Patbar Notes Set I Aug 2014 Flashcards
Ch. 400- Representative of Inventor or owner
It has been reported that an exam question involves a Canadian agent who is registered in the USPTO now resides in the U.S. If this becomes known to the OED/USPTO, the agent’s status as a U.S. agent will be promptly removed.
Ownership Does not need to be established
Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a continued prosecution application under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed; signs a small entity statement; signs a statement of common ownership of two inventions; signs an affidavit under 37 CFR 1.131 where the inventor is unavailable; signs a certificate under 37 CFR 1.8; or files a request for reexamination of a patent under 37 CFR 1.510.
It has been reported that the above paragraph has been tested on the exam. The correct answer was “signs a small entity statement.”
A person acting in representative capacity MAY NOT
A person acting in a representative capacity may not sign:
(1) A power of attorney.
(2) A document granting access to an application (except where an executed oath or declaration has not been filed, and the patent practitioner was named in the papers accompanying the application papers).
(3) A change of correspondence address (except where an executed oath or declaration has not been filed, and the patent practitioner filed the application).
(4) A terminal disclaimer.
(5) A request for an express abandonment without filing a continuing application.
Filing a statement under 3.73(b)
Assignee becomes of action.
Revocation of the power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE).
U.S. Applicant exception
The applicants in a U.S. patent application must be the inventors except where 37 CFR 1.42, 1.43, or 1.47 apply. The exceptions apply where an inventor is deceased, legally incapacitated, or refuses to sign or cannot be found after diligent effort.
A patent app filed without a corresponding address
2 months from the filing date in which to do so before abandonment occurs.
Death of Inventor
Another variation: Inventor dies after application filed and after the assignment of all rights and before allowance of the application. When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes.
Death of Inventor
Another fact pattern: Inventor dead, appointed best fried as executor/administrator of will. Son thinks that he will be one of the heirs of the estate. Son wants to go ahead and file for patent application on Dad’s invention. If the estate is over the sum required by state law for the appointment of administrator, the administrator (executor or legal representative) may file the application. If there was no will, or no executor was appointed in the will and the estate was under the sum required by the state for appointing an executor, then the heirs can file the application.
Death of Inventor
One fact pattern reported: Death of inventor before the application was filed, the inventor was in possession of the invention prior to death, the invention was a fishing device, the heir is 13 years old and legally incapacitated, and Barbara has the power of attorney in the inventor’s living will. In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent (37 CFR 1.42), or one who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with 37 CFR 1.42.
Death of Inventor
It is apparent that there are a number of questions involving the death of an inventor on the exam. It is reported that there is a question where the inventor assigns part of the invention to a practitioner and promptly dies. Unless a power of attorney is coupled with an interest (i.e., the patent practitioner 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. See MPEP 409.01.
Death/Incapacity
It has been reported that the following points may have been tested on the exam:
If the inventor is dead, insane, or otherwise legally incapacitated, an application may be made by someone other than the inventor as provided for in 37 CFR 1.42 and 1.43.
A minor (under age 18) inventor may execute an oath or declaration under 37 CFR 1.63 as long as the minor is competent to sign (i.e., understands the document that he or she is signing).
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.
Death/Incapacity
Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.
When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes.
When an inventor dies after filing an application and executing the oath or declaration required by 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene. This practice is applicable to an application which has been placed in condition for allowance or passed to issue prior to notification of the death of the inventor.
Unavailable inventor
When a joint inventor of a pro se application dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead. Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene. If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit an oath or declaration in compliance with 37 CFR 1.63 and 1.64.
A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in 37 CFR 3.73(b).
Separate verification
As statements submitted to the USPTO by any person are now, by operation of 37 CFR 11.18(b)(1), verified statements, a separate verification requirement is no longer necessary. The USPTO, however, has retained the verification requirement for a statement to be submitted under oath or declaration in a number of sections (e.g., 37 CFR 1.63, 1.130, 1.131, 1.132, 1.495(f), and 5.25).
Things that can be FAX 502.01
It has been reported that a question requires that you know what correspondence can be transmitted by fax. The following items may be filed by fax:
A CPA filed under 37 CFR 1.53(d), amendments, declarations, petitions, information disclosure statements (IDS’s), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examinations (RCE’s), assignment documents, issue fee transmittals and authorizations to charge deposit accounts.
NOTE: CPA cannot benefit from certificate of transmission, even though it can be faxed.