MPEP 400 Flashcards
37 CFR 1.31 Applicant may be represented by one or more patent practitioners or joint inventors.
- applicant may file, prosecute his own case;
- or applicant may be represented by one or more practitioners, or joint inventors;
- juristic entity must be represented by a practitioner
- Pro Se: “ for oneself”, or “one one’s own behalf”
402 Power of Attorney; Naming Representative
37 CFR 1.32 Power of attorney
- power of attorney may name: 1. joint inventors, 2. registered practitioners associated with a Customer Number; 3. ten or fewer practitioners
- power of attorney can not name firms;
- the attorney or agent appointed in the power of attorney must be registered to practice before the Office.
- Otherwise, the office will send the filing receipt to the 1st named applicant.
402.01 Limited Recognition in Patent Matters
37 CFR 11.9 Limited recognition in patent matters
37 CFR 11.9 Limited recognition in patent matters
(a) limited recognition by OED director;
(b) nonimmigrant alien in the US;
(c) individual appointed by the applicant prosecuting an international patent application.
402.02(a) Appointment of Power of Attorney AFTER 9/16/2012
37 CFR 1.32 Power of attorney
- power of attorney must be signed, by applicant, or the patent owner;
- Applicant:
- inventor, joint inventors, or
- rep of deceased inventor;
- joint invertors
- assignee, or person with proprietary interest
PTO/AIA/80, used by assignees
PTO/AIA/81, used by joint inventors
PTO/AIA/82, used by the applicant to appoint one or more patent practitioners
PTO/AIA/81A, used by the applicant for patent to appoint one or more patent practitioners, must be signed by the applicant or the current patent owner.
402.02(a) Appointment of Power of Attorney BEFORE 9/16/2012
37 CFR 1.32 (pre-AIA) Power of attorney
Diff: (b) (4) be signed by the patent owner VS by the assignee of the entire interest
402.04 Acting in a Representative Capacity
37 CFR 1.34 Acting in a representative capacity
a patent practitioner must be submitting the paper on behalf of all parties identified as the applicant. Unless a petition is granted, CFR1.36(a), CFR 1.183.
-
402.05 Revocation of Power of Attorney
- on the date that the revocation of a power of attorney is RECEIVED in the Office
402.05(a) Applicant Revocation - Application Filed On or After September 16, 2012
37 CFR 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent (a)
- A power of attorney may be revoked only by the applicant or patent owner. An assignee has to become an owner to revoke.
- the most recently filed power of attorney will control.
402.05(b) Applicant Revocation - Application Filed Before September 16, 2012
37 CFR 1.36 (pre-AIA) Revocation of power of attorney; withdrawal of patent attorney or agent (a)
AIA VS pre-AIA: patent owner vs assignee of the entire interest
402.06 Attorney or Agent Withdraws
37 CFR 1.36 (b)
37 CFR 11.116 Declining or terminating representation
- A registered patent attorney or patent agent may withdraw as attorney or agent of record upon application to and approval by the Director.
- The withdrawal is effective when
approved rather than when received. - Each attorney of record must sign the notice of withdrawal
- withdrawal request will be reviewed by the Office as long as it is filed prior to the ex. date of reply, or the date of extension
- request filed after issue will be kept in the file but not be treated.
402.06 Attorney or Agent Withdraws
37 CFR 1.36 (b)
37 CFR 11.116 Declining or terminating representation
- A registered patent attorney or patent agent may withdraw as attorney or agent of record upon application to and approval by the Director.
- The withdrawal is effective when approved rather than when received.
- Each attorney of record must sign the notice of withdrawal
- withdrawal request will be reviewed by the Office as long as it is filed prior to the exp. date of reply, or the date of extension
- request filed after issue will be kept in the file but not be treated.
402.08 Application in Interference or
Derivation Proceeding
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for
consideration.
402.08 Application in Interference or
Derivation Proceeding
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
403 Correspondence - With Whom Held;
Customer Number Practice
Customer number: used to designated
– the correspondence address of an application ,
– or the fee address of a patent,
– and used to submit a power of attorney in the
application to the registered practitioners
- customer # with correspondence used to get access to PARI
- a correspondence address must be provided by the applicant; if not, the applicant will have 2 months from the filing date to provide.
403.01(a) Correspondence in Applications
Filed On or After September 16, 2012
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings
- who can change the correspondence address:
– a practitioner of record
– the applicant
– any patent practitioner named in the
application transmittal papers who acts in a representative capacity before the appointment of a power of attorney;
–
403 Correspondence - With Whom Held;
Customer Number Practice
Customer number: used to designated
– the correspondence address of an application ,
– or the fee address of a patent,
– and used to submit a power of attorney in the
application to the registered practitioners
- customer # with correspondence used to get access to PARI
- a correspondence address must be provided by the applicant; if not, the applicant will have 2 months from the filing date to provide the correspondence address.
403.01(a) Correspondence in Applications
Filed On or After September 16, 2012
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings
- who can change the correspondence address:
– a practitioner of record
– the applicant
– any patent practitioner named in the
application transmittal papers who acts in a representative capacity before the appointment of a power of attorney;
405 Interviews With Patent Practitioner Not of Record
- Interviews may be conducted with a registered practitioner who has proper authority from the applicant, or an attorney or agent of record in the form of a power of attorney or authorization to act in a representative capacity; whether or not the
practitioner has a copy of the application file.
406 Death of Patent Practitioner
- The power of attorney of a patent practitioner will be revoked or terminated by his or her death.
- The patent practitioner may not appoint a “substitute”.
405 Interviews With Patent Practitioner Not of Record
- Interviews may be conducted with a registered practitioner who has proper authority from the applicant, or an attorney or agent of record in the form of a power of attorney or authorization to act in a representative capacity; whether or not the
practitioner has a copy of the application file.
409 Death, Legal Incapacity, or
Unavailability of Inventor
409.01(a) - Application Filed on or After
September 16, 2012
35 U.S.C. 117 Death or incapacity of inventor
37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor
-the death of an inventor who is an
applicant party terminates the power of attorney given by the deceased inventor in an application filed on or after September 16, 2012
- A new power from the heirs, administrators, executors, or assignees is necessary.
- the living joint inventor(s) who are the applicant must submit proof that the
other joint inventor-applicant is dead. Upon submission of such proof, only the signatures of the living joint inventor-applicants are required.
409.02 Unavailable Joint Inventor –
Application Filed on or after September 16, 2012
37 CFR 1.45 Application for patent by joint inventors.
- 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(s) may make the application for patent on behalf of themselves and the omitted inventor.
409.03(e) Statement of Last Known Address
- An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.
409 Death, Legal Incapacity, or
Unavailability of Inventor
409.01(a) - Application Filed on or After
September 16, 2012
35 U.S.C. 117 Death or incapacity of inventor
37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor
-the death of an inventor who is an
applicant party terminates the power of attorney given by the deceased inventor in an application filed on or after September 16, 2012
- A new power of attorney from the heirs, administrators, executors, or assignees is necessary.
- the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead. Upon submission of such proof, only the signatures of the living joint inventor-applicants are required.
410 Representations to the U.S. Patent and
Trademark Office
- An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.
