An applicant for a patent may apply on his or her own behalf, pro se, or may be represented by a registered attorney or agent. An applicant may appoint a registered attorney or agent as a representative by:
- executing a power of attorney or authorization of agent, or
- having a registered attorney/agent appear in person before the PTO, or
- signing a paper on behalf of the applicant before the PTO.
The PTO only recognizes individuals as registered attorneys or agents; it does not recognize law firms.
Correspondence with the PTO
The applicant must provide one correspondence address. The correspondence and fee addresses may be different. If after one attorney is appointed, another attorney is appointed without revocation of the power of the first attorney, PTO letters will be sent to the later.
A customer number may be assigned to a particular applicant. Customer numbers are a convenience and provide 1) a correspondence address, 2) a fee address, and 3) list of the practitioners with power of attorney.
The last provided customer number determines correspondence address. An applicant can appoint practitioners merely by reference in the power of attorney to the customer number. A representative can be added or removed practitioners from the list associated with the customer number.
The power to hold a phone interview is discretionary by the examiner. An attorney should call the examiner if the call will be beneficial to advance prosecution. If the attorney or representative is in the DC area, an interview can be conducted in person.
37 CFR 10.18(b)
Every paper filed to the practitioner must be personally signed by the practitioner except those required to be signed by the applicant. By signing a paper before the PTO, the practitioner is making the certifications required by 37 CFR 10.18(b). (All papers signed must be truthful.) Advising a client of these requirements is not required, but is recommended.
Changing Representation: Change, Revocation, or Resignation
Applicant May Change/Revoke Representation
When an applicant or assignee is represented by a registered agent or attorney, he or she may change or revoke his or her representation at any time for any reason. Change or revocation becomes effective on the date it is received by the PTO.
- An assignment will not itself operate as a revocation or authorization, but the assignee of the entire interest may revoke previous powers and appoint another attorney or agent.
- Revocation of the power of the principal attorney revokes powers granted by her to other attorneys.
Papers giving or revoking a power of attorney require signature by all applicants or owners unless they are accompanied by a petition giving sufficient reason as to why such papers should otherwise be accepted. Each of these parties must also sign all subsequent replies submitted to the PTO. For example, if A has given power of attorney to Smith and B has not, replies must be signed by Smith and B. If A and B has each appointed their own attorney, replies must be signed by both attorneys.
Attorney May Resign (pending restrictions)
The representative of the applicant may resign with some restrictions. A withdraw is effective when approved rather than when received. So the applicant has sufficient time to obtain other representation, the Commissioner usually requires that there be at least 30 days between 1) approval of withdraw and the end of a reply period, or 2) the expiration date of the period which can be obtained by a petition for extension of time.
Situations Where Representation Ceases
Principal Attorney’s Power Terminates at Death
Death of the inventor terminates the power of attorney given by him. A patent applied for by an inventor who later dies may issue to his legal representative.
Unless a power of attorney is coupled with an interest (i.e., an attorney is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. [MPEP 409.01. See also 37 CFR 1.422.]
If the Inventor is Dead, Insane or Unavailable
If the inventor is dead, refuses to execute an application, cannot be found, or is insane or otherwise legally incapacitated, an application may be made by someone other than the inventor.
If at least one inventor is available, the available inventors can apply. If a joint inventor refuses to join in an application or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the non-signing inventor. The oath in such application must be accompanied by a petition showing the last known address of the unavailable inventor or representatives of deceased inventors. A non-signing inventor may subsequently join the application.
If no inventors are available, an assignee, or an interested party may be able to apply. Whenever all the inventors and legal representatives of deceased inventors refuse to execute an application or cannot be reached after diligent effort, a person or corporation may make an application. An inventor may subsequently join the application. The oath in such application must be accompanied by a petition showing:
- The applicant is one to whom the inventor agreed to assign the invention or the applicant shows a sufficient proprietary interest; and
- Such action is necessary to preserve the rights of the parties or such action is necessary to prevent irreparable harm; and
- The last known address of the inventors or representatives of the deceased inventors.
Proof of Unavailability – The oath in such an application must be accompanied by a petition fully describing exact pertinent facts, and in the case of unavailable representative of a deceased inventor, proof of his authority as representative. Statements based on hearsay will not normally be accepted.
Proof of Refusal – The circumstances of this refusal must be specified in an affidavit by the person to whom the refusal was made stating the time and place of the refusal. When there is a written refusal, a copy of the document must be made part of the affidavit. It must be demonstrated that a bona fide attempt was made to present a copy of the application papers to the non-signing inventor for signature.
When there is only 1 inventor who is not available to sign the oath, or if there are NO inventors available to sign:
- If inventor is dead, insane, legally incapacitated, refuses to execute the oath, or cannot be found, an app may be made by someone other than the inventor (see 409.03(b) & 37 CFR 1.47(b) for the rules needed)
- Under 37 1.47(b) the following are only allowed when no inventor is available
- applicant must take the normal oath required under 37 CFR 1.63, 1.64, 1.175
- Applicant must state relationship to the inventor (37 CFR 1.64)
- Applicant must have proof that inventor (1) cannot be found after a diligent effort to find him; OR (2) refuses to execute oath & sign the app
- Last known address of the inventor must be stated
- The applicant needs to make the prima facie case that: (1) invention has been assigned to him; OR (2) inventor agreed in writing to assign the invention to the applicant; OR (3) otherwise demonstrate a proprietary interest in the subject matter of the app (show reason for why the applicant should be allowed to get the patent)
- Applicant must prove that filing the app without any inventors is necessary (1) to preserve rights of parties; OR (2) to prevent irreparable damage.
When there are multiple inventors but some are available while others are not:
- 37 CFR 1.47(a): all of the available inventors have to file on behalf of themselves (just like normal) AND:
- Make an oath or declaration on behalf of non-signing joint inventors (37 CFR 1.64)
- The non-signer must either refuse to sign, or be unlocatable after a ‘diligent’ search
- All of the inventors must still be listed
- A blank line by the non-signing inventors’ names will be treated as having been signed on their behalf by the other inventors.
- The application must have proof that non-signing inventors:
- cannot be found or reached after diligent effort ||
- refuses to execute the oath
- Last known address of non-signing inventor
When an atty dies: The power of atty is revoked (duh) but more importantly, if the atty who died was the principal atty who assigned powers to other people, their power terminates too.
Proof of the Proprietary Interest (for 37 1.47(b) apps when no original inventor is signing):
- The invention has to be assigned to the applicant ||
- Inventor has agreed in writing to assign the invention ||
- applicant has otherwise sufficient proprietary interest in the subject matter to justify filing the app
Non-signing Inventor’s Rights:
The non-signing inventor may protest the designation as an inventor, and is allowed to inspect any part of the app itself (even if not published). The non-signing inventor may also have his own agent or atty to inspect the record.
Representations to the USPTO (See 37 CFR 1.4(d)(4) in the Charts, also 37 CFR 10.18):
- 37 CFR 1.4(d) (4) says that representations to the USPTO (of any kind of filing, by either a patet practitioner or another party) constitute a certification under 37 CFR 10.18(b), and violations of the certification can be punished under 37 CFR 10.18(c). Practioners who violate the rule may also face disciplinary action too.
- What 37 CFR 10.18(b) states there are 2 certification:
- 1. that statements made in a filing are subject to 37 CFR 1.68
- 2. Rule 11(b) under the FRCP applies to all filings too. (YAY CivPro!)
- Finally: If you want to accuse another party of infringement, it is a violation of FRCP Rule 11 to do so without first obtaining & examining the accused infringing device.