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 CFR 1.32 (pre-AIA) Power of attorney.

*****

(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.

*****

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 website.

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

ombined declaration and power of attorney form on the USPTO website.

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

Form PTO/SB/80 or PTO/SB/81 (available at

www.uspto.gov/patent/patents-forms

) should be used for powers

of attorney in applications filed before September 16, 2012. 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 website

ORNEY FORMS FOR APPLICATIONS FILED BEFORE SEPTEMBER 16,

2012

Form PTO/SB/80 or PTO/SB/81 (available at

www.uspto.gov/patent/patents-forms

) should be used for powers

of attorney in applications filed before September 16, 2012. 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 website. Form

PTO/SB/81A may be used in a patent that issued from an application filed before

September 16, 2012.