Power of Attorney and Assignment
Questions & Answers (FAQs)
Updated 7/21/04; Assignment Question 2 added)
Power of Attorney
Q1. Regarding new rule 1.32(c)(3): It states, “If
a power of attorney names more than ten patent practitioners, such power
of attorney must be accompanied by a separate paper indicating which ten
patent practitioners named in the power of attorney are to be recognized
by the Office as being of record ” Does the paper need to be signed?
Who may sign that separate paper? What happens if the separate paper isn’t
signed?
A1. Yes, a signature is required for the separate
paper (see 37 CFR 1.33(b)). Persons who may provide the signature include
one of the attorneys or agents named in the power of attorney naming
more than ten patent practitioners, a patent attorney or agent acting
in a representative capacity, the assignee acting pursuant to 37 CFR
3.73(b), or the applicant pursuant to 37 CFR 1.41. See 37 CFR 1.33(b).
If the separate paper is not signed, a signature on a properly signed
transmittal letter specifically referring to the attached payment of
the surcharge (for late filing of the declaration), the declaration
and the separate listing would be accepted.
Q2. A patent application was already filed, and a declaration
has to be filed in response to a Notice to File Missing Parts. A declaration
signed by the inventors is ready to be filed but it names more than ten
patent practitioners. Can one of the named patent practitioners sign the
separate paper listing ten or fewer patent practitioners under 37 CFR
1.32(c)(3)?
A2. Yes, one of the named patent practitioners could
sign the separate paper under 37 CFR 1.32(c)(3). Alternatively, a signature
on a properly signed transmittal letter specifically referring to the
attached payment of the surcharge (for late filing of the declaration),
the declaration and the separate listing would be acceptable.
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Q3. I have a declaration that was signed before the
effective date of the rule change, so it lists more then ten patent practitioners.
Can it still be filed?
A3. Yes. When filing a continuation, a copy of the
oath or declaration from the prior application is usually filed, and
an oath or declaration from a prior application, or one signed before
(or after the effective date of the change in the rules) can be filed
together with a separate paper listing the ten patent practitioners
to be entered. If the separate paper is not filed, no power of attorney
will be entered. Basically, the document can still be filed, but it
needs to be accompanied by the separate list of 10 or the patent practitioners
listed on the power of attorney will not be entered.
Q4. Can a power of attorney be given to the practitioners
associated with a Customer Number, and then another power of attorney
be filed to ten or fewer patent practitioners?
A4. Yes, but the second power of attorney will be
treated as revoking the first.
Q5. Will a power of attorney naming more than ten patent
practitioners be accepted if it includes a statement “which are
the patent practitioners associated with customer number 12345.
A5. Although this instruction is not a clear appointment
of the practitioners associated with a Customer Number, the Office will
interpret the instruction as a power of attorney to the practitioners
associated with the Customer Number. The Office recommends the following
instruction instead: “I appoint the practitioners associated with
Customer Number 12345, which currently includes name, registration number,
name, registration number, etc.” or “I appoint the practitioners
associated with Customer Number 12345.”
Q6. Will a power of attorney giving power of attorney
to both a list of patent practitioners and to a Customer Number be accepted?
A6. Yes, but the Office will enter only the Customer
Number. See Manual of Patent Examining Procedure, Section 403.
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Q7. If I file a power of attorney giving power of attorney
to both a list of patent practitioners and a Customer Number, does it
matter which is listed first?
A7. No, the Office will enter only the Customer Number
when both a Customer Number and a list of practitioners is provided.
See Manual of Patent Examining Procedure, Section 403.
Q8. In an application in which a power of attorney was
filed giving power of attorney to a list of patent practitioners, can
one of the listed patent practitioners file a paper changing the power
of attorney to a Customer Number (i.e., can the separate paper give a
Customer Number)?
A8. No. The applicant or assignee gave power of attorney
to the list of patent practitioners, not to a Customer Number. If the
power of attorney is to be changed to a Customer Number, which may include
practitioners in addition to those with a power of attorney, or exclude
others now having a power of attorney, the applicant or assignee must
sign a new power of attorney.
Q9. If an application is filed with a power of attorney
naming more than ten patent practitioners, and a separate list naming
a subset of the ten patent practitioners, how can the subset of patent
practitioners be changed? How will the Office process the change in power
of attorney, when the power of attorney signed by the applicant is the
same, but the listing is different.
A9. The subset of practitioners can be changed in
two ways, namely: 1.) A new power of attorney can be filed naming ten
or fewer patent practitioners, or a Customer Number, see 37 CFR 1.32.
If a new power of attorney is filed, it will be treated as a revocation
of the earlier filed POA; or 2.) A copy of the originally filed power
of attorney with a new separate paper (listing) setting forth the different
subset of patent practitioners can be filed. As previously indicated
in question 1, a signature for the correspondence is required, and it
can be supplied by any of the parties set forth in 37 CFR 1.33(b), which
includes: (1) a practitioner of record (identified in the originally
filed subset listing) or one of the practitioners named on the new separate
paper (listing); (2) a practitioners not of record but acting in a representative
capacity under the provisions of 37 CFR 1.34; (3) the assignee of the
applicant(s); or (4) all of the applicants.
If the paper is not signed by the applicant or the assignee, and does
not clearly revoke the prior power, then no letter will be generated
to the originally named attorneys to indicate that they are no longer
of record when the Office processes the second paper.
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Q10. Can the paper designating the ten or fewer patent
practitioners be filed separately from a Power of Attorney?
A10. If the power of attorney was already filed (e.g.,
as part of an oath or declaration), the rule requires that a new copy
of the signed document must be filed with separate paper listing the
patent practitioners to be entered. The Office will nevertheless be
reasonable in enforcing the requirements of the rule. Therefore, if
the power of attorney giving power of attorney to more than ten patent
practitioners was inadvertently filed without a separate paper listing
the patent practitioners to be made of record, the separate listing
may be filed subsequently with a cover letter that identifies the power
of attorney that has been previously filed and states that all the names
on the separate listing appear in the power of attorney, the Office
will enter the separate paper listing rather than requiring applicant
to resubmit the documents as required in the rule.
Q11. Can the separate paper list patent practitioners
who are not listed on the power of attorney?
A11. No.
Q12. Must a Customer Number only have ten or fewer patent
practitioners associated with it?
A12. No, a Customer Number can have any number of
patent practitioners associated with it.
Q13. Can I use more than one Customer Number for the
Power of Attorney for a particular patent application?
A13. No.
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Q14. Will the practitioners who are added to patent
applications by way of an “Authorization to Act in a Representative
Capacity” Form be able to use private PAIR?
A14. No, unless the practitioners are associated with
a Customer Number which is designated as the correspondence address
of the application.
Q15. Who can access the Office's PAIR records?
A15. The attorneys associated with the Customer Number
designated as the correspondence address of the application.
Q16. Will the practitioners who are associated with
the Customer Number in the power of attorney be able to use private PAIR?
A16. No, unless the practitioners are associated with
a Customer Number which is designated as the correspondence address
of the application.
Q17. Is there a limit to the number of practitioners
who may be given an Authorization to Act in a Representative Capacity?
A17. No. Practitioners whose representation is based
upon an Authorization to Act in a Representative Capacity are not entered
into the Office’s computer system and are not considered to be
an attorney or agent of record.
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Q18. Can an attorney who practices under limited recognition
under 37 CFR 11.9(b) have access to private PAIR?
A18. No. An attorney who practices under a limited
recognition under 37 CFR 11.9(b) does not have a registration number
and therefore cannot be associated with a Customer Number. Because the
practitioner cannot be associated with a Customer Number, the attorney
cannot access private PAIR.
Q19. I am filing a reply to an Office action. Because
associate power of attorney has been eliminated, and we already have more
than ten patent practitioners with power of attorney, do I need a new
Power of Attorney to a Customer Number to file a reply?
A19. No. Registered patent practitioners may file
a reply to an Office action so long as they are acting in a representative
capacity. See 37 CFR 1.34. A new power of attorney is not required.
Q20. I am filing a power to inspect. My name is included
on a power of attorney listing more than ten registered patent practitioners,
but not on the separate paper listing the ten practitioners to be made
of record. Do I need a new Power of Attorney to sign the Power to Inspect?
A20. Yes. If you are not included either a Power of
Attorney listing ten or fewer patent practitioners or to a Customer
Number, or in a separate paper pursuant to 37 CFR 1.32(c)(3) that was
filed with a Power of Attorney, then you are not an attorney of record
as set forth in 37 CFR 1.33(b)(1).
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Q21. My application was filed prior to the effective
date without an executed declaration and power of attorney. When the executed
declaration is submitted, is it grandfathered under the old rules because
the application was filed prior to the effective date?
A21. No, the revised practice applies to any power
of attorney filed on or after the effective date, June 25, 2004.
Q22. Does 37 CFR 1.32 apply to applications that have
entered the national stage from an international application after compliance
with 35 U.S.C. 371?
A22. Yes.
Q23. Does 37 CFR 1.32 apply to international applications?
A23. No. 37 CFR 1.32 only applies to an international
application once the national stage has been entered under 35 U.S.C.
371.
Q24. Is a reference to a Customer Number in an Application
Data Sheet a power of attorney?
A24. No.
Q25. Does 37 CFR 1.32 apply to provisional patent applications?
A25. Yes. Provisional applications do not normally
have a power of attorney or an executed declaration. When processing
a provisional application, the Office will enter into Office computer
records for Power of Attorney the name of any registered practitioner
who signs the transmittal letter.
Q26.
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Assignment
Q1. Will assignment documents be returned for assignments
filed with new applications after June 25, 2004?
A1. After June 25, 2004, applicants should expect
to only receive the Notice of Recordation. The assignment documents
submitted for recordation will not be returned.
Q2. The assignment cover sheet (PTO-1595) used to require
both the date of execution of the application and the date of execution
of the assignment. Why was the date of execution of the application removed?
Why was the date of execution of the assignment not also removed?
A2. The space for the date of execution of the application
was removed from the cover sheet (PTO-1595) because this date was never
required by 37 CFR 3.31 (requirements for a cover sheet). Furthermore,
while the date of execution of the application had been required by
37 CFR 3.21 to be included, in certain situations, on the assignment
itself, 37 CFR 3.21 was revised to eliminate that requirement. The requirements
of 37 CFR 3.21 are to assist the Office and others in identifying the
application to which the assignment relates. In the past, when the assignment
was "executed concurrently with, or subsequent to, the execution
of the patent application, but before the patent application was filed"
the Office required the assignment itself to include the date of execution
of the application. This date is no longer a requirement of the assignment
itself because there was confusion about what the date of execution
of the application was, and because the application to which an assignment
relates can be identified without referencing the date of execution
of the application.
The date of execution of the assignment remains a requirement of 37
CFR 3.31(a)(6). This date is a useful date to identify the assignment
document submitted with the cover sheet, so the Office retained the
requirement for the date of execution of the assignment.
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