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402    Power of Attorney; Naming Representative [R-11.2013]

37 C.F.R. 1.32   Power of attorney.

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  • (c) A power of attorney may only name as representative:
    • (1) One or more joint inventors (§ 1.45);
    • (2) Those registered patent practitioners associated with a Customer Number;
    • (3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such 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 the application or patent to which the power of attorney is directed.

I.   NAMING REPRESENTATIVE IN A POWER OF ATTORNEY

An applicant may give a power of attorney to one or more patent practitioners or one or more joint inventors. A power of attorney to a joint inventor will be recognized even though the one to whom it is given is not a registered practitioner. See 37 CFR 1.31 and 37 CFR 1.32(c)(1).

Powers of attorney naming firms of attorneys or agents filed in patent applications will not be recognized. Furthermore, a power of attorney that names more than ten patent practitioners will only be entered if Customer Number practice is used or if such power of attorney is 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 the application or patent to which the power of attorney is directed. If a power of attorney is not entered because more than ten patent practitioners were named, a copy of the power of attorney should be refiled with the separate paper as set forth in 37 CFR 1.32(c)(3).

Powers of attorney naming joint inventors, one or more registered individuals, or all registered practitioners associated with a Customer Number, may be made. See MPEP § 403 for Customer Number practice. Where a power of attorney is given to ten or fewer patent practitioners, 37 CFR 1.32(c)(3) requires the name and registration number of each patent practitioner to be stated in the power of attorney. If the name submitted on the power of attorney does not match the name associated with the registration number provided in the Office of Enrollment and Discipline records for patent practitioners, the person that the Office will recognize as being of record will be the person associated with the registration number provided, because the Office enters the registration number, not the name, when making the practitioner of record. Accordingly, if the wrong registration number is provided, a new power of attorney will be required to correct the error.

See MPEP § 601.03 for change of correspondence address. See MPEP § 201.06(c), 402.02(a), and 402.02(b) for change in the power of attorney in continuation or divisional applications filed under 37 CFR 1.53(b). See MPEP § 403 for the addition and/or deletion of a practitioner from the list of practitioners associated with a Customer Number. For a representative of a requester of reexamination, see MPEP § 2213.

II.   REGISTERED PRACTITIONERS

For a power of attorney to be valid, the attorney or agent appointed must be registered to practice before the U.S. Patent and Trademark Office in accordance with 37 CFR 11.6.Note that under 37 CFR 11.6(c), certain foreigners who are in good standing before the patent office of the country in which they reside and practice may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country.

Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent matters.

III.   INEFFECTIVE POWER OF ATTORNEY

When an application for patent is filed accompanied by a power of attorney to a person who is neither registered to practice before the United States Patent and Trademark Office nor named as the inventor or a joint inventor in the application, the Office of Patent Application Processing will send the official filing receipt directly to the first named applicant, together with an explanatory letter. A copy of the letter will be sent to the person named in the power and a copy placed in the file without being given a paper number. The name of the unregistered person will not be added to the list of patent practitioners of record for the application in the Office’s electronic records.

Form paragraph 4.09 may be used to notify applicant that the attorney or agent is not registered.

¶ 4.09    Unregistered Attorney or Agent

An examination of this application reveals that applicant has attempted to appoint an attorney or agent who is neither registered to practice before the U.S. Patent and Trademark Office in patent matters nor named as an inventor in the application, contrary to the Code of Federal Regulations, 37 CFR 1.31 and 1.32. Therefore, the appointment is void, ab initio, and the Office will not recognize the appointment. All communications from the Office will be addressed to the first named applicant, unless specific instructions to the contrary are supplied by the applicant(s) for patent or owner(s).

For applications filed before September 16, 2012, in the absence of the appointment of a registered practitioner, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34

For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.

While an applicant (other than a juristic entity) may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is, therefore, encouraged to secure the services of a registered patent attorney or agent (i.e., registered to practice before the U.S. Patent and Trademark Office) to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.

The Office cannot aid you in selecting a registered attorney or agent, however, a list of attorneys and agents registered to practice before the U.S. Patent and Trademark Office is available at https://oedci.uspto.gov/OEDCI/. For assistance locating this information, contact the Office of Enrollment and Discipline at (571) 272-4097 or call the Inventors Assistance Center toll-free number, 1(800)786-9199.

Examiner Note:

This form paragraph is to be used ONLY after ensuring that the named representative is not registered with the Office. A PALM inquiry should be first made and if no listing is given, the Office of Enrollment and Discipline should be contacted to determine the current “recognition” status of the individual named by the applicant in a “power of attorney.” If the named individual is NOT registered or otherwise recognized by the Office, the correspondence address of record should be promptly changed to that of the first named applicant unless applicant specifically provides a different “correspondence address.” A copy of the Office communication incorporating this form paragraph should also be mailed to the unregistered individual named by the applicant in the “power of attorney.”

402.01   Limited Recognition in Patent Matters [R-11.2013]

37 C.F.R. 11.9   Limited recognition in patent matters.

  • (a) Any individual not registered under § 11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
  • (b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.
  • (c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.

If a request for limited recognition under 37 CFR 11.9 accompanies the application, the Office of Patent Application Processing will forward the file to the Director of the Office of Enrollment and Discipline.

402.02   Appointment of Power of Attorney [R-11.2013]

For appointment of a power of attorney in applications filed on or after September 16, 2012, see MPEP § 402.02(a). For appointment of a power of attorney in applications filed before September 16, 2012, see MPEP § 402.02(b).

Note that effective June 25, 2004, the associate power of attorney practice was eliminated. See Revision of Power of Attorney and Assignment Practice, 69 Fed. Reg. 29865 (May 2004). The Office no longer accepts a power of attorney signed by a principal to name an associate power of attorney. An appointment of an associate power of attorney filed on or after June 25, 2004 will not be accepted. See also MPEP § 406.

402.02(a)   Appointment in Application Filed On or After September 16, 2012

[Editor Note: See MPEP § 402.02(b) for information pertaining to appointment of a power of attorney in an application filed before September 16, 2012.]

37 C.F.R. 1.32  Power of attorney.

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  • (b) A power of attorney must:
    • (1) Be in writing;
    • (2) Name one or more representatives in compliance with paragraph (c) of this section;
    • (3) Give the representative power to act on behalf of the principal; and
    • (4) Be signed by the applicant for patent (§ 1.42) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.

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  • (d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
    • (1) The power of attorney was granted by the inventor; and
    • (2) The continuing application names an inventor who was not named as an inventor in the prior application.
  • (e) If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to § 1.34, if applicable.

I.   General Requirements for Powers of Attorney

For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application.

Pursuant to 37 CFR 1.42, the word “applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent as provided in 37 CFR 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.45 (joint inventor(s) on behalf of themselves and an omitted inventor) or 1.46 (assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest). As set forth in 37 CFR 1.42(b), if a person is applying for a patent as provided in 37 CFR 1.46, that person (which may be a juristic entity), and not the inventor, is the applicant. In this situation the Office would not accept a power of attorney from the inventor. An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71. See also MPEP § 325. Persons who otherwise show sufficient proprietary interest in the matter may supply a power of attorney along with a petition under 37 CFR 1.46(b)(2), which power would be effective once the petition is granted.

An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73). See MPEP § 325. A patent owner who was not the applicant under 37 CFR 1.46 must appoint any power of attorney in compliance with 37 CFR 3.71 and 3.73. This covers a patent owner in a reissue application who was not the applicant under 37 CFR 1.46 in the application for the original patent, as well as a patent owner in a supplemental examination or reexamination proceeding who was not the applicant under 37 CFR 1.46.

The power of attorney must be signed by someone who is authorized to act on behalf of the assignee-applicant (i.e., a person with a title that carries apparent authority, or a person who includes a statement of authorization to act.). A patent practitioner is not authorized to act on behalf of an assignee simply by existence of authority to prosecute an application.

II.   Powers of Attorney in Continuing Applications

Pursuant to 37 CFR 1.32(d), a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless: (1) The power of attorney was granted by the inventor; and (2) the continuing application names an inventor who was not named as an inventor in the prior application. Thus 37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).

III.   Power of Attorney Forms for Applications filed on or after September 16, 2012

These forms should only be used in applications filed on or after September 16, 2012. Applications filed before September 16, 2012, are subject to the requirements of pre-AIA 37 CFR 1.32, 1.33, 3.71 and 3.73. See MPEP § 402.02(b). Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO Web site.

Form PTO/AIA/80 should be used by assignees who want to become the applicant (see 37 CFR 1.46(c)). The form may also be used by assignee-applicants who were named as the applicant when the application was filed, if desired. In either situation, this form must be accompanied by a statement under 37 CFR 3.73(c) (form PTO/AIA/96 or equivalent). Where an assignee gives the practitioner specific authority to act on behalf of the assignee (e.g., authority given by organizational resolution), a practitioner may sign the PTO/AIA/80 on behalf of the assignee. Where an assignee is named as the applicant in the patent application (i.e., in a signed Application Data Sheet, form PTO/AIA/14 or equivalent), the assignee-applicant can appoint a power of attorney using the PTO/AIA/82 form.

402.02(b)   Appointment in Application Filed Before September 16, 2012

[Editor Note: See MPEP § 402.02(a) for information pertaining to appointment of a power of attorney in an application filed on or after September 16, 2012.]

I.   General Requirements for Powers of Attorney

37 C.F.R. 1.32 (pre-AIA)  Power of attorney.

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  • (b) A power of attorney must:
    • (1) Be in writing;
    • (2) Name one or more representatives in compliance with paragraph (c) of this section;
    • (3) Give the representative power to act on behalf of the principal; and
    • (4) Be signed by the applicant for patent (§ 1.41(b)) or the assignee of the entire interest of the applicant.

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For applications filed before September 16, 2012, pre-AIA 37 CFR 1.32(b) sets forth that a power of attorney must be signed by the applicant for patent or the assignee of the entire interest of the applicant.

Pursuant to pre-AIA 37 CFR 1.41(b), the word “applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent in place of the inventor under pre-AIA 37 CFR 1.42 (legal representative of deceased inventor), 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.47(a) (joint inventor(s) on behalf of themselves and joint inventor(s) who refuse to join or cannot be reached or found after diligent effort) or 1.47(b) (by assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest whenever all of the inventors refuse to sign or cannot be found or reached after diligent effort). Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides a combined declaration and power of attorney form on the USPTO Web site.

While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client. Additionally, relationships between an assignee and the inventors may deteriorate. It is not uncommon in these situations for inventors to stop cooperating and in some cases file powers of attorney in an attempt to control prosecution of the application. 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 pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b). See MPEP § 324.

II.   Powers of Attorney in Continuing Applications

When filing a continuation or divisional application with a copy of a declaration from the parent application in accordance with pre-AIA 37 CFR 1.63(d), applicants are required to identify in the continuation or divisional application any change in power of attorney that occurred after the filing of the parent application. See pre-AIA 37 CFR 1.63(d)(4). The Office suggests doing so by submitting a copy of the most recent power of attorney from the parent application in the continuing application to ensure that the Office recognizes the correct power of attorney.

III.   Power of Attorney Forms for Applications filed before September 16, 2012

These forms should only be used in applications filed before September 16, 2012. Applications filed on or after September 16, 2012, are subject to the requirements of current 37 CFR 1.32, 1.33, 3.71 and 3.73. See MPEP § 402.02(a). Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO Web site.

402.03   Signature Requirements for Papers Filed in an Application [R-11.2013]

I.   SIGNATURE AND CERTIFICATE

37 C.F.R. 11.18  Signature and certificate for correspondence filed in the Office.

  • (a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this subchapter.
  • (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
    • (1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
    • (2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
      • (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
      • (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
      • (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
      • (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
  • (c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
    • (1) Striking the offending paper;
    • (2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
    • (3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
    • (4) Affecting the weight given to the offending paper; or
    • (5) Terminating the proceedings in the Office.
  • (d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.

37 CFR 11.18(a) emphasizes that every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party.

37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or nonpractitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure. See MPEP § 410. 37 CFR 11.18(d) provides that any practitioner violating the provisions of 37 CFR 11.18 may also be subject to disciplinary action, thus clarifying that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 11.18(c) for violations of 37 CFR 11.18. See also 37 CFR 1.4(d)(4).

The certifications in 37 CFR 11.18(b) apply to all papers filed in the Office, including allegations of improper conduct made by a registered practitioner in any Office proceeding.

II.   ACTING IN A REPRESENTATIVE CAPACITY

37 C.F.R. 1.34  Acting in a representative capacity

When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.

In accordance with 37 CFR 1.34, a paper filed by a registered patent attorney or agent in an application in which he or she is not of record must include his or her name and registration number with his or her signature. Acceptance of papers filed in patent applications and reexamination proceedings by registered attorneys and agents upon a representation that the attorney or agent is authorized to act in a representative capacity is for the purpose of facilitating replies on behalf of applicants in patent applications and, further, to obviate the need for filing powers of attorney in individual applications or patents when there has been a change in composition of law firms or corporate patent staffs.

See MPEP § 408 for information concerning interviews with an attorney or agent not of record.

Except as noted below, a person acting in a representative capacity may not sign (A) a power of attorney (37 CFR 1.32), (B) a document granting access to an application, (C) a change of correspondence address)), (D) a terminal disclaimer (37 CFR 1.321(b)(1)(iv)), or (E) a request for an express abandonment without filing a continuing application (37 CFR 1.138(b)). In an application filed on or after September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) a power of attorney has not been appointed under 37 CFR 1.32(b) and (2) the patent practitioner was named in the application transmittal papers. See 37 CFR 1.14(c) and 1.33(a). In an application filed before September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) an executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed and (2) the patent practitioner was named in the application transmittal papers. See pre-AIA 37 CFR 1.14(c) and pre-AIA 37 CFR 1.33(a).

402.04   [Reserved]

402.05   Revocation of Power of Attorney [R-11.2013]

Revocation of a power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE). Upon revocation of the power of attorney, appropriate notification is sent by the Office. While an application is involved in an interference or derivation proceeding, any power of attorney or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration. See MPEP § 402.08.

See MPEP § 402.05(a) for applicant revocation of powers of attorney in applications filed on or after September 16, 2012. See MPEP § 402.05(b) for applicant revocation of powers of attorney in applications filed before September 16, 2012. See MPEP § 402.07 for assignee revocation of a power of attorney.

402.05(a)   Applicant Revocation - Application Filed On or After September 16, 2012

37 C.F.R. 1.36   Revocation of power of attorney; withdrawal of patent attorney or agent.

  • (a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all patent owners in a supplemental examination or reexamination proceeding) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee may become the applicant under § 1.46(c) and revoke any previous power of attorney and grant a power of attorney as provided in § 1.32(b).

    A power of attorney may be revoked only by the applicant or patent owner. An assignee who is not the applicant may revoke a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73).

    If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable. See MPEP § 402.03 for information pertaining to acting in a representative capacity.

    A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under 37 CFR 1.63. However, 37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.

    See MPEP § 402.02(a) for appointment of a new power of attorney in an application filed on or after September 16, 2012

    When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney. Similarly, if the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee. In addition, if a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second. The power of attorney to the practitioners associated with the first Customer Number is automatically revoked in this situation. In all of these situations, the most recently filed power of attorney will control .

402.05(b)   Applicant Revocation - Application Filed Before September 16, 2012

37 C.F.R. 1.36  (preAIA) Revocation of power of attorney; withdrawal of patent attorney or agent.

  • (a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by an applicant for patent (§ 1.41(b)) or an assignee of the entire interest of the applicant, or the owner of the entire interest of a patent. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all of the assignees of the entire interest of the applicant or, in a reexamination proceeding, fewer than all the owners of the entire interest of a patent) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee of the entire interest of the applicant may revoke previous powers of attorney and give another power of attorney of the assignee’s own selection as provided in § 1.32(b).

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See MPEP § 402.07 for revocation of a power attorney by the assignee. Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012. See also MPEP § 402.02(b).

If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable. See MPEP § 402.03 for information pertaining to acting in a representative capacity.

When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney. Similarly, if the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee. In addition, if a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second. The power of attorney to the practitioners associated with the first Customer Number is automatically revoked in this situation. In all of these situations, the most recently filed power of attorney will control .

A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.

402.06   Attorney or Agent Withdraws [R-11.2013]

37 C.F.R. 1.36   Revocation of power of attorney; withdrawal of patent attorney or agent.

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  • (b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.

37 C.F.R. 11.116  Declining or terminating representation.

  • (a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:
    • (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
    • (2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
    • (3) The practitioner is discharged.
  • (b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:
    • (1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
    • (2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
    • (3) The client has used the practitioner’s services to perpetrate a crime or fraud;
    • (4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
    • (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
    • (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
    • (7) Other good cause for withdrawal exists.
  • (c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.
  • (d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.

See MPEP § 402.05(a) for applicant revocation of power of attorney in applications filed on or after September 16, 2012. For revocation of power of attorney in applications filed before September 16, 2012, see MPEP § 402.05(b) for revocation by the applicant and MPEP § 402.07 for revocation by the assignee. See 37 CFR 11.116 for information regarding permissive and mandatory withdrawal. When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request. Among several scenarios addressed in 37 CFR 11.116(b), subsections (5) and (6) permit withdrawal when after reasonable warning the client fails to compensate the practitioner, or when the representation “has been rendered unreasonably difficult by the client.” When preparing a request for withdrawal for such reasons, the practitioner should also be mindful of 37 CFR 11.106, which requires a practitioner to maintain the confidentiality of client information (except in limited circumstances). Where withdrawal is predicated upon such reasons, the practitioner, rather than divulging confidential or secret information about the client, should identify the reason(s) for requesting to withdraw as being based on “irreconcilable differences.” An explanation of and the evidence supporting “irreconcilable differences” should be submitted as proprietary material in accordance with MPEP § 724.02 to ensure that the client’s confidences are maintained.

In the event that a notice of withdrawal is filed by the attorney or agent of record, the file will be forwarded to the appropriate official for decision on the request. The withdrawal is effective when approved rather than when received.

Each attorney of record must sign the notice of withdrawal, or the notice of withdrawal must contain a clear indication of one attorney signing on behalf of himself or herself and another. A withdrawal of another attorney or agent of record, without also withdrawing the attorney or agent signing the request is a revocation, not a withdrawal.

Pursuant to 37 CFR 11.116(c), when terminating a representation a practitioner must provide notice to, or request permission from, a tribunal when required by applicable law. Pursuant to 37 CFR 11.116(d), a practitioner is required to take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred.

The Request for Withdrawal As Attorney or Agent and Change of Correspondence Address forms (PTO/SB/83 or PTO/AIA/83, available at http://www.uspto.gov/forms/forms.jsp) provide a section wherein practitioners may certify the completion of activities necessary for the request to withdraw from representation to be granted. A Request for Withdrawal As Attorney or Agent may alternatively be filed as a Web-based e-petition (see http://www.uspto.gov/patents/process/file/efs/guidance/epetition-info.jsp for more information). When the correspondence address will change as a result of withdrawal, the withdrawing practitioner(s) must request that the Office direct all future correspondence to (i) the first named inventor or assignee that has properly made itself of record pursuant to 37 CFR 3.71 (for applications filed before September 16, 2012), or (ii) the applicant (for applications filed on or after September 16, 2012) or (iii) the assignee of record (for proceedings involving issued patents). Practitioners may do so by specifying either the correspondence address of, or the address associated with the Customer Number of, any appropriate party as specified above. Withdrawing practitioner(s) cannot change the correspondence address to the address associated with the Customer Number of another law firm, or any other address except as noted above.

As long as the Request is filed prior to the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a), the Office will review the Request and render a decision, even if the decision on the Request is decided after the stated period for reply, after the application is abandoned, or after proceedings have terminated. In contrast, the Office will not decide requests to withdraw from representation as practitioner of record which are filed after the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a). These Requests will be placed in the application but will not be treated on their merits. In a similar situation, a revocation of power of attorney filed after the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for an extension of time under 37 CFR 1.136 will simply be placed in the application file. The only exception will be a revocation and power of attorney accompanied with a petition to revive.

For withdrawal during reexamination proceedings, see MPEP § 2223. Requests for withdrawal filed after a patent has issued will be placed in the file but will generally not be treated on their merits.

The Office will not approve requests from practitioners to withdraw from applications where the requesting practitioner is acting, or has acted, in a representative capacity pursuant to 37 CFR 1.34. In these situations, the practitioner is responsible for the correspondence the practitioner files in the application while acting in a representative capacity. As such, there is no need for the practitioner to obtain the Office's permission to withdraw from representation. However, practitioners acting in a representative capacity, like practitioners who have a power of attorney in the application, remain responsible for noncompliance with 37 CFR 1.56, as well as 37 CFR 11.18, with respect to documents they file.

Form PTO/SB/83 may be used to request withdrawal of attorney or agent of record.

Form PTO/SB/83 Request for Withdrawl As Attorney or Agent and Change of Correspondence Address Form
Form PTO/SB/83 Request for Withdrawl as Attorney or Agent And Change of Correspondence Address
Privacy Act Statement

402.07   Assignee Revocation of Power of Attorney of Applicant and Appointment of New Power of Attorney [R-11.2013]

I.   APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

In applications filed on or after September 16, 2012, any power of attorney must be signed by the applicant or patent owner. See 37 CFR 1.32(b). For an assignee to revoke a previously given power of attorney and/or grant a power of attorney, the assignee must become the applicant under 37 CFR 1.46(c). See MPEP §§ 402.02(a) and 402.05(a). See MPEP § 325 for details pertaining to establishing the right of an assignee to take action in an application filed on or after September 16, 2012.

II.   APPLICATION FILED BEFORE SEPTEMBER 16, 2012

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an “irrevocable” right to prosecute the application had been given as in some government owned applications.

37 C.F.R. 3.71 (pre-AIA)  Prosecution by assignee.

  • (a) Patents — conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.
  • (b) Patents — assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:
    • (1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
    • (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.
  • (c) Patents — Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.
  • (d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).

See pre-AIA 37 CFR 1.36 in MPEP § 402.05(b).

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 pre-AIA 37 CFR 3.73(b). See MPEP § 324. Ordinarily, the applicant will still have access to the application (MPEP § 106).

In an application that has been accorded status under pre-AIA 37 CFR 1.47(a), or for which status under pre-AIA 37 CFR 1.47(a) has been requested, a power of attorney given by the inventors who have signed the declaration (available inventors) may be revoked by an assignee of the entire interest of the available inventors (i.e., the applicant). See pre-AIA 37 CFR 1.32(b)(4). Rights of the assignee to take action may be established as provided in pre-AIA 37 CFR 3.73(b) and MPEP § 324.

Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney. The assignee would sign the power of attorney, and a newly appointed practitioner, having authority to take action on behalf of the assignee would sign a statement under pre-AIA 37 CFR 3.73(b) for the application in which the general power of attorney is to be used.

Form PTO/SB/80 Power of Attorney To Prosecute Applications Before the USPTO
Privacy Act Statement

402.08   Application in Interference or Derivation Proceeding [R-11.2013]

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.

402.09   International Application [R-11.2013]

37 C.F.R. 11.9   Limited recognition in patent matters

  • (a) Any individual not registered under § 11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
  • (b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.
  • (c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.

37 C.F.R. 1.455   Representation in international applications.

  • (a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).
  • (b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
  • (c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
  • (d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.

For representation in international applications, see MPEP § 1807.

402.10   Appointment/Revocation by Less Than All Applicants or Owners [R-11.2013]

Papers giving or revoking a power of attorney in an application generally require signature by all the applicants or owners of the application. Papers revoking a power of attorney in an application (or giving a power of attorney) will not be accepted by the Office when signed by less than all of the applicants or owners of the application unless they are accompanied by a petition under 37 CFR 1.36(a) and fee under 37 CFR 1.17(f) with a showing of sufficient cause (if revocation), or a petition under 37 CFR 1.183 and fee under 37 CFR 1.17(f) (if appointment) demonstrating the extraordinary situation where justice requires waiver of the requirement of 37 CFR 1.32(b)(4). The petition should be directed to the Office of Petitions. The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted. The acceptance of such papers by petition under 37 CFR 1.36(a) or 1.183 will result in more than one attorney, agent, applicant, or owner prosecuting the application at the same time. Therefore, each of these parties must sign all subsequent replies submitted to the Office. See In re Goldstein, 16 USPQ2d 1963 (Dep. Assist. Comm’r Pat. 1988). In an application filed under pre-AIA 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who has signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183. See MPEP § 402.07. However, in applications accepted under pre-AIA 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the application will not be granted. See MPEP § 409.03(i). Upon accepting papers appointing and/or revoking a power of attorney that are signed by less than all of the applicants or owners, the Office will indicate to applicants who must sign subsequent replies. Dual correspondence will still not be permitted. Accordingly, when the acceptance of such papers results in an attorney or agent and at least one applicant or owner prosecuting the application, correspondence will be mailed to the attorney or agent. When the acceptance of such papers results in more than one attorney or agent prosecuting the application, the correspondence address will continue to be that of the attorney or agent first named in the application, unless all parties agree to a different correspondence address. Each attorney or agent signing subsequent papers must indicate whom he or she represents.

The following are examples of who must sign replies when there is more than one person responsible for prosecuting the application:

  • (A) If coinventor A has given a power of attorney to a patent practitioner and coinventor B has not, replies must be signed by the patent practitioner of A and by coinventor B.
  • (B) If coinventors A and B have each appointed their own patent practitioner, replies must be signed by both patent practitioners.

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