MPEP 400- 3 Ring Binder Flashcards
Who can represent in from of the Patent Office?
- Inventor(s) - pro se (or joint inventors can select one to represent all)
- A registered patent agent or attorney (not suspended or had license revoked)
How is a FORMAL APPOINTMENT of an agent/attorney made?
MPEP 402
Execute a Power of Attorney
Note: May be on same piece of paper as original oath/declaration
What are the options for how to name agents/attorneys listed in a Power of Attorney?
EITHER/OR- NOT BOTH:
- List a PTO CUSTOMER NUMBER (group of people associated with the # at the PTO)
- List up to TEN INDIVIDUAL NAMES.
- If you list more than 10, MUST have a separate paper listing the 10 who will be responsible
- This paper can be signed by attorney of record
Rule 11.18(b)
EVERY PAPER filed by an agent/attorney MUST be personally signed by practitioner
- Except those specifically required to be signed by the applicant)
- Personal knowledge required
- May execute either a DISCLAIMER or TERMINAL DISCLAIMER
How can a Power of Attorney be fired?
MPEP 402.05
File a REVOCATION
- Can do at any time for any reason (unless they own part of the application)
Merely RECORDING an assignment does NOT automatically revoke POA
What is Acting in a Representative Capacity?
MPEP 405
If a practitioner submits a paper under THEIR NAME and REGISTRATION NUMBER, the PTO will accept this as an indication that the practitioner is……
When is REVOCATION of Power of Attorney effective?
The day RECEIVED by the Patent Office
Can REVOCATION occur when all inventors do not agree?
Yes, but need to…
- Submit a PETITION
- Give good and sufficient REASON
- FEE
PTO will advise inventors who must sign any papers (typically both)
How can an agent/attorney WITHDRAW from representation?
Must file a PETITION (MPEP 402.06)
37 CFR 10.40: Practitioner MUST certify that they:
1. Gave REASONABLE NOTICE to client, prior to expiration of reply period of intent to withdraw
- DELIVERED to the client/authorized rep ALL APPERS AND PROPERTY client is entitled
- NOTIFIED CLIENT of any REPLIES that may be due and TIMEFRAME for response
NOTE: Will be approved provide request is filed PRIOR to the EXPIRATION of a TIME PERIOD for reply or the expiration date of the period which can be obtained by a PETITION AND FEE for extension of time under 37 CFR 1.136(a)
NOTE: If filed after patent is abandoned or issues, will be place in application but will not be considered on the merits
When is WITHDRAWAL from REPRESENTATION effective?
When the Commisioner approves the request
What should you do if a client is completely unavailable (e.g., in a biosphere) and a decision is required to be made regarding an application?
- CANNOT make decision for them, even if they instructed you to make decisions for them. CANNOT SUBSTITUTE YOUR JUDGEMENT FOR THEIRS
- CANNOT file a response in order to postpone present deadline- UNETHICAL RULE 11.18(b)- to do anything just for the purpose of delay
- FILE CONTINUATION.
- If more time is needed, ask the PROSECUTION IS SUSPENDED in the continuation for a definite time
Must you READ a paper before you SIGN it?
Rule 11.18(b)
No longer required!
- Must understand what the papers include
- Must not sign if you know/think there may be a mistake
What is a SUBSTITUTE STATEMENT?
Rule 43 (37 CFR 1.43)
A statement submitted IN LIEU OF and OATH or DECLARATION from an inventor who is UNAVAILABLE (dead, insane, otherwise legally incapacitated, or refuses to participate) in EXECUTION (before filing) of an application
- Made on behalf of the missing inventor only (not any others)
What is the deadline for filing a SUBSTITUTE STATEMENT?
As late as PAYMENT of ISSUE FEE if a signed ADS identifying the inventors has been submitted
NOTE: May be filed early in the filing
What happens to Power of Attorney with DEATH of the INVENTOR AFTER FILING?
New Power of Attorney MUST be obtained from heirs, executors, administrators or assignees
UNLESS-
1. POA is coupled to an interest (owns part of app)
2. Power remains given by a co-inventor
3. Notice of Allowance has already been received
Statement verified by oath or declaration for…
RETROACTIVE FOREIGN FILING LICENSE?
Rule 5.25
YES
Statement verified by oath or declaration for…
ANTEDATING?
Rule 131
YES
Statement verified by oath or declaration for…
SECONDARY CONSIDERATIONS, UTILITY, OPERABILITY??
Rule 132
YES
Statement verified by oath or declaration for…
AFFIDAVIT TO DISQUALIFY PATENT, PRINTED PUBLICATION or other DISCLOSURE AS PRIOR ART?
AIA 35 USC 102(b)(1), (2), Rule 1.130
Yes
Statement verified by oath or declaration for…
MAIL FILED after INTERRUPTION or EMERGENCY?
1.6(e)(2)
NO
(just sign. Don’t need declaration-type of statement)
Statement verified by oath or declaration for…
ESTABLISH A FASCIMILE TRANSMISSION of 1.53(d) (CPA) APPLICATION?
Rule 1.6(f)(iii)
NO
(just sign. Don’t need declaration-type of statement)
Statement verified by oath or declaration for…
EXPRESS MAIL FILING DATE CORRECTION?
Rule 1.10(e)(4)
NO
(just sign. Don’t need declaration-type of statement)
Statement verified by oath or declaration for…
ANY TRANSLATIONS?
NO
(just sign. Don’t need declaration-type of statement)
Statement verified by oath or declaration for…
IDS Statements?
NO
(just sign. Don’t need declaration-type of statement)
Statement verified by oath or declaration for…
REQUEST FOR REEXAMINATION?
Rule 1.510
NO
(just sign. Don’t need declaration-type of statement)
What must an ASSIGNEE do in order to EXCLUDE INVENTORS and/or REVOKE Power of Attorney executed by inventor(s)?
Must establish TITLE or refer to a RECORDED ASSIGNMENT
Three basic principles of ETHICS?
- Don’t lie, cheat or steal (or helps other do this)
- Don’t take on work you don’t feel COMPETENT to handle (legally and technically)
- Avoid CONFLICTS (signed written consent; can’t represent them AGAINST each other)
Requirement for ethically splitting fees with another agent/attorney?
- Partner or associate
- Total fee must be reasonable
- Division is proportionate to services performed
- Full disclosure to client
NO REFERRAL FEES!!
What is required for DUTY to maintain CONFIDENTIALITY?
- CURRENT or FORMER CLIENTS
- Info also must be inside the relationship
NOTE; Be mindful of who you represent
What is your DUTY of DISCLOSURE to you client?
- Own client duty to disclose ANYTHING he/she NEEDS TO KNOW
- Duty not to LIE (at least to anything significant)
COMPENSATION- What is allowed/not allowed?
NOT ALLOWED- Cannot acquire an interest in a LITIGATION or PROCEEEDING
ALLOWED-
- REASONABLE CONTINGENT FEE
- Reasonable interest in a PATENT or APPLICATION as part of the fee
When is a CLIENT NOT ALLOWED to fire an agent/attorney?
When Power of attorney is coupled to an INTEREST IN THE APPLICATION
What are the terms for what the owner does TO HIRE or TO FIRE an agent/attorney?
Hire- POWER of ATTORNEY
Fire- REVOCATION
Your ETHICAL DUTIES to the Patent Office?
DO NOT submit or present anything which…
- Is NOT TRUE
- Is submitted solely for an IMPROPER PURPOSE (includes delay)
DUTY to DISCLOSE- Any UNPRIVILEGED information which established a VIOLATION of DISCIPLINARY Rules by you or someone else
Rule 56?
(37 CFR 1.56)
Duty to disclose ALL INFORMATION known to be MATERIAL to the PATENTABILITY of a PENDING CLAIM.
Duty persists from FILING DATE until claim is CANCELLED or WITHDRAWN or the application becomes ABANDONED
Rule for advertising?
Must IDENTIFY yourself
Limited to the TRUTH
Rule 11.18(b)?
As of Dec 1, 1997, ANYONE (practitioner or not) presenting to the Office (by signing, filing, or later advocating) any paper, IMPLICITLY certifies that…
- All STATEMENTS are TRUE if of the partes own knowledge, or if not, BELIEVED to be TRUE
- After REASONABLE INQUIRY under the circumstances, the party believes that:
- The paper is NOT being presented for IMPROPER PURPOSE
- Claims and other legal contentions ARE WARRANTED by existing law or supported by a NON-FRIVOLOUS argument
- Allegations and factual contentions have EVIDENTARY SUPPORT; and denials of factual contentions are warranted on the evidence
NOTE: Prior o Dec 1, 1997, non-registered practitioners who signed papers to be filed in the USPTO had to execute an oath or make a verification
