Acting in a Representative Capacity

37 CFR 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 they are not of record

must include their name, registration number, and 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. It is noted that design patent

practitioners acting in a representative capacity may only do so in design patent

matters. See

MPEP § 1502.02

.

When a patent practitioner acts in a representative

capacity by filing a paper in an application filed on or after September 16, 2012, they

must be submitting the paper on behalf of all parties identified as the applicant. The

provisions of

37 CFR

1.34

in no way convey authority for a patent practitioner to

submit papers in an application only on behalf of some of the parties identified as the

applicant

patent practitioner acts in a representative

capacity by filing a paper in an application filed on or after September 16, 2012, they

must be submitting the paper on behalf of all parties identified as the applicant. The

provisions of

37 CFR

1.34

in no way convey authority for a patent practitioner to

submit papers in an application only on behalf of some of the parties identified as the

applicant. For example, where the applicant is three joint inventors who do not agree

about how to proceed in the application, a patent practitioner who only represents one

of the joint inventors may not file papers in the application to the exclusion of the

other joint inventors. Likewise, where there are multiple assignees identified as the

applicant, a patent practitioner may not file papers only on behalf of some of the

parties.

Powers of attorney by less than all applicants or owners

are not accepted by the Office unless a petition under

37 CFR 1.36(a)

or

37 CFR

1.183

is granted in the application, and the granted petition

results in more than one attorney, agent, applicant or owner prosecuting the application

at the same time and signing correspondence. See

MPEP § 402.10

. Acting in a

representative capacity under

37 CFR 1.34

is not a means of

prosecuting an application only on behalf of some of the applicant parties.

For an application filed before September 16, 2012, a

patent practitioner may act in a representative capacity on behalf of the applicant or

the assignee of the entire right who has properly established its right to take action

under

37 CFR

3.71

and

3.73

.

See

MPEP § 405

for information concerning

interviews with a patent practitioner not of record

only on behalf of some of the applicant parties.

For an application filed before September 16, 2012, a

patent practitioner may act in a representative capacity on behalf of the applicant or

the assignee of the entire right who has properly established its right to take action

under

37 CFR

3.71

and

3.73

.

See

MPEP § 405

for information concerning

interviews with a patent practitioner 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)

), 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)

.