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Clarification of Power of Attorney Practice Slide Set (HTML text version)

A copy of the Federal Register notice appears at the Office’s Internet Web site www.uspto.gov at the Federal Register notices web page, presently located at http://www.uspto.gov/web/menu/current.html#register

Final Rule: Power of Attorney Practice and Assignment Rules

Clarification of Power of Attorney Practice, and Revisions to Assignment Rules, 69 Fed. Reg. 29865 (May 26, 2004) (final rule).

Prepared July 12, 2004 by:
Office of Patent Legal Administration (OPLA)
Robert J. Spar, Director
(703) 308-5107
Bob.Spar@USPTO.gov

Significant Changes Made to Certain Rules
§ 1.32 (New Rule) Power of attorney.
§ 1.33 Correspondence Address; Signature Requirements.
§ 1.34 Acting in a Representative Capacity.
§ 3.24 Requirements for documents and cover sheets relating to patents and patent applications.
§ 3.25 Recording requirements for trademark applications and registrations.
§ 3.73 Establishing right of assignee to take action
§ 3.81 Issue of patent to assignee.

Main Changes

  • Power of Attorney related changes:
    • Limit of ten patent practitioners will be made of record if Customer Number practice is not used. § 1.32 (new)
    • Elimination of Associate Power of Attorney practice. § 1.34
  • Assignment changes:
    • Original assignment document must not be submitted for recordation because the document submitted for recordation will no longer be returned. §§ 3.24 & 3.25

Power of Attorney; New 37 CFR 1.32 (a) & (b)

  • 37 CFR 1.32(a) sets forth the following definitions:
    • Power of attorney,
    • Principal,
    • Revocation, and
    • Customer Number (CN)
  • 37 CFR 1.32(b) sets forth power of attorney requirements:
    • Must be in writing,
    • Name one or more representatives in compliance with § 1.32(c),
    • Give the representative power to act on behalf of the principal, and
    • Be signed by the applicant for patent (§ 1.41(b)) or the assignee of the entire interest of the applicant.

Power of Attorney; New 37 CFR 1.32(c)

  • A power of attorney must name as representative either:
    (1) one or more joint inventor;
    (2) up to ten registered patent attorneys or registered patent agents; or
    (3) those registered patent practitioners associated with a Customer Number.

    A Power of Attorney cannot be to both a list of practitioners and to a Customer Number.

  • If a power of attorney names more than ten patent practitioners
    • 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 in application or patent to which the power of attorney is directed.
    • If no separate paper, no power of attorney will be entered.
    • The separate paper can be signed by one of the attorneys or agents of record, by a patent attorney or agent acting in a representative capacity, the assignee, acting pursuant to 37 CFR 3.73(b) or by all of the applicants.
    • The separate paper cannot request that a Customer Number be used instead, only the applicant or assignee can give power of attorney to a Customer Number.

Correspondence Address §1.33(a)

  • The Office will use the address associated with a Customer Number if given, over a typed correspondence address, when more than one correspondence address is given.
  • The Correspondence address given in an Application Data Sheet (§ 1.76) is given priority over any other correspondence address given.

Signature Requirements for Amendments and Other Papers §1.33(b)

  • Correspondence to the Office must be signed by:
    • A registered patent attorney or patent agent of record appointed in compliance with
      § 1.32(b)
    • A registered patent attorney or patent agent not of record who acts in a representative capacity under the provisions of § 1.34
    • An assignee as provided for under § 3.71(b) (unchanged)
    • All of the applicants for patent (unchanged)

Acting in a Representative Capacity § 1.34

  • Paragraph (b) of § 1.34 has been deleted.
  • § 1.34 is now a single paragraph (revising prior § 1.34(a)) limited to acting in a representative capacity.
  • A registered patent attorney or patent agent not of record but acting in a representative capacity must specify his/her:
    • Registration number
    • Name (new requirement)
    • Signature

Acting in a Representative Capacity § 1.34

  • Associate Power of Attorney practice has been eliminated (prior § 1.34(b))
    • Customer Number practice allows the list of patent practitioners associated with an application to be changed easily
    • Use sample form “Authorization to Act in a Representative Capacity” to expressly authorize another practitioner to conduct an interview (available at www.uspto.gov , on the forms page; http://www.uspto.gov/web/forms/sb0084.pdf )
      • As many practitioners can be given an express authorization to act in a representative capacity as is necessary.
  • Associate Powers of Attorney filed before the effective date of the rule change will continue to have effect.

Assignment: Only Copies Should be Submitted for Recordation

  • 37 CFR 3.24 (patents) and 3.25 (trademarks) are amended to provide:
    • Only a copy of an original assignment document may be submitted for recording
    • Electronic filing of assignment documents permitted
  • The Notice of Recordation returned to the applicant has been revised to reflect the title of the invention and docket number stored in the Office’s electronic records, if the notice of recordation is for a single property (application or patent)
  • Assignment documents must be submitted on 8.5 x11 inch paper or DIN size A4

Issuance of Patent to Assignee: Assignment must be submitted for Recordation

  • § 3.81 is amended to modify the practice relating to issuance of a patent to an assignee
    • after payment of an issue fee, a request for a certificate of correction must be filed in order to obtain issuance of the patent to an assignee.
    • if assignment information is submitted after payment of the issue fee, the patent document will not include the assignment information
      • assignment information will be included in a certificate of correction.
  • The practice of allowing a patent to issue to an assignee when an assignment has not been recorded but a statement under 37 CFR 3.73(b) has been filed is discontinued.

What is a Customer Number?

  • A Customer Number is a number that may be used to:
    1. Designate the correspondence address of a patent application (the address associated with the Customer Number will be used for the correspondence address);
    2. Designate the fee address (§ 1.363) of a patent (the fee associated with the Customer Number will be used for the fee address); and
    3. Designate the power of attorney (a list of registered patent practitioners associated with the Customer Number will be recognized as having the power of attorney).

Why Use A Customer Number?

  • Using a Customer Number for the Correspondence Address will allow pro se applicants, or an applicant’s representatives, access to private PAIR.
  • The Office highly recommends that all patent practitioners and applicants have access to private PAIR.
  • To learn how to obtain a customer number and access private PAIR contact the Electronic Business Center (EBC)

Why Use Private PAIR?

Private PAIR allows:

  • IFW Access (added in June 2003) (Coming to public PAIR in Summer 2004);
  • View Outgoing Correspondence Notifications (added in August 2003);
    • Display a list of patent application correspondence, by date, with links to IFW images
  • Pre-Grant Publication Review
    • Submit request for bibliographic data changes online for Pre-Grant Publication purposes
  • Download Cited US References
    • E-Patent Reference (added in December 2003)
  • Search applications by Customer Number or Attorney Docket Number
  • Customer Number for Correspondence Address
    • Submit request for CN Address or Practitioner change online (added in November 2003)
  • Examiner Name Link
    • Examiner’s name in application display links to Employee Locator contact information

Why Use PAIR?

  • In addition private PAIR includes (as does public PAIR):
    • View bibliographic data and file history;
    • View continuity, foreign priority, Pre-Grant Publication numbers and dates, PTA/PTE history;
    • Link to Full-Text and Images on the web for patents and published applications;
    • Link to Office of Finance website for maintenance fee statements and payment information;
    • Search by Class/Subclass/GAU to display associated Class/Subclass and Group Art Unit;
    • Search Employee Locator to display name, phone number and organization.

What is PAIR?

  • Web Interface
  • Access to Certain PALM Data and IFW Images
  • Two Versions:
    • Public PAIR: published applications and patents
      • No specific software required, but only public information available
    • Private PAIR: public application information plus the customer’s unpublished applications in progress
      • Requires session encryption software (USPTO Direct) and a PKI digital certificate for user authentication
      • Can be accessed by pro se applicant or attorney/agent

How to Get Private PAIR?

  • Request a Customer Number through the Electronic Business Center (EBC)
    • Associates a Customer Number with a correspondence address, fee address, and/or a list of practitioners (or pro se inventors)
    • http://www.uspto.gov/ebc/registration_pair.html
  • Request a PKI digital certificate through the EBC
    • Associates a pro se inventor or a patent practitioner with one or more Customer Numbers
    • http://www.uspto.gov/ebc/registration_pair.html
  • Request that applications be associated with the new Customer Number
    • Download and submit a Customer Number Upload Spreadsheet to the Patent EBC to associate multiple applications
    • PTO/SB/81 Power of Attorney and Correspondence Address Indication
    • PTO/SB/122 or 123 Change Correspondence Address, Application or Patent
  • Install USPTO Direct encryption software on computer
    • Use to create PKI digital certificate
    • Use to access private PAIR

Why Use Private PAIR?

  • Four Top Selling Points (additional features are illustrated at the end of the presentation):
    • Image File Wrapper
    • View Outgoing Correspondence Notifications
      • Displays a list of OAs, by date, with links to IFW images
    • Publication Review
    • Download Cited US References

Private PAIR Main Search Screen
[Alternative Text: Image of Private Pair Main Search Screen which allows user in input a search method. User may choose to search for an application by Application Number, Attorney Docket, Patent Number or Publication Number. User may also search by Customer Number and choose to View Outgoing Correspondence Notifications for the past 7 days, 30 days, 60 days or 90 days (discussed later).]

Private PAIR: Image File Wrapper

[Alternative Text: Image of Search results for application number: 10/032,924. Screens displays Application Number, Filing or 371(c) Date, Application Type, Examiner Name, Group Art Unit, Confirmation Number, Attorney Docket Number, Class/SubClass, First Named Inventor, Title of Invention, Customer Number, Status (e.g., Docketed New Case - Ready for Examination), Status Date, Location (e.g., Electronic), Location Date, Earliest Publications No.; Earliest Publication Date, Patent Number (if available) and Issue Date of Patent. From this screen user can select the following search options: Continuity Data, Image File Wrapper, Published Documents).]

Private PAIR: Image File Wrapper IFW Document List

[Alternative Text: Image of Image File Wrapper for Application No: 09/577,499 displaying a list of the file wrapper contents by Mail Room Date, Document Description, document category, and page count. User may click on a link in the document description category to view a document image (e.g., Amendment, Miscellaneous incoming Letter, Applicant Arguments or remarks made in an amendment, etc.). User may also check a box to download document images.]

Private PAIR: Image File Wrapper IFW Document Review

[Alternative Text: Image of screen in Private PAIR showing the first of two pages of the claims for application no. 09/457,474. From this screen, the user may return to the document list or get help about image viewer. The User may also manipulate the available pages (e.g., magnifying the document, scrolling the page, rotating the page, etc.). This screen also provides the user with the ability to view other documents of the IFW application electronically.]

Private PAIR – View Outgoing Correspondence Notifications

View Outgoing Correspondence Notifications

  • Results of View Outgoing Correspondence Notification(s):
    • Application No.
    • Patent No.
    • Attorney Docket Number
    • Mailing Date
    • Document Description
  • Links to document image, if available

Private PAIR: View Outgoing Correspondence Notifications - Search

[Alternative Text: Image of Private Pair Main Search Screen which allows user in input a search method. User may search by Customer Number and choose to View Outgoing Correspondence Notifications for the past 7 days, 30 days, 60 days or 90 days.]

Private PAIR: View Outgoing Correspondence Notifications - Results

[Alternative Text: Image showing 4 results (a listing of application numbers including patent numbers (if applicable), attorney docket number, Mailing date and Document description) for a specific customer number of outgoing correspondence in the past 7 days. The user may link to an IFW document image (if available) from a hyperlink associated with the document description.]

Private PAIR: View Outgoing Correspondence Notifications - View Document Image

[Alternative Text: Image of screen in Private PAIR showing the first of 11 pages of the non-final rejection for application No. 09/773,926. From this screen, the user may return to the document list or get help about image viewer. The User may also manipulate the available pages (e.g., magnifying the document, scrolling the page, rotating the page, etc.). This screen also provides the user with the ability to view other documents of the IFW application electronically.]

Private PAIR: Publication Review and Online Change Request

[Alternative Text: Image of screen in Private PAIR showing search results for application number 59/400,015. Screens displays Application Number, Filing or 371(c) Date, Application Type, Examiner Name, Group Art Unit, Confirmation Number, Attorney Docket Number, Class/SubClass, First Named Inventor, Title of Invention, Customer Number, Status (e.g., Docketed New Case - Ready for Examination), Status Date, Location (e.g., Electronic), Location Date, Earliest Publications No.; Earliest Publication Date, Patent Number (if available) and Issue Date of Patent. From this screen user can select the following search options: Display References, Publication Review. Publication Review is highlighted.]

Private PAIR: Publication Review and Online Change Request - Review Data

[Alternative Text - Image of publication review data screen of private PAIR for patent application number 59/400,015. User may select Request to Change Data from this screen.]

Private PAIR: Publication Review and Online Change Request

[Alternative Text - Image of Requested Publication review changes for application 59/400,015. Screen provides information on change request instructions; and changes that may NOT be requested. User may input correction request (required). Multiple corrections should be numbered. User may also input document type, page number(s) of originally filed application where correct data is located (required) by referring to correction numbers from the inputted correction request. User must include a point of contact name (required), telephone number (required) and e-mail address (optional). After entering all information, the user selects the preview receipt button.]

Private PAIR: Publication Review and Online Change Request - Review Receipt

[Alternative Text - Image of Private PAIR screen change request receipt for application number: 59/400,015. The receipt will include the customer name; date submitted; a description of the requested changes (e.g., 1. change inventor name from "Maria Sanchez" to "Marie Sanchez". 2. Change inventor address from "Brooklyn, NY" to "brooklyn, TX".); the location of the requested changes (e.g., 1. Declaration dated 8/15/2003, page 2. 2. Declaration dated 8/15/2003, page 2.) and point of contact information (contact name, telephone number and email). User will have option to edit changes or transmit request.

Private PAIR: e-Patent Reference

  • Provides electronic access to cited US patent and published application references
  • Deployed to private PAIR customers 12/1/03
    • Launch from private PAIR “Display References” option
    • Select from available reference forms (IDS, PTO-892)
    • Download in PDF format
    • View in Adobe Acrobat Reader®
    • Requires download of free Java® software
  • United States Patents and Patent application publications will no longer be mailed with Office actions. See “USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies”, 1282 Off. Gaz. Patent Office 109 (May 18, 2004)
  • Office will continue to supply paper copies of foreign patent documents and non-patent literature with Office actions.
  • Alternative sources:
    • Patent Images on the Web / Application Images on the Web
    • Purchase from USPTO (Office of Public Records)
    • Purchase from third-party vendors

Private PAIR – e-Patent Reference: Display References
[Alternative Text: Image of screen in Private PAIR showing search results for application number 59/400,015. Screens displays Application Number, Filing or 371(c) Date, Application Type, Examiner Name, Group Art Unit, Confirmation Number, Attorney Docket Number, Class/SubClass, First Named Inventor, Title of Invention, Customer Number, Status (e.g., Docketed New Case - Ready for Examination), Status Date, Location (e.g., Electronic), Location Date, Earliest Publications No.; Earliest Publication Date, Patent Number (if available) and Issue Date of Patent. From this screen user can select the following search options: Display References, Publication Review. Display References is highlighted.]

Private PAIR – e-Patent Reference

[Alternative Text - Image of screen after user selects Display References from the previous screen. From the display references screen the user may hyperlink to any listed PTO-892s or IDSs by selecting any hyperlinked text in the Form Type field. The user can also hyperlink to information on how to download references.]

Private PAIR – e-Patent Reference

[Alternative Text - Image of a list of references (showing reference number, date, pages, size (KB), status, download check box and progress) for a selected ISD or PTO-892. The user may also elect to preview a particular reference, download, select all, clear all or cancel. This screen will bring up the front page of the first listed reference.]

Private PAIR: e-Patent Reference View Downloaded Reference

[Alternative Text - Image of downloaded image in Adobe Acrobat ReaderTM. The user can elect to look at the front page, drawings, specification or claims.]

Thank you!

Questions?
Contact: Karin Ferriter (703) 306-3159
Senior Legal Advisor
Robert J. Spar (703) 308-5107
Director, Office of Patent Legal Administration

Appendix

  • Additional private PAIR features
    • Searching by Customer Number (CN),
    • Submitting Changing the list of patent practitioners or address associated with a CN,
    • Examiner Information
  • Introduction to public PAIR
  • Questions for the EBC

Searching by Customer Number

Searching “Applications by Customer Number” will retrieve the applications in which the Customer Number is used for the Correspondence Address.

[Alternative Text - Please choose the search method. You have reached the secure access site. Option 1: Search for application by: application number. User to insert Number in block labeled "Enter Number". Search Button. Option 2: Search by customer number. User to select customer number in block labeled "Select Customer Number". Search Button.]

Private PAIR: Online Customer Number Data Change Request
[Alternative Text - Image of Screen showing Details for Customer Number: 59. Details include the Correspondence Address and Associated Individuals. User may select Printer Friendly Version or Request Data Change.]

Customer Number data changes may also be submitted on paper by downloading the Request for Customer Number Data Change form and mailing it to USPTO, Mail Stop EBC, P.O. Box 1450, Alexandria VA 22313, or faxing it to (703)308-2840.

Private PAIR: Online Customer Number Change Request

[Alternative Text - Image of Screen Request Data Changes for Customer Number 59. Information includes Name of Individual Submitting Request: Mary Test Small. Registration No. (required): 32038.
Section 1. Check box to select to Please change Customer Number Address to: (user to enter data for following fields): Firm or Individual Name Line 1; Firm or Individual Name Line 2; Address Line 1; Address Line 2; City: State; Zip; Country; Telephone; E-Mail Address; Fax.
Section 2. Please delete the following practitioner registration number(s) from the Customer Number indicated above: Screen includes check boxes in front of each registration number associated with the customer number.
Section 3. Please add the following practitioner registration number(s) to the Customer Number indicated above: User may enter up to 50 new registration numbers.
Point of Contact Name (for this request)(required) enter name. Point of Contact Telephone (required): Enter phone number. Point of Contact E-Mail. Enter email address. Review Requested Changes Button.]

Private PAIR - Examiner Name Link

[Alternative Text: Image of screen in Private PAIR showing search results for application number 10/204,379. Screens displays Application Number, Filing or 371(c) Date, Application Type, Examiner Name, Group Art Unit, Confirmation Number, Attorney Docket Number, Class/SubClass, First Named Inventor, Title of Invention, Customer Number, Status (e.g., Docketed New Case - Ready for Examination), Status Date, Location (e.g., Electronic), Location Date, Earliest Publications No.; Earliest Publication Date, Patent Number (if available) and Issue Date of Patent. PTO Employee Information Screen. Query by name search. 1 records were found. Employee, phone, ext., Office and Office Description.]

Introduction to Public PAIR

  • Search by application number, patent number, or publication number
  • View bibliographic data and file history
  • View continuity, foreign priority, Pre-Grant Publication numbers and dates, PTA/PTE history
  • Link to Full-Text and Images on the web for patents and published applications
  • Link to Office of Finance website for maintenance fee statements and payment info
  • Search by Class/Subclass/GAU to display associated Class/Subclass and Group Art Unit.
  • Search Employee Locator to display name, phone number and organization

Public PAIR

[Alternative Text - Image of Public PAIR home page http://pair.uspto.gov/cgi_bin/final/home.pl ]

Public PAIR-Application Detail - Pending
[Alternative Text - Search results for application number: 09/878,111. Information available includes bibliographic data; continuity data, publication dates, published documents, and PALM File history.]

Public PAIR-Application Detail -Patent

[Alternative Text - Search results for application number: 08/999,942. Information available includes bibliographic data; continuity data, links to Office of Finance website for maintenance fee information, and PALM File history.]

Contact Electronic Business Center (EBC)

  • Customer Number
    • How to obtain a customer number?
    • Which form do I use?
    • How will I receive my customer number?
  • PKI Certificate
    • How do I get access to private PAIR?
    • How long does it take to get my codes?
    • How to create or recover a profile?
  • Electronic Filing System (EFS)
    • I can’t download this software from the website, how do I get this software?
    • How do I resolve the errors that I get when I validate in Epave?
    • I have XP, how do I do my specification if PASAT is not compatible?
  • Patent Application Information Retrieval (PAIR)
    • Why do I get an invalid error when I enter in my case number?
    • I forgot my password, how can I gain access to PAIR?
    • My company uses proxys on our server, how can I connect to PAIR?

See also PAIR Frequently Asked Questions:
http://pair_direct.uspto.gov/final/images/pair_faq.html

Visit the Office’s website at:
http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html for Recent Patent-Related Notices

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