorney by the assignee to the attorney (rather
than by the inventors to the attorney) will preclude any possible
conflict of interest arising from practitioner being paid by the
assignee yet seeming to represent the inventors. It will also preclude
the inventor from revoking the power and appointing another attorney
against the wishes of the assignee.
It is to be
noted that the current § 1.63 declaration form no longer contains
a space for power of attorney from the inventors.
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