(61) Revision of Power of
Attorney and Assignment Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
(Office) is revising the rules of practice to allow for more efficient
processing of powers of attorney and assignment documents within the
Office. For example, the Office will require applicants to use the
Office's Customer Number practice if more than ten registered patent
practitioners are to be made of record. In addition, the Office is
eliminating some mail stops (i.e., CPA, Provisional Patent Application)
that were found not be useful in routing correspondence within the
Office, and creating a new mail stop (Licensing and Review) to assist
the Office in the proper routing of national security classified and
secrecy order papers. Finally, because the Office is discontinuing the
current Office practice of returning patent and trademark assignment
documents submitted by mail for recording in the assignment database,
only copies of assignment documents may be submitted for recording in
the Office's Assignment records.
DATES: Effective Date: June 25, 2004. Any associate power of attorney
filed before this date will continue to be effective.
FOR FURTHER INFORMATION CONTACT: Karin Ferriter ((703)
306-3159) (Office of the Deputy Commissioner for Patent Examination
Policy), Mary Hannon ((703) 308-8910, ext. 137) (Office of the
Commissioner for Trademarks), or Robert J. Spar ((703) 308-5107)
(Office of the Deputy Commissioner for Patent Examination Policy),
directly by phone, or by facsimile to (703) 872-9411, or by mail
addressed to: Mail Stop Comments - Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: A purpose of this final
rule is to limit the number of patent practitioners that a patent
applicant, or an assignee of the patent applicant, can name in a power
of attorney. If more than ten registered patent attorneys or registered
patent agents are to be appointed, then the Office's Customer Number
practice must be used. This change is necessary to eliminate the undue
processing burden on the Office when a power of attorney naming more
than ten patent practitioners is submitted in patent applications. In
addition, a purpose of this final rule is to eliminate the associate
power of attorney practice in patent cases. An associate power of
attorney is not necessary for a patent practitioner to take most
actions in a patent application. Instead of filing an associate power
of attorney, a patent practitioner can file an "Authorization to Act
in a Representative Capacity" (note the sample form posted on the
Office's Internet Web site at:
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?
from=leavingFR.html&log=linklog&to=http://www.uspto.gov/web/forms/
sb0084.pdf).
Another purpose of this final rule is to eliminate an original
assignment document from the list of documents that may be submitted
for recordation. This is because the Office shall no longer be
returning assignment documents after they have been scanned into the
Office's electronic assignment database, and any assignee that submits
the original assignment document will be unable to retrieve the
document.
The Office provides for the use of a Customer Number to
identify either an address for patent-related correspondence, or a set
of patent attorneys and agents who may be identified with a patent
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application as patent practitioners of record. Customer Number practice
permits the correspondence or fee address, or the list of practitioners
of record to be easily changed in a large number of patent applications
by filing a single request for Customer Number data change. A separate
revocation of power of attorney, or appointment of a new power of
attorney would not need to be filed in each patent application if a
Customer Number Data Change Request (PTO/SB/124) is filed. As a result,
if a patent attorney or patent agent is to begin to represent a client,
or is discontinuing representation of a client, on a particular set of
applications, and, if the power of attorney for that set of
applications was originally to the patent practitioners associated with
a Customer Number, then the list of patent practitioners associated
with the Customer Number should be changed to reflect the addition or
deletion. When Customer Number practice is used, a separate document
does not need to be filed by applicant for each application in which
the list of practitioners associated with the Customer Number is to be
changed; only one Customer Number Data Change Request is required to
eliminate any patent practitioners who should no longer be associated
with the Customer Number. Alternatively, a new power of attorney to a
list of patent practitioners or to the patent practitioners associated
with a different customer number may be filed in each application in
which the power of attorney should be changed.
The rules pertaining to power of attorney are revised to
reflect Customer Number practice, a practice wherein an applicant or an
assignee of the entire interest of the applicant in a patent
application can give power of attorney to a list of registered patent
practitioners associated with a Customer Number. See Manual of
Patent Examining Procedure (8th ed. 2001) (Rev. 1, Feb. 2003)
(MPEP), Section 403, for a description of Customer Number practice. The
rules are also revised to explain the requirements of a power of
attorney and to limit the number of practitioners who may be given a
power of attorney without using Customer Number practice. Furthermore,
the patent rules are amended to discontinue the "associate" power
of attorney practice, to clarify the procedures related to revocation
of power of attorney, and to clarify how a registered practitioner may
sign a document in a representative capacity.
Documents affecting the title to a patent or trademark property
(e.g., assignments, or security interests) are currently
recorded in the Office's assignment database, upon submission of the
document with the appropriate cover sheet and the fee required by 35
U.S.C. 41(d)(1). In addition, Government Interests are recorded, upon
submission of the document, as required by Executive Order 9234 of
February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303). Since
1995, assignment documents have been recorded in the Office's
Assignment database without stamping or otherwise marking the document
that was submitted for recordation. The automated system that receives
documents for recordation assigns the reel and frame number to the
document and places the recordation stampings on the images that are
stored in the automated system. The Office is increasing the integrity
of its internal patent application record maintenance by adopting a new
electronic data processing system for the storage and maintenance of
all the records associated with patent applications. The new system
includes the process of scanning all incoming papers to create an image
file of the papers associated with patent applications. Papers that are
scanned are stored, and then destroyed according to a record retention
schedule. Consistent with this new practice, the Office will
discontinue the practice of returning assignment documents that were
mailed to the Office, and will require assignment documents to be
submitted on 8 1/2 by 11-inch paper (21.6 by 27.9 cm) ("letter
size") or DIN size A4 (21.0 by 29.7 cm).
To assist applicants in identifying the application or patent
to which a Notice of Recordation relates, the Notice has been revised
to reflect the title of the invention and docket number stored in the
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Office's electronic records, if the notice of recordation is for a
single property (application or patent). Any docket number included on
the Assignment Cover sheet will only be used in the Office's electronic
financial records for purposes of processing the recordation fee, but
will not be entered into other electronic records for the patent or
patent application.
Discussion of Specific Rules
The Office is amending sections of 1.1, 1.12, 1.31, 1.33, 1.34,
1.36, 1.53, 1.363, 3.1, 3.21, 3.24, 3.25, 3.27, 3.31, 3.34, 3.41, 3.81,
and 5.1 of title 37 of the Code of Federal Regulations (CFR), and
adding new 1.32 to title 37 CFR.
Section 1.1: Section 1.1(a)(4)(i) is amended to add
"submitted by mail" and to delete "or under 3.81 of this
chapter" to require that assignments submitted by mail
contemporaneously with a request to issue a patent to an assignee be
sent to Mail Stop Assignment Recordation Services instead of Mail Stop
Issue Fee in order to more efficiently direct assignment documents.
Section 1.1 is also amended to remove paragraph (f). The Office has
determined that Mail Stop Provisional Patent Application is not useful
in the routing of correspondence within the Office.
Section 1.12: Section 1.12(b) is amended to replace
"has not been published under 35 U.S.C. 122(b) are not available to
the public" with "is open to the public pursuant to 1.11 or for
which copies or access may be supplied pursuant to 1.14, are
available to the public" in order to clarify the assignment records
that are available to the public. Section 1.12(b) is further amended to
provide that copies of any such assignment records and related
information that are not available to the public shall be obtainable
only upon written authority of the applicant or applicant's assignee,
patent attorney, or patent agent or upon a showing that the person
seeking such information is a bona fide prospective or
actual purchaser, mortgagee, or licensee of such application, unless it
shall be necessary to the proper conduct of business before the Office
or as provided in part 1.
As revised, 1.12(b) more clearly provides, for example, for
an application that is relied upon under 35 U.S.C. 120 in an
application that has issued as a patent, any assignment records
relating to the parent application could be considered to relate to the
patent. Before the amendment to 1.12(b), the text of the rule
suggested that the assignment records for the parent application were
not available to the public. This was not the intended construction,
and was inconsistent with MPEP 301.01. As revised 1.12(b)
provides that the assignment records for the parent application of a
patent, or an application that has published under 35 U.S.C. 122(b),
are open to public inspection.
Section 1.31: Section 1.31 is amended to revise the
title to refer to "registered patent attorney or patent agent" and
to introduce the term "power of attorney." Section 1.31 is also
revised to add "United States" before "Patent and Trademark
Office" in the definition of "Office" to properly reflect the
current name of the Office in the rule. See 35 U.S.C. 1(a).
Section 1.32: New 1.32 sets forth definitions
related to power of attorney. Section 1.32 does not apply to power of
attorney in an international application (1.455). The terms "power
of attorney," "principal," "revocation," and "Customer
Number" are defined, and the requirements for a power of attorney are
set forth. The term "patent practitioner" is not separately
defined, but is a collective reference to a registered patent attorney
or registered patent agent.
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"Power of attorney" is defined in paragraph (a)(1) of 1.32 as a
written document by which a principal designates a registered
patent attorney or a registered patent agent (collectively "patent
practitioner") to act on his or her behalf.
"Principal" is defined in paragraph (a)(2) of 1.32 as
either the applicant for patent (1.41(b)) or the assignee of the
entire interest of the applicant, and the entity who executes a power
of attorney designating one or more agents to act on his or her behalf.
An appointment by fewer than all of the applicants, or assignees of the
entire interest of the applicants requires a petition under 1.183 to
waive the requirement of 1.32(b)(4) that the applicant, or the
assignee of the entire interest of the applicant sign the power of
attorney.
The term "patentee" has not been included in this
definition because use of the term "patentee" would make the rule
unnecessarily complicated. Although the term "patentee" often is a
reference to the assignee, the patentee could also be the inventors, or
if an inventor is deceased or legally incapacitated, the inventors and
the legal representative of such an inventor. An inventor who could not
be reached or refused to join in the filing of a patent application
would not be an applicant as set forth in 1.41(b), but would still
be a patentee, but once a patent has issued, the signature of the
nonsigning inventor should still not be required on any power of
attorney. Accordingly, the term "patentee" does not necessarily
reference the same group of individuals as the term "applicant" and
has not been used in the rules so that the applicant, not necessarily
the patentee, could change the power of attorney, for example, in an
application that has issued as a patent.
"Revocation" is defined in paragraph (a)(3) of 1.32 as
the cancellation by the principal of the authority previously given to
a registered patent attorney or registered patent agent to act on his
or her behalf.
"Customer Number" is defined in paragraph (a)(4) of 1.32
to be a number that may be used to: (i) Designate the
correspondence address of a patent application or patent such that the
correspondence address for the patent application or patent would be
the address associated with the Customer Number; (ii) designate the fee
address (1.363) of a patent by a Customer Number such that the fee
address for the patent would be the address associated with the
Customer Number; and (iii) specify, in a power of attorney, that each
of the patent practitioners associated with a Customer Number have a
power of attorney.
Section 1.32(b) sets forth the requirements for a power of
attorney, other than a power of attorney in an international
application (see 1.455 for the power of attorney in an international
application and note that Customer Number practice cannot be used in an
international application). To comply with 1.32(b), the power of
attorney, in an application other than an international application,
must: (1) Be in writing; (2) name one or more representatives in
compliance with (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. Furthermore, pursuant to 1.32(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; or (3) ten or fewer registered patent attorneys or
registered patent agents (see 10.6 of this subchapter) (patent
practitioners). Except as provided in 1.32(c)(1) or (c)(2), 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
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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 application or patent to which the
power of attorney is directed.
New 1.32(c)(3) sets a limit on the number of patent
practitioners who can be given a power of attorney without using
Customer Number practice because it is extremely burdensome for the
Office to manually enter a long list of patent practitioners,
particularly where the same list of patent practitioners is to be
entered for a large number of applications, and to update that listing.
Applicants desiring to appoint a large number of patent practitioners
may continue to do so, but Customer Number practice will be required in
order to have more than ten patent practitioners recognized by the
Office as being of record and reflected in Office computer systems. See
1.32(c)(2).
If more than ten patent practitioners have been named in a
combined declaration and power of attorney (e.g., from an
earlier filed application (see 1.63(d)(1)(iv))), then the Office of
Initial Patent Examination will enter the practitioners indicated on
the separate paper filed pursuant to 1.32(c)(3). If more than ten
patent practitioners are listed on a power of attorney, and no separate
paper under 1.32(c)(3) is filed, then no patent practitioners will
be made of record. If a separate paper is not provided and a patent
practitioner later attempts to sign a batch update request to request
that the address associated with the Customer Number be used for the
correspondence address and/or the fee address for the patent
applications listed on the spreadsheet (see Notice of Elimination
of Batch Update Practice to Change Power of Attorney, 1272
Off. Gaz. Patent Office Notices 24 (July 1, 2003)), the
request will be rejected because the patent practitioner is not of
record. Applicant may then submit a newly executed power of attorney
complying with 1.32, or submit a copy of the previously filed power
of attorney accompanied by a separate paper indicating which ten
practitioners are to be made of record pursuant to 1.32(c)(3).
Customer Number practice allows the Office to enter a single
five or six digit number into the Office computer system instead of a
large number of patent practitioners and is a more appropriate use of
Office resources than continuing to permit applicants to give a power
of attorney to an unlimited number of practitioners. See MPEP 403.
Section 1.33: Section 1.33(a) is revised to reflect
Customer Number practice. If applicant provides, in a single document,
both a complete typed address and a Customer Number and requests that
both be used for the correspondence address, the address associated
with the Customer Number will be used. Section 1.33(a) is revised to
include the following sentence: "If more than one correspondence
address is specified in a single document, the Office will establish
one as the correspondence address and will use the address associated
with a Customer Number, if given, over a typed correspondence
address." Applicants will often specify the correspondence address in
more than one paper that is filed with an application, and the address
given in the different places sometimes conflicts. Where the applicant
specifically directs the Office to use a correspondence address in more
than one paper, priority will be accorded to the correspondence address
specified in the following order: (1) Application data sheet
(ADS); (2) application transmittal; (3) oath or declaration (unless
power of attorney is more current); and (4) power of attorney.
Accordingly, if the ADS includes a typed correspondence address, and
the declaration gives a different address (i.e., the address associated
with a Customer Number) as the correspondence address, the Office will
use the typed correspondence address as included on the ADS. In the
experience of the Office, the ADS is the most recently created document
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and tends to have the most current address. After the correspondence
address has been entered according to the above procedure, it will only
be changed pursuant to 1.33(a)(1).
A Customer Number merely provided in correspondence without an
instruction to use the Customer Number for the correspondence address
or for any other purposes, e.g., a Customer Number that is
adjacent the heading of the paper, is not a specific direction to use
the Customer Number for any purpose.
Section 1.33(b)(1) is revised to change the reference from 1.34(b)
to new 1.32(b).
Section 1.33(b)(2) is revised to change 1.34(a) to 1.34 to be
consistent with the revision to 1.34.
Section 1.33(c) revised to change the cross-reference to
1.32(b) instead of 1.34(b) and to change the reference to 1.34(a)
to 1.34 to be consistent with the revision to 1.34.
Section 1.34: Section 1.34 is revised to change the
title to "Acting in a Representative Capacity." The paragraph
designation for paragraph (a) and ", pursuant to 1.31," are
deleted. In addition, "the registered patent attorney or patent agent
should specify his or her registration number with his or her
signature" is changed to "the registered patent attorney or patent
agent must specify his or her name and the registration number with his
or her signature." When a registered patent attorney or patent agent
acts in a representative capacity, it should be clear who is signing
the paper. Because signatures are not always legible and because
sometimes the wrong registration number is given, it is necessary for
the registered patent attorney or agent to include his or her name so
that the identity of the person who is acting in a representative
capacity may be identified.
Paragraph (b) of 1.34 is deleted. With Customer Number
practice, the associate power of attorney practice set forth in 1.34(b)
is no longer necessary because once power of attorney is given
to the patent practitioners associated with a Customer Number, the list
of patent practitioners of record may easily be changed. Additionally,
for a patent practitioner to have the most information with which to
represent his client, the patent practitioner needs to have access to
the private Patent Application Information Retrieval (private PAIR)
system on the Office's Internet Web site (http: //frwebgate.access.gpo.
gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=http:
//PAIR.uspto.gov), and a patent practitioner can only have direct
access to private PAIR if he or she is associated with the Customer
Number, and if the Customer Number is used for the correspondence
address of the application. Private PAIR provides patent practitioners
with access to the Office's computer systems that track the patent file
history, and, if the application is maintained in the Image File
Wrapper (IFW) system, access to the images of the documents in the file
history. Furthermore, private PAIR provides pro se
applicants and patent practitioners with information about recently
mailed correspondence from the Office for a particular Customer Number.
Furthermore, private PAIR provides an explanation of any patent term
extension or patent term adjustment calculations for the patent
application. A patent practitioner who does not have access to private
PAIR is disadvantaged in representing a client compared to a
practitioner who has access to private PAIR. See the discussion with
respect to comment 9 below.
A government entity or assignee may have multiple law firms or
sets of attorneys working on their patent applications. Such an entity
should consider having multiple Customer Numbers, with a separate
Customer Number for each set of patent attorneys, and having at least
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one in-house patent practitioner listed on each listing of patent
practitioners associated with a Customer Number so that the government
entity or assignee has access to private PAIR for all of their patent
applications.
An applicant or assignee of the entire interest of the
applicant who gives a power of attorney to a limited number of patent
practitioners has expressed a desire to be represented by only those
patent practitioners. As 1.34 is revised, if Customer Number
practice is not used, an applicant or assignee of the entire interest
of the applicant will be required to sign a new power of attorney in
order for an associate practitioner to be "of record" in addition
to the specifically identified principal patent practitioner. Of
course, a registered patent practitioner may still act in a
representative capacity pursuant to 1.34 (by providing his or her
name and a registration number with his or her signature), and the rule
changes do not change this flexibility. A patent practitioner who is
acting in a representative capacity pursuant to 1.34 may conduct an
interview with an examiner. See MPEP 713.05. A patent practitioner
who is acting in a representative capacity can also file amendments and
other papers (1.33(b)(2)). A patent practitioner who is acting in a
representative capacity pursuant to 1.34 may not, however, change
the correspondence address (1.33(a)(2)) (except where an executed
oath or declaration has not been filed, and the patent practitioner
filed the application)), expressly abandon the application without
filing a continuing application (1.138(b)), or sign a terminal
disclaimer (1.321(b)(1)(iv)). A patent practitioner who is signing
on behalf of the assignee of the entire interest may (i.e., not signing
in a representative capacity or as a patent practitioner of record),
however, sign these same documents upon compliance with 3.73(b), if
the practitioner is authorized to act on behalf of the assignee.
A patent attorney or agent who has been given a power of
attorney cannot change the power of attorney from the set of patent
practitioners appointed by the applicant or assignee of the entire
interest of the applicant to a Customer Number (or change from one
Customer Number to another). To appoint a new power of attorney, the
applicant or assignee of the entire interest of the applicant must be
involved and must sign the power of attorney. Where a large number of
patent applications of a single assignee are involved, the assignee may
wish to consider giving the patent practitioners a power of attorney
that is not specific to an application, similar to the General Power of
Attorney used in Patent Cooperation Treaty (PCT) practice, and having
one of the patent practitioners with general power of attorney take
action by submitting a copy of the power of attorney and a statement in
compliance with 3.73(b). Form PTO/SB/80 is available for this
purpose and is posted on the Office's Internet Web site at http:
//frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http: //www.uspto.gov, under forms.
Section 1.36: Section 1.36 is revised to include new
paragraphs (a) and (b) so that revocation of power of attorney and
withdrawal as attorney or agent of record are addressed in separate
paragraphs. In addition, "or authorization of agent" is deleted
because the term "power of attorney" has been defined to include an
authorization of an agent. The cross-reference to 1.31 is changed to
1.32(b).
Section 1.36(a) addresses revocation of a power of attorney. A
registered patent attorney or patent agent is notified of any
revocation with a "Notice Regarding Change in Power of Attorney." A
power of attorney to the patent practitioners associated with a
Customer Number that is filed subsequent to another power of attorney
will be treated as a revocation of the previously granted power of
attorney. The Office can only recognize one Customer Number at a time
for power of attorney purposes. When the power of attorney is to the
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patent practitioners associated with a Customer Number, the power of
attorney is considered to be revoked when the power of attorney to the
practitioners associated with the Customer Number is revoked. The
revoked power of attorney may be replaced with either a new power of
attorney to a new Customer Number or a power of attorney to a new list
of patent practitioners. A power of attorney is not considered revoked
when the list of patent practitioners associated with a Customer Number
is changed (as by filing a Request for Customer Number Data Change
(PTO/SB/124)). When the power of attorney is revoked, a single notice
is mailed to the correspondence address in effect before the power of
attorney was revoked. An associate registered patent attorney or patent
agent is not separately informed of a revocation. As a result, 1.36(a)
has been revised to no longer suggest that such an associate
practitioner would be separately notified of the revocation of power of
attorney.
When power of attorney is given to the registered patent
practitioners associated with a Customer Number, for example with PTO/
SB/81, the list of patent practitioners associated with the Customer
Number is changed by changing the data associated with the Customer
Number (using, for example PTO/SB/124 (2 pages 124A & 124B), Request
for Customer Number Data Change). No notice is given to the patent
practitioners who are added or removed from the Customer Number.
Section 1.36(b) provides that when the power of attorney for an
application is given to the practitioners associated with a Customer
Number, all of the patent practitioners associated with the Customer
Number will not be permitted to withdraw if an application with the
power of attorney has an Office action to which a reply is due and
insufficient time remains in the time period for reply for applicant to
prepare a reply. See MPEP 402.06.
Section 1.53: Section 1.53 is amended by removing paragraph (d)(9)
and redesignating paragraph (d)(10) as paragraph(d)(9). The Office
has determined that Mail Stop CPA is not useful in the routing of
correspondence within the Office.
Section 1.363: Section 1.363 is amended by adding
paragraph (c), which states "A fee address must be an address
associated with a Customer Number." At the time of issue fee payment,
applicants may designate a fee address for maintenance fee purposes
(hereafter, fee address) by submitting a "Fee Address" Indication
form (PTO/SB/47) as an attachment to the Fee(s) Transmittal (PTOL-85B).
If no Customer Number was previously acquired from the Office for the
address being designated as the fee address, a Request for Customer
Number form (PTO/SB/125) should also be attached to the Fee(s)
Transmittal (PTOL-85B). If a fee address is established in an allowed
application or patent, the Office will send all maintenance fee
correspondence (such as maintenance fee reminder notices) to the fee
address; and the Office will send all other correspondence, to the
correspondence address of record. See Customer Number Required in
Order to Establish a Fee Address, 1261 Off. Gaz. Pat. Office
19 (August 6, 2002).
Section 3.1: Section 3.1 is revised to identify
which trademark applications are covered by 37 CFR part 3, and to
delete "or a transfer of its entire right, title and interest in a"
so that the definition of an assignment includes a transfer of part of
the right, title and interest in a registered mark or a mark for which
an application to register has been filed. Section 3.1 is also revised
to add "United States" before "Patent and Trademark Office" in
the definition of "Office" to properly reflect the current name of
the Office in the rule. See 35 U.S.C. 1(a).
Section 3.21: Section 3.21 is revised to change
"its date of execution, name of each inventor, and title of the
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invention" to "the name of each inventor and the title of the
invention." Section 3.21 is also revised to change "the provisional
application by name of each inventor and title of the invention" to
"the provisional application by the name of each inventor and the
title of the invention" by adding "the" before "name" and "title."
The phrase "its date of execution" has been deleted from 3.21
because the date of execution of a declaration is no longer
required on a declaration (see MPEP 602.05 and because the
application could be executed on more than one date, and thus there may
be no single date of execution). Accordingly, the date of execution of
the application is not particularly useful in identification of the
patent application and is deleted as unnecessary.
Section 3.24: Section 3.24 is revised to include two paragraphs,
namely, paragraphs (a) and (b).
New paragraph (a) of 3.24 addresses documents and cover
sheets for electronic submissions (e.g., patent assignment
documents filed via the Electronic Filing System (EFS) or the
Electronic Patent Assignment System (EPAS)), and requires all documents
submitted electronically to be submitted as digitized images in Tagged
Image File Format (TIFF). In addition, when printed to a paper size of
8 1/2 by 11 inches (21.6 by 27.9 cm) ("letter size") or DIN size A4
(21.0 by 29.7 cm), the document must be legible and a one-inch (2.5 cm)
margin must be present on all sides.
New paragraph (b) of 3.24 addresses documents and cover
sheets for paper and facsimile submissions. Section 3.24(b) provides
that for paper submissions (e.g., documents that are mailed
to the Office), the original document may no longer be submitted.
Section 3.24(b) provides that "[e]ither a copy of the original
document or an extract of the original document" must be submitted
for recordation. Section 3.24(b) also explains why original documents
should not be submitted for recording: "The Office will not
return recorded documents, so original documents must not be submitted
for recording." The Office is moving to uniform processing of
incoming papers, with incoming papers being scanned upon receipt,
electronically routed within the Office, and an appropriate reply being
transmitted to applicant or his representative. With this uniform
procedure, the Office will not return or retain assignment documents
submitted for recordation. As a result, the Office is not permitting
the submission of originals of assignment documents, and instead is
requiring that a copy or an extract of an original document be
submitted. The term "an extract of the original document" is being
added to reflect the current practice of submitting redacted copies of
assignment documents, where part of an assignment document discusses
matters other than assignment of interests related to a patent.
Section 3.24 is further revised to provide, in paragraph (b),
that documents (copies) submitted for recording must be on sheets of
paper having a size of 8 1/2 by 11 inches (21.6 by 27.9 cm) ("letter
size") or DIN size A4 (21.0 by 29.7 cm). "Legal-size" (8 1/2 by
14 inch or 21.64 by 33.1 cm) sheets of paper are no longer permissible.
If the original assignment document is on "legal size" sheets of
paper, the assignment document should be reduced to 8 1/2 by 11-inch or
DIN size A4 paper for submission to the Office (e.g., by
photocopying onto letter-size paper). Sheets of paper that are either 8
1/2 by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) are
required for scanning purposes.
Section 3.25: Section 3.25 is amended to delete
paragraph (a)(1) and renumber paragraphs (a)(2) through (4) as (a)(1)
through (3), respectively. Paragraph (a)(1) is deleted to prohibit
applicants from submitting the original assignment document (because
applicants should retain the original of the assignment document).
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Paragraph (a)(1) of 3.25, as renumbered, is further revised to
insert "original" before "document" in order to clarify that
only a copy of an original assignment document may be submitted for
recording.
Section 3.25(c) is revised to add paragraph (1) to state
that electronic submissions (e.g., ETAS for trademark
assignment documents) must be attached as a digitized image in Tagged
Image File Format (TIFF), to move the existing requirements for paper
submissions into paragraph (2), and to specify that the document (copy)
submitted for recording must have a one-inch margin when printed on 8
1/2 by 11 inch (21.6 by 27.9 cm) or DIN size A4 (21.0 cm by 29.7 cm)
paper. Legal-size paper is no longer permitted. See the discussion of
this change above for patents (3.24).
Section 3.27: Section 3.27 is revised to change
"to be recorded" to "submitted by mail for recordation" because
documents and cover sheets submitted for recording may be faxed or
electronically submitted to the Office and need not be mailed. Only
documents submitted by mail need to be addressed as set forth in the
rule. Section 3.27 is also revised to delete "or with a request under
3.81". As explained with respect to 3.81, when an applicant
requests a patent to issue to an assignee, the assignment document
should be separately submitted for recordation because inclusion of the
assignment document with the request to issue the patent to the
assignee slows down the recordation process.
Section 3.31: Section 3.31(a)(7) is revised to set
forth the requirements for signature of patent and trademark cover
sheets filed electronically. These requirements correspond to the
requirements set forth in 2.33(d) and 2.193(c)(1)(iii) of this
chapter for electronically transmitted trademark filings.
Trademark assignments may be submitted electronically with the
Electronic Trademark Assignment System (ETAS), which is available on
the Office's Internet Web site. See http:
//frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http: //etas.uspto.gov/. Patent assignments
may be submitted using a similar tool, the Electronic Patent Assignment
System (EPAS), and may also be submitted using EFS. When submitting a
copy of an assignment using ETAS or EPAS, the cover sheet is completed
and signed electronically. As with electronic submission of a trademark
application, a signature may be applied to an assignment cover sheet by
either: (1) Placing a symbol comprised of letters, numbers, and/or
punctuation marks between forward slash marks in the signature block on
the electronic submission (e.g. Jane P. Doe); or (2) signing
the cover sheet using some other form of electronic signature specified
by the Director. See Trademark Manual of Examining Procedure (TMEP)
804.05, Signature of Electronically Transmitted Applications (May
2003).
Section 3.31(c)(1) is revised to simplify the requirements for
the cover sheet to only require identification of whether the document
to be recorded relates to a governmental interest.
Paragraph (f) is added to 3.31, and provides that a
trademark cover sheet should include the citizenship of the parties
conveying and receiving the interest, and that if the party receiving
the interest is a partnership or joint venture, the cover sheet should
set forth the names, legal entities, and national citizenship (or the
state or country of organization) of all general partners or active
members. This information is required for purposes of examination of
the application or registration file. Providing this information when
the assignment is recorded may avoid a subsequent Office action by an
examiner.
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Section 3.34: Section 3.34(b) is revised to delete
"the originally recorded document or" to thereby provide that it is
"a copy of the document originally submitted for recording" that
must be submitted. As explained above, the Office is revising the
procedure for handling assignment documents and will no longer be
returning the document that is submitted for recording.
Section 3.41: Section 3.41(b)(2) is revised to
include electronic and facsimile submission as a means in which a
statement of Government interest could be submitted for recordation
without incurring a fee. Section 3.41(b)(2) is also revised to change
the cross-reference to 3.27 because 3.27 was previously revised
to delete 3.27(b).
Section 3.81: Section 3.81(a) is revised to change
"name(s)" to "name" and "assignee(s)" to "assignee"
because under rules of statutory and regulatory construction, the
singular includes the plural unless the context indicates otherwise.
Furthermore, 3.81(a) is amended to change "should be accompanied
by the assignment and either a direction to record the assignment in
the Office pursuant to 3.28, or a statement under 3.73(b)" to
"must state that the document has been filed for recordation as set
forth in 3.11." When an assignment document is submitted for
recording, the preferred submission is by facsimile to (703) 306-5995,
or through an electronic filing system (e.g., ETAS for
trademark assignment documents or EPAS or EFS for patent assignment
documents), and not by mail. Accordingly, the Office has revised the
rules to enable patent applicants to state that the assignment
documents have been filed for recordation, rather than including the
assignment documents for recordation with the request.
Paragraphs (a) and (b) of 3.81 are revised to delete the
reference to a statement under 3.73(b). If the application has been
assigned, the assignment document should be submitted for recording as
set forth in 3.11 for the patent to issue showing the name of the
assignee. Although during prosecution a statement under 3.73(b) can
be relied upon to establish that an assignee is of record, pursuant to
3.73(b)(1)(i), "the documents submitted to establish ownership may
be required to be recorded pursuant to 3.11 in the assignment
records as a condition to permitting the assignee to take action." By
the time that a patent issues, any assignment should have been
submitted for recording, and reliance upon 3.73(b) should not be
necessary. Furthermore, although during prosecution of an application
the Office will have an opportunity to require recordation, at
issuance, prosecution has come to a close and there is no other
practical opportunity for the Office to require recordation before the
patent is issued.
Section 3.81(b) is revised to read "[a]fter payment of the
issue fee: Any request for issuance of an application in the name
of the assignee submitted after the date of payment of the issue fee,
and any request that a patent be corrected to state the name of the
assignee, must state that the assignment was submitted for recordation
as set forth in 3.11 before issuance of the patent, and must include
a request for a certificate of correction under 1.323 of this
chapter (accompanied by the fee set forth in 1.20(a)) and the
processing fee set forth in 1.17(i) of this chapter." This
modifies the practice relating to issuance of a patent to an assignee
by requiring that 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. Thus, where assignment information is
submitted after payment of the issue fee, the patent document will not
include the assignment information, but the assignment information will
be included in a Certificate of Correction. Furthermore, the practice
of allowing a patent to issue to an assignee when a 3.73(b)
statement has been filed, but an assignment has not been recorded is
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discontinued. See MPEP 1481. Section 3.81(c)(1) is amended to change
"assignee(s)" to "assignee" and "inventor(s)" to
"inventor" because the singular includes the plural unless the
context indicates otherwise. See 1 U.S.C. 1.
Section 5.1: Section 5.1(a) is revised to add Mail
Stop L&R to the address so that the address reads as follows: All
correspondence in connection with this part, including petitions,
should be addressed to: Mail Stop L&R, Commissioner for Patents,
P.O. Box 1450, Alexandria, Virginia 22313-1450. National security
classified applications and other related papers may also be
hand-carried to Licensing and Review, Technology Center 3600, as
provided in 5.1(c).
Response to Comments: The Office published a
notice proposing changes to the rules of practice regarding power of
attorney and assignment practice. See Clarification of Power of
Attorney Practice, and Revisions to Assignment Rules, 68 FR
38258 (June 27, 2003), 1272 Off. Gaz. Pat. Office Notices
181 (July 29, 2003). The Office received nine written comments
(from one intellectual property organization, seven patent
practitioners, and one business). Comments in support of a change are
not discussed. The other comments and the Office's response to those
comments follow:
Comment 1: An editorial change to 1.12(b) was
recommended to change the term "such records and related
information" because the use of the term was confusing.
Response: The suggestion has been adopted and
"such records and related information" has been changed to
"assignment records, digests, and indexes'.
Comment 2: The definition of "power of attorney"
in 1.32(a) was recommended to be revised to include designating a
patent attorney or patent agent or an individual authorized to practice
before the Office in patent cases. Another comment noted that the use
of "agent" in 1.32 was confusing, and recommended revision to
avoid using the term "agent" to include an attorney.
Response: These suggestions have been adopted. The
definition of power of attorney and the remainder of the rule have been
revised accordingly. Instead of using "agent" the term
"representative" or "patent practitioner" has been used. The
term "an individual authorized to practice before the Office in
patent cases" has not been included, however, because such a person
is considered to have limited capacity to take action on behalf of a
patent applicant (see 10.9(a) and (b)), and is not recognized by the
Office as an attorney or agent of record, and is not entered into the
Office's computer systems as having a power of attorney.
Comment 3: The term "principal" in 1.32(a)(2)
was suggested as being too narrowly defined, and it was suggested that
the term be defined broadly enough to include an appointment by fewer
than all of the inventors.
Response: This suggestion has not been adopted, but
the language has been clarified in regard to appointments by fewer than
all the applicants or assignees. Where all the applicants, or the
assignees of the entire interest of all the applicants, do not give
power of attorney to the same patent practitioners, a petition under
1.182 is currently required before the Office will permit the split
power of attorney. See MPEP 402.10. The term "all the inventors"
is specifically not used in order to provide for the situation where an
inventor is deceased or where a petition under 1.47 has been granted
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(the applicant would then either be fewer than all of the inventors or
the party with proprietary interest pursuant to 1.47(b)). If the
term "inventors" was used, then in any application in which a
petition under 1.47 was granted, a petition under 1.183 would
also always be required to permit the power of attorney to be signed by
fewer than all of the inventors, or by an assignee who is the assignee
of the entire interest of the applicant, but not the assignee of the
entire interest in the application (due to the lack of an assignment
from the inventor, or if deceased, the legal representative of the
inventor, who did not sign the declaration). With a split power of
attorney, both patent practitioners are required to sign any response
to an Office action, and to participate in any interviews in the patent
application, which tends to delay prosecution of the patent
application. Accordingly, applicants need to show good and sufficient
reasons why more than one practitioner is necessary to represent
applicants for the patent, and such an explanation will need to be
provided in a petition under 1.183 to waive the requirements of
1.32(b)(4) for the applicant or the assignee of the entire interest of
the applicant to sign the power of attorney.
Comment 4: One comment noted that in 1.32(a)(3)
revocation should also be defined as including the situation where the
power of attorney is revoked by a new principal, and suggested that the
definition be modified to address this situation. Another comment
suggested that a new power of attorney act as a revocation of all prior
powers of attorney.
Response: The suggestion to expand the definition of
revocation to include revocation by a new or different principal has
been adopted. In the definition of revocation (1.32(a)(3)), "by
the principal" has been deleted after "previously given". As to
the comment that a new power of attorney act as revocation of all prior
powers of attorney, this suggestion has not been adopted because
automatic revocation will only occur in certain situations. 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.
Comment 5: Several comments opposed the requirement
in 1.32(b)(2) to use Customer Number practice if more than ten
patent practitioners are to be named. They argued that the proposed
rule would require an applicant to choose between naming only a law
firm by using the law firm's Customer Number, or to name ten attorneys
in order to name some patent practitioners in the law firm as well as
others not in the law firm. The commentators encouraged the Office to
consider amending the rule to allow for appointment of both
practitioners and Customer Numbers, as well as more than one Customer
Number. The comments argued that using different Customer Numbers for
different combinations of in-house practitioners and outside firm
practitioners is burdensome and risky. One comment contended that all
patent practitioners associated with a Customer Number needed to be at
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the same address.
Response: Applicants and assignees currently, as a
matter of practice, do have to choose between giving a power of
attorney to a list of individual practitioners and a power of attorney
to the practitioners associated with a Customer Number. This is because
the Office's computer systems only allow either a list of individual
practitioners or a Customer Number to be entered, but not both, nor
more than one Customer Number. The proposal to allow for entry of
multiple Customer Numbers would likely result in separate registration
numbers being entered. The programming required to allow for more than
one Customer Number would be very costly, and updating the list of
patent practitioners would be burdensome on the Office, so it has not
been adopted.
A Customer Number does not need to have only patent
practitioners in a single law firm associated with it. Instead, a
Customer Number can be used to list all of the patent practitioners
associated with a given client and who are working together to
represent the client. As a result, requiring the use of a Customer
Number if more than ten attorneys are to be appointed power of attorney
would not require an applicant to make the choice suggested by the
comment. Furthermore, to allow any of the patent practitioners access
to private PAIR, Customer Number practice must be used.
The comments have not explained why appointment of more than
ten patent practitioners, particularly hundreds of patent
practitioners, is necessary. When a long list of patent practitioners
is submitted to the Office, this list must be constantly updated with a
separate submission for each application. When a patent practitioner
leaves a law firm, he must file a withdrawal for each application in
which he has a power of attorney. There could be thousands of
applications in which he was given a power of attorney, even though he
never personally signed a single communication in any of them. If the
proper action is not taken in the application, he or she can be held
responsible for the failure to take the appropriate action because he
did not timely withdraw. Given the Office's extremely liberal policy of
accepting correspondence from a patent practitioner who is acting in a
representative capacity pursuant to 1.34, whether someone is of
record is only relevant for a patent practitioner signing a change of
correspondence address, an express abandonment without filing a
continuing application, or a disclaimer. The work required for the
Office to constantly update the lists of patent practitioners of record
in receipt, matching and processing of the relevant paper has not been
shown to be justified in exchange for the value actually given to
applicants.
All patent practitioners associated with a Customer Number do
not need to be at the same address. A Customer Number can be used like
a client number, with all the patent practitioners who represent the
client being associated with a single Customer Number.
Comment 6: Another comment asked if more than one
Customer Number could be used to designate the list of patent
practitioners of record so that applicants could give power of attorney
to Customer Number A (all in-house counsel), and Customer Number B
(several patent practitioners who are not in-house counsel).
Alternatively, it was suggested that 1.32(b)(2) be revised to permit
the naming of more than one Customer Number.
Response: The suggestion has not been adopted. As
stated in response to comment 5, in order to implement a change to
permit use of more than one Customer Number to identify either the list
of patent practitioners to be made of record or the correspondence
address, reprogramming of multiple Office computer systems would be
required, which is an automation project that the Office does not have
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resources to devote to at this time. Furthermore, the Office could not
reprogram the software to allow multiple Customer Numbers to be used
for the list of patent practitioners without also allowing multiple
Customer Numbers being used for the correspondence address because
access to private PAIR is a function of the correspondence address
being associated with a single Customer Number. Thus, if the Office
were to allow more than one Customer Number to be given for
correspondence address purposes so that practitioners associated with
each of the Customer Numbers can have access to private PAIR, then
applicants would need to elect a single Customer Number for mailing
purposes, and the Office would have to reprogram its system so as to be
able to capture only the elected Customer Number for mailing purposes.
The more Customer Numbers that the applicant has associated with a
given application, the more likely that the applicant will need to
change one or more of the Customer Numbers associated with the
application. If only a single Customer Number is used (the Office
permits up to three different Customer Numbers to be used, one for the
power of attorney, one for the correspondence address and one for the
fee address, but the same Customer Number can be used), then only a
single Request for Customer Number Data Change can effectuate any
changes necessary to the list of patent practitioners, or the address
associated with a Customer Number. Given that a law firm, or a sole
practitioner, can have multiple Customer Numbers without the Office
being required to make any programming changes, it is more appropriate
for the patent practitioners to use multiple Customer Numbers, with
each Customer Number for a set of practitioners to be associated with a
set of patent applications, rather than the Office to incur the cost of
permitting multiple Customer Numbers to be used for the correspondence
address (private PAIR access), or for the list of patent practitioners
of record in an application.
Comment 7: Most of the comments opposed the proposal
of denying entry of a power of attorney that was not in compliance with
the proposed rules, and noted that there would be significant costs to
applicants as a result of this policy. For example, where the power of
attorney was given by the applicant in a combined declaration and power
of attorney, many comments argued that a new declaration would be
required to provide a proper power of attorney, and that a new
declaration would be difficult to obtain because the applicant may no
longer be employed by the company. Several comments emphasized the
burden to applicants in changing their forms to comply with the limit
of ten patent practitioners of record and requested a several-year
delay in the effective date.
Response: After careful consideration, the Office
has decided to permit applicants to supply a separate paper listing the
patent practitioners who shall be made of record. Where a power of
attorney is included as part of a declaration pursuant to 1.63, and
the power of attorney does not comply with 1.32(b), the declaration
would not be considered defective so long as the requirements of
1.63 (or 1.64) are met. If a separate paper indicating which ten
registered patent attorneys or registered patent agents 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
is provided pursuant to 1.32(c)(3), then the registered patent
practitioners listed on the separate paper will be made of record. On
the other hand, if the power of attorney does not comply with
1.32(b) and the separate paper of 1.32(c)(3) is not provided, then
no patent practitioners will be made of record.
The Office does not encourage combined declarations and power
of attorney. If such a combined format is used, however, it is
recommended that the following language be inserted into the oath or
declaration so that the patent practitioner will be able to take
instructions from the actual client:
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The undersigned hereby authorizes the U.S. attorney or agent
named herein to accept and follow instructions from - - - as to any
action to be taken in the United States Patent and Trademark Office
regarding this application without direct communication between the
U.S. attorney or agent and the undersigned. In the event of a change in
the persons from whom instructions may be taken, the U.S. attorney or
agent named herein will be so notified by the undersigned.
See Responsibilities of Practitioners Representing
Clients in Proceedings Before the Patent and Trademark Office,
1091 Off. Gaz. Patent Office 26 (May 25, 1988). If the
client is the company that employed the inventor, then if the company
is the assignee of the entire interest of the applicant, the assignee
should sign the power of attorney in the patent application, not the
inventor who may no longer be employed by the assignee (company).
Because an inventor who is no longer being employed by a company is
unlikely to be represented by a patent practitioner who has filed a
patent application on behalf of the assignee, the fact that it would be
difficult to obtain the signature of the inventor on a new power of
attorney is not persuasive, and a petition under 1.183 to waive this
provision of the rules is unlikely to be granted for such a reason. An
inventor may be available to sign a power of attorney, but may have a
divergent interest from the company. Where the company (assignee) has
not chosen to intervene in the application, and the power of attorney
is given by the inventor (applicant), the inventor may later revoke the
original power of attorney to the patent practitioners chosen by the
assignee and appoint his/her own patent attorney and change the
correspondence address in the application (or patent). Such an exercise
of authority by an inventor (applicant) is appropriate so long as the
assignee of the entire interest of the applicant has not appointed a
power of attorney, but adds unnecessary complexity to the prosecution
of the application.
Where a power of attorney lists more than ten patent
practitioners and the Office enters those patent practitioners listed
on a separate paper provided pursuant to 1.32(c)(3), a patent
practitioner who is not recognized as the patent attorney or patent
agent of record and, as a result is not entered into the Office's
computer systems, is not required to request to be withdrawn, if the
practitioner ceases to represent the applicant or assignee of the
applicant. If such a patent practitioner files a request to withdraw,
the Office will enter the paper in the patent application file, but
will not process the paper, as the practitioner cannot be withdrawn
because the practitioner was not made of record and was not entered
into the Office's computer records.
Comment 8: One comment, while questioning the wisdom
of having any limit on the number of patent practitioners who may be
given a power of attorney, suggested a limit of 25, and for the Office
to enter in the first 25 when more than 25 are listed in a power of
attorney. Alternatively, it was suggested in two comments that a fee be
required for the entry of more than 10 patent practitioners. Another
comment questioned the limit contending that where an application is
electronically filed, the Office does not have to enter in any lists of
registration numbers, because if PrintEFS were updated, the application
data sheet could be scanned and optical character recognition (OCR) be
used to upload the data.
Response: A smaller number would be preferred by
some, a larger by others, but the Office has decided that ten best
balances the need of applicants to appoint several practitioners
without using Customer Number practice and the need of the Office to
avoid unnecessary work. The suggestion to adopt a fee to accept more
than a set number of patent practitioners of record is noted and may be
pursued in a future rule making, but the extra burden associated with
entering additional names was a significant factor for not adopting the
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suggestions at this time.
Comment 9: Many comments disapproved of the deletion
of associate power of attorney practice. The comments argued that when
a new attorney takes over prosecution of a patent application from a
former counsel, an associate power of attorney is useful to bridge the
gap until a new power of attorney can be executed. In addition, an
associate power of attorney is considered useful where a patent
practitioner of record who is not in the Washington, DC, area appoints
another patent practitioner within the area to assist in the
prosecution for the purpose of some procedural or petition matter, but
does not wish to have the practitioner made of record in all patent
applications (as would happen if they used Customer Number practice,
and added the practitioner to the list of practitioners associated with
the Customer Number). Another comment argued that the associate power
of attorney practice was desirable because of the delays in obtaining a
new power of attorney, and that such delays would lead to the original
attorney of record receiving correspondence for too long. Another
comment suggested that the rules be amended to provide that an
associate attorney's authority is not dependent upon the continued
representation by the appointing principal attorney.
Response: Associate power of attorney practice has
been eliminated because the practice is unnecessary in view of Customer
Number practice. Customer Number practice, like an associate power of
attorney, allows the list of patent practitioners to be changed easily
to add an attorney without execution of a new power of attorney from
the client, and therefore it is not necessary to be able to give an
associate power of attorney if the power of attorney is to the
practitioners associated with a Customer Number. Instead of using an
associate power of attorney, if the power of attorney is to the patent
practitioners associated with a Customer Number, a Request for Customer
Number Data Change can be filed to add a practitioner that would have
been given an associate power. In order to most effectively represent a
patent applicant, a patent practitioner needs access to the private
Patent Application Information Retrieval (private PAIR) system. Private
PAIR enables the practitioner to obtain direct access the Office's
electronic records for a patent application, including in many
instances images of the papers in the patent application. In order to
obtain access to these records, however, a Customer Number must be
associated with the correspondence address of the application, and the
registered practitioner must be associated with the Customer Number.
The availability of the associate power of attorney practice to add new
patent practitioners would encourage practitioners to give an associate
power of attorney rather than having a new power of attorney to the
practitioners associated with a Customer Number signed by the applicant
or assignee of the entire interest of the applicant, even though the
new power of attorney to the practitioners associated with a Customer
Number would enhance their ability to represent the applicant or
assignee of the entire interest of the applicant because of the access
to private PAIR gained by Customer Number practice.
Using a Customer Number effectively as a client number, so that
both in-house patent counsel and other patent practitioners are
associated with the Customer Number, may only be appropriate for
clients who file many patent applications. If the set of practitioners
who are representing a client on a matter is so unique that it is not
efficient to establish a Customer Number specifically for this set of
practitioners, then the power of attorney would be to a list of patent
practitioners and the correspondence address could be given as a
Customer Number so that only those patent practitioners associated with
the Customer Number for the correspondence address (a subset of those
with power of attorney) would have access to private PAIR.
As to the suggestion that an associate power of attorney is
necessary for the attorney to conduct an interview, e.g., in
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the situation where a non-Washington, DC, firm appoints a Washington,
DC, area patent practitioner to conduct an interview in a patent
application, it is noted that the Washington, DC, patent practitioner
does not need to be of record or have an associate power of attorney if
the Washington, DC, practitioner has in their possession a copy of the
application file. Even if the Washington, DC, practitioner does not
have a copy of the application file, the practitioner may conduct an
interview with "proper authority from the applicant or attorney or
agent of record in the form of a paper on file in the application."
See MPEP 713.05. Should an examiner object to a practitioner who is
not of record conducting the interview, the practitioner is encouraged
to bring a letter signed by an attorney of record, authorizing the
practitioner to conduct the interview. For example, a sample of an
"Authorization to Act in a Representative Capacity" is posted on
the Office's Internet Web site under "Forms" at http:
//frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=
linklog&to=http://www.uspto.gov/web/forms/sb0084.pdf.
A faxed copy of the letter would be acceptable.
Similarly, a patent practitioner does not need to be of record
to file a reply to an Office action. See 1.34, and MPEP 405 and
714.01(c). Although the practitioner who is acting in a representative
capacity pursuant to 1.34 cannot sign a change of correspondence
address (1.33(a)(2)), a disclaimer (1.321), or a request to
expressly abandon a patent application (1.138) (unless also filing a
continuing application), he can take all other actions necessary to
continue the prosecution of the application. An associate power of
attorney does not put a patent practitioner in a significantly better
position to represent an applicant than they could exercise by acting
in a representative capacity pursuant to 1.34. An associate power of
attorney does, however, increase the workload of the Office as the
Office practice was to enter the associate patent attorneys or patent
agents into the Office computer records, indicate that the practitioner
is an associate attorney, and then change the listing if the primary
attorney ceased to have a power of attorney, or as new associates were
appointed. In order to reduce the paperwork that the Office needs to
process for a patent application, the Office will no longer enter
associate powers of attorney into the electronic records for patent
applications so as to make the associate attorney of record.
Patent practitioners with an associate power of attorney cannot
directly access private PAIR, and as a result, are less able to
represent a client than one with direct access to private PAIR. Private
PAIR allows access to the Office's computer records for the patent
application, for example to the Patent Application Locating and
Monitoring (PALM) system contents, to the patent term adjustment
calculations, and, if the application is maintained in the Image File
Wrapper (IFW) system, to the image filed of the documents in the file
history. One particularly helpful feature of private PAIR is the
"View Outgoing Correspondence," a feature that allows patent
practitioners to obtain a list of applications with recently mailed
correspondence, and, if the application is maintained in the IFW
system, to view the documents. To have access to private PAIR for a
patent application, the patent practitioner must be associated with a
Customer Number that is associated with the correspondence address for
the application. In addition, the patent practitioner's computer system
(or his or her paralegal's computer system) must be loaded with the
appropriate software. Public PAIR also allows access to much of this
same information, but is only available for applications that have
either published or issued as patents. If the patent practitioner
merely has an associate power of attorney, the practitioner is not
associated with the Customer Number, and is not able to access Private
PAIR. Without access to private PAIR, a patent practitioner may not
have access to the complete patent application file and cannot fully
represent the client. For example, patent term adjustment calculations
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are available in private PAIR, but are not mailed to applicants.
Currently, the Office records both primary attorneys of record
(who may not be associated with a Customer Number) as well as associate
powers of attorney in the Office's PreExam computer system, so as to
have a readily available list of patent practitioners of record for a
particular application. Since an associate power of attorney terminates
with the termination of the power of attorney to the patent
practitioner who gave the associate power of attorney, associate powers
of attorney require record keeping in addition to the entry of the
associate powers of attorney into attorney of record fields, because
the Office must take down the associate power of attorney once the
primary attorney no longer has power of attorney. The suggestion to
allow an associate power of attorney to remain valid even after the
power of attorney to the primary attorney has been revoked, or where
the primary attorney has withdrawn, has not been adopted. If an
applicant or assignee desires the associate to be an attorney of
record, the applicant or assignee should sign the required power of
attorney.
In the situation where a practitioner is being brought in to
assist with some overflow work, no appointment of an associate power of
attorney is necessary before the Office is willing to accept the paper
from the practitioner. Part 1 of the rules of practice do not address
engagement letters between one patent practitioner and another. As a
result, if the attorney of record desires the assistance of another
patent practitioner, the rules of practice do not prohibit the patent
practitioner from obtaining an "Associate Power of Attorney" or
"Authorization of Agent" from the patent practitioner of record for
their records. Furthermore, such a document would be considered a
showing under 1.34 that a person was acting in a representative
capacity pursuant to 1.34 on behalf of the applicant.
As to the delay inherent in obtaining a new power of attorney,
although the original attorney will no longer be permitted to give an
associate power of attorney, the original attorney can withdraw, or
simply change the correspondence address to the new attorney's address.
Comment 10: One comment explained that the list of
practitioners associated with a Customer Number usually only includes
the partners in a firm, whereas an associate power of attorney was
given to associate attorneys. The comment argued that eliminating
associate power of attorney practice would hamper development of
associate attorneys.
Response: The Office's computer system does not
allow both a power of attorney to the practitioners associated with a
Customer Number and either a list of patent practitioners (without use
of a Customer Number) or another list of practitioners associated with
a different Customer Number. Accordingly, the Office cannot enter a
power of attorney to a Customer Number and an associate power of
attorney. Furthermore, the relationship between being of record in a
patent application (as would have occurred where the Office was able to
enter an associate power of attorney), and being able to develop as a
patent practitioner is not understood. A patent practitioner who is an
associate at a firm could act in a representative capacity pursuant to
1.34, under the direction of a practitioner of record. The inability
to sign a change of correspondence address, has little to do with
professional development.
Comment 11: Many comments suggested that a benefit
of associate power of attorney practice is to permit someone who is not
of record to conduct an interview, and that many examiners deny such an
interview because the attorney is not of record, even though the Manual
of Patent Examining Procedure states that such an interview is
acceptable.
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Response: Applicants desiring to have an attorney
who is not of record and are concerned that the examiner may question
the authority of the practitioner to conduct the interview should
delegate to the practitioner the authority to conduct the interview by
a separate letter, such as an "Authorization to Act in a
Representative Capacity." This sample template is available on the
Office's Internet Web site in the listing of forms after PTO/SB/83. A
faxed copy of such a letter would be acceptable, and the practitioner
could bring a copy of the letter to the interview in the event that the
examiner has a question about the authority of the practitioner.
Comment 12: One comment noted that having applicant
execute a new power of attorney would not be unduly burdensome, but
requested clarification of the effect of elimination of associate power
of attorney practice upon previously filed associate powers of attorney.
Response: Previously filed associate powers of attorney remain valid,
and will continue to be effective.
Comment 13: One comment noted a discomfort with the use of Customer
Number practice in that if the Office transposes digits when entering the
Customer Number, the correspondence goes to an entirely incorrect address.
Response: The Office is sensitive to the need to
carefully check for the correct entry of Customer Numbers and is taking
steps to ensure that the correct Customer Number is entered. For
example, when the Office keys in a Customer Number, the address
associated with the Customer Number is retrieved. This address is
compared to the name of the firm or company that filed the patent
application, and any street address included with the application
papers, to check the accuracy of the Customer Number that is entered.
Applicants can assist the Office in improving the accuracy of entry of
the Customer Number by ensuring that the Customer Number is clear and
legible (e.g., at least 12- or 14-point font and not fuzzy).
Comment 14: One comment stated that the proposal to
require the exact name as registered with his or her signature was
unreasonable, but noted that it was not clear that the exact name as
registered was in fact being proposed to be required.
Response: The Office did intend to propose to
require the exact name as registered, as this change was also included
in the rule changes proposed in a recent notice of proposed rule
making. See Changes To Support Implementation of the United
States Patent and Trademark Office 21st Century Strategic Plan, 68
FR 53816 (Sep. 12, 2003), 1275 Off. Gaz. Pat. Office Notices
(Oct. 7, 2003) (proposed rule). On reflection, the Office agrees
that it is not necessary to obtain the exact name as registered to
confirm the identity of the person signing the correspondence, but will
instead require the typed name of the person signing the
correspondence. Signatures are not always legible, and digits on
registration numbers are sometimes transposed or inadvertently omitted.
Accordingly, having a typed name is considered necessary.
Comment 15: As to 1.36, one comment stated that
the revocation of the power of attorney should be available to fewer
than all of the inventors, or fewer than the assignee of the entire
interest of the applicant.
Response: The suggestion has not been adopted. The
current practice is to permit revocation by fewer than all of the
applicants only if a petition under 1.182 is filed, explaining why a
split power of attorney is necessary. See MPEP 402.10. Having more
than one attorney or an attorney and an applicant required to sign all
correspondence in an application often leads to the application
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becoming abandoned due to the difficulty in obtaining the necessary
signatures. As a result, the rules have not been amended to provide for
fewer than all of the applicants to be able to revoke the power of
attorney without a showing of sufficient cause.
Comment 16: One comment suggested that .jpg files be
added to the list of formats accepted for electronic submission of
assignment documents pursuant to 3.24 and 3.25, arguing that this
format is accepted in Trademarks.
Response: At this time it is not feasible for the
Office to expand the formats that will be accepted for electronic
submission of assignment documents. The format .jpg is acceptable for
Trademark documents filed through Trademark Electronic Application
System (TEAS), but not assignments of Trademarks filed through ETAS.
Comment 17: Two comments noted the change in
practice proposed in 3.34 would be more acceptable to applicants if
the Notice of Recordation were modified to also include an Attorney
Docket Number, as well as the title of the invention according to the
application on filing. Alternatively, one comment suggested use of the
Express Mail number as an identifier on the Notice of Recordation.
Response: The proposal to use the Express Mail
number as an identifier is not adopted. The Office can process faxed or
electronically filed assignment documents much quicker than those
received by mail, and allowing use of an Express Mail number would
promote a practice of mailing at a time when the Office is seeking to
discourage mailing and encourage electronic submissions. The Office
has, however, adopted the suggestion to include the title of the
invention, but notes that the title that will be printed on the Notice
of Recordation is the title reflected in the Office's computer records,
and will not be rekeyed from the assignment. As to the attorney docket
number, the suggestion has also been adopted, if the assignment is for
a single property. The notice of recordation cannot reflect docket
numbers if the assignment is for more than one patent or trademark.
Comment 18: Another comment stated that sometimes
the wrong patent assignment document is attached to the Notice of
Recordation, and having a copy of the document has been useful in the
past to enable the mix-up to be addressed.
Response: The Office has made patent and trademark
assignment records available over the Internet. Although the copy of a
patent assignment document cannot be displayed using http:
//frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http://assignments/q?db=pat, the assignment records
on the Internet provide a mechanism to check if the patent assignment
was recorded correctly.
Administrative Procedure Act: This final rule
changes the rules of practice to Office procedures involving power of
attorney practice and recording of assignment documents. The changes
addressed in this final rule are limited to the format for and the
manner of submitting, establishing and changing the power of attorney,
for submitting documents to be recorded in the assignment records, and
the availability of assignment records to the public. Therefore, these
changes involve rules of agency practice and procedure under 5 U.S.C.
553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d
683, 690 (DC Cir. 2001). Therefore, prior notice and opportunity for
public comment were not required pursuant to 5 U.S.C. 553(b) or (c) (or
any other law). Nevertheless, the Office did provide an opportunity for
public comment on the changes in the notice of proposed rule making
because the Office desires the benefit of public comment on the
proposed changes.
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Regulatory Flexibility Act: As prior notice and an
opportunity for public comment were not required pursuant to 5 U.S.C.
553 (or any other law), a regulatory flexibility analysis under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not
required. See 5 U.S.C. 603. The changes in this final rule impose no
additional fees on patent applicants.
Executive Order 13132: This rule making does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be not
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This final rule involves
information collection requirements which are subject to review by the
Office of Management and Budget (OMB) under the Paperwork Reduction Act
of 1995 (44 U.S.C. 3501 et seq.). The collections of
information involved in this final rule have been reviewed and
previously approved by OMB under OMB control numbers 0651-0027, 0651-
0032, 0651-0034, and 0651-0035. The changes in this final rule do not
affect the information requirements associated with these information
collections. Therefore, the Office is not submitting these information
collection packages to OMB for review and approval.
The title, description and respondent description of each of
the information collections are shown below with an estimate of the
annual reporting burdens. Included in the estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information. The principal
impacts of the changes in this proposed rule are to: (1) Provide
for power of attorney to a Customer Number and to limit the number of
attorneys who may be given a power of attorney without using a Customer
Number; (2) eliminate associate power of attorney practice; (3) require
attorneys acting in a representative capacity to specify their name and
registration number; (4) allow access to assignment records except
those relating to any pending or abandoned patent application which is
preserved in confidence under 1.14; (5) provide that assignment
documents submitted for recording must be on certain sizes of paper;
(6) specifically state that the assignment documents that are submitted
for recording will not be returned; (7) for assignments that are
submitted electronically, provide for an electronic signature; (8)
require the citizenship of the parties conveying and receiving the
interest on a trademark assignment cover sheet; (9) provide that a
request to issue a patent to an assignee filed after issue fee payment
must be accompanied by a request for a certificate of correction; and
(10) change the address that would be used for mailing certain patent
applications.
OMB Number: 0651-0027.
Title: Recording Assignments.
Form Numbers: PTO-1594 and PTO-1595.
Type of Review: Approved through June of 2005.
Affected public individuals or households, business or other for
profit institutions, not-for-profit institutions, farms, Federal
Government, and State, local, or tribal governments.
Estimated Number of Respondents: 240,345.
Estimated Time Per Response: 30 minutes.
Estimated Total Annual Burden Hours: 120,173 hours.
Needs and Uses: The Office records over 200,000 assignments or
documents related to ownership of patent and trademark cases each
year. The Office requires a cover sheet to expedite the processing
of these documents and to ensure that they are properly recorded.
OMB Number: 0651-0032.
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Title: Initial Patent Application.
Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29
and 29A, PTO/SB/101-110.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal
Government, and State, local, or tribal governments.
Estimated Number of Respondents: 454,287.
Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
Estimated Total Annual Burden Hours: 4,171,568 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, Provisional Application
Cover Sheet, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute
and regulations, and will further assist the USPTO in processing and
examination of the application.
OMB Number: 0651-0034.
Title: Secrecy and License to Export.
Form Numbers: None.
Type of Review: Approved through April of 2004.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal
Government, and State, local, or tribal governments.
Number of Respondents: 1,669.
Estimated Time Per Response: Between 30 minutes and 4 hours.
Estimated Total Annual Burden Hours: 1,310 hours.
Needs and Uses: When disclosure of an invention may be detrimental
to national security, the Director of the USPTO must issue a secrecy
order and withhold the publication of the application or grant of a
patent for such period as the national interest requires. The USPTO is
also required to grant foreign filing licenses in certain circum-
stances to applicants filing patent applications in foreign countries.
This collection is used by the public to petition the USPTO to allow
disclosure, modification, or rescission of a secrecy order, or to
obtain a general or group permit. Applicants may also petition the
USPTO for a foreign filing license, a retroactive license, or to
change the scope of a license.
OMB Number: 0651-0035.
Title: Representative and Address Provisions.
Form Numbers: PTO/SB/80/81/82/83/122/123/124A/124B/125A/125B.
Type of Review: Approved through November of 2005.
Affected Public: Individuals or households, business or other for-
profit, not for-profit institutions and Federal Government.
Estimated Number of Respondents: 355,005.
Estimated Time Per Response: 3 minutes (0.05 hours) to 1 hour 30
minutes (1.5 hours).
Estimated Total Annual Burden Hours: 30,088 hours.
Needs and Uses: Under 35 U.S.C. 2 and 37 CFR 1.31-1.36 and 1.363,
this information is used to submit a request to grant or revoke power
of attorney in an application or patent, to withdraw as patent
attorney or patent agent of record, or to designate or change the
correspondence address for one or more applications or patents, and
to request or change information associated with a customer number.
Interested persons are requested to send comments regarding
these information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450, or to the Office of Information and Regulatory Affairs,
OMB, 725 17th Street, NW., Washington, DC 20503, (Attn: USPTO Desk
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Officer).
Notwithstanding any other provision of law, no person is
required to respond to nor shall a person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
37 CFR Part 5
Classified information, foreign relations, inventions and patents.
. For the reasons set forth in the preamble, 37 CFR parts 1,
3 and 5 are amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR part 1 continues to
read as follows:
Authority: 35 U.S.C. 2(b)(2).
.2. Amend 1.1 by revising paragraph (a)(4)(i) to read as
follows, and by removing and reserving paragraph (f).
1.1 Addresses for non-trademark correspondence with the United States
Patent and Trademark Office.
(a) * * *
(4) Office of Public Records correspondence. (i) Assignments.
All patent-related documents submitted by mail to be recorded by
Assignment Services Division, except for documents filed together with
a new application, should be addressed to: Mail Stop Assignment
Recordation Services, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See
3.27.
* * * * *
(f) [Reserved]
. 3. Revise 1.12(b) to read as follows:
1.12 Assignment records open to public inspection.
* * * * *
(b) Assignment records, digests, and indexes relating to any
pending or abandoned patent application, which is open to the public
pursuant to 1.11 or for which copies or access may be supplied
pursuant to 1.14, are available to the public. Copies of any
assignment records, digests, and indexes that are not available to the
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public shall be obtainable only upon written authority of the applicant
or applicant's assignee or patent attorney or patent agent or upon a
showing that the person seeking such information is a bona fide
prospective or actual purchaser, mortgagee, or licensee of such
application, unless it shall be necessary to the proper conduct of
business before the Office or as provided in this part.
* * * * *
. 4. Revise 1.31 to read as follows:
1.31 Applicants may be represented by a registered patent attorney or
patent agent.
An applicant for patent may file and prosecute his or her own
case, or he or she may give a power of attorney so as to be represented
by a registered patent attorney or registered patent agent. See 10.6
of this subchapter. The United States Patent and Trademark Office
cannot aid in the selection of a registered patent attorney or patent
agent.
. 5. Add new 1.32 to read as follows:
1.32 Power of attorney.
(a) Definitions.
(1) Power of attorney means a written document by which a principal
designates a registered patent attorney or a registered patent agent to
act on his or her behalf.
(2) Principal means either an applicant for patent (1.41(b)) or an
assignee of entire interest of the applicant. The principal executes a
power of attorney designating one or more registered patent attorneys
or registered patent agents to act on his or her behalf.
(3) Revocation means the cancellation by the principal of the
authority previously given to a registered patent attorney or
registered patent agent to act on his or her behalf.
(4) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application or
patent such that the correspondence address for the patent application
or patent would be the address associated with the Customer Number;
(ii) Designate the fee address (1.363) of a patent such that the
fee address for the patent would be the address associated with the
Customer Number; and
(iii) Submit a list of practitioners such that those registered
patent practitioners associated with the Customer Number would have
power of attorney.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with (c) of this
section;
(3) Give the representative power to act on behalf of the principal;
and
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(4) Be signed by the applicant for patent (1.41(b)) or the
assignee of the entire interest of the applicant.
(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 registered patent attorneys or registered patent
agents (see 10.6 of this subchapter) (patent practitioners). 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 application or patent to which the
power of attorney is directed.
. 6. Amend 1.33 by revising paragraphs (a) introductory
text, (b) introductory text, (b)(1), (b)(2) and (c) to read as follows:
1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When
filing an application, a correspondence address must be set forth in
either an application data sheet (1.76), or elsewhere, in a clearly
identifiable manner, in any paper submitted with an application filing.
If no correspondence address is specified, the Office may treat the
mailing address of the first named inventor (if provided, see
1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office
will direct all notices, official letters, and other communications
relating to the application to the correspondence address. The Office
will not engage in double correspondence with an applicant and a
registered patent attorney or patent agent, or with more than one
registered patent attorney or patent agent except as deemed necessary
by the Director. If more than one correspondence address is specified
in a single document, the Office will establish one as the
correspondence address and will use the address associated with a
Customer Number, if given, over a typed correspondence address. For the
party to whom correspondence is to be addressed, a daytime telephone
number should be supplied in a clearly identifiable manner and may be
changed by any party who may change the correspondence address. The
correspondence address may be changed as follows:
* * * * *
(b) Amendments and other papers. Amendments and other papers,
except for written assertions pursuant to 1.27(c)(2)(ii) of this
part, filed in the application must be signed by:
(1) A registered patent attorney or patent agent of record appointed
in compliance with 1.32(b);
(2) A registered patent attorney or patent agent not of record who
acts in a representative capacity under the provisions of 1.34;
* * * * *
(c) All notices, official letters, and other communications for
the patent owner or owners in a reexamination proceeding will be
directed to the patent attorney or patent agent of record (see
1.32(b)) in the patent file at the address listed on the register of
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patent attorneys and patent agents maintained pursuant to 10.5 and
10.11 or, if no patent attorney or patent agent is of record, to the
patent owner or owners at the address or addresses of record.
Amendments and other papers filed in a reexamination proceeding on
behalf of the patent owner must be signed by the patent owner, or if
there is more than one owner by all the owners, or by a patent attorney
or patent agent of record in the patent file, or by a registered patent
attorney or patent agent not of record who acts in a representative
capacity under the provisions of 1.34. Double correspondence with
the patent owner or owners and the patent owner's patent attorney or
patent agent, or with more than one patent attorney or patent agent,
will not be undertaken. If more than one patent attorney or patent
agent is of record and a correspondence address has not been specified,
correspondence will be held with the last patent attorney or patent
agent made of record.
* * * * *
. 7. Revise 1.34 to read as follows:
1.34 Acting in a representative capacity.
When a registered patent attorney or patent agent 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 in whose behalf he or she
acts. In filing such a paper, the registered patent attorney or patent
agent must specify his or her registration number and name with his or
her signature. Further proof of authority to act in a representative
capacity may be required.
. 8. Revise 1.36 to read as follows:
1.36 Revocation of power of attorney; withdrawal of patent attorney or
patent 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. 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 by
fewer than the assignee of the entire interest of the applicant) may
only revoke the power of attorney upon a showing of sufficient cause,
and payment of the petition fee set forth in 1.17(h). A registered
patent attorney or patent agent 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).
(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
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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 1.613(d) for withdrawal in an interference.
1.53 [Amended]
. 9. Amend 1.53 by removing paragraph (d)(9) and redesignating
paragraph (d)(10) as paragraph (d)(9).
. 10. Revise 1.363 by adding paragraph (c) as follows:
1.363 Fee address for maintenance fee purposes.
* * * * *
(c) A fee address must be an address associated with a Customer
Number.
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
. 11. The authority citation for 37 CFR part 3 continues to
read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
. 12. Revise 3.1 to read as follows:
3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an
international patent application that designates the United States of
America, or an application to register a trademark under section 1 or
44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless
otherwise indicated.
Assignment means a transfer by a party of all or part of its right,
title and interest in a patent, patent application, registered mark or
a mark for which an application to register has been filed.
Document means a document which a party requests to be recorded in the
Office pursuant to 3.11 and which affects some interest in an
application, patent, or registration.
Office means the United States Patent and Trademark Office.
Recorded document means a document which has been recorded in the
Office pursuant to 3.11.
Registration means a trademark registration issued by the Office.
. 13. Revise 3.21 to read as follows:
3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by
the patent number. An assignment relating to a national patent
application must identify the national patent application by the
application number (consisting of the series code and the serial
number, e.g., 07/123,456). An assignment relating to an
international patent application which designates the United States
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of America must identify the international application by the
international application number (e.g., PCT/US90/01234). If
an assignment of a patent application filed under 1.53(b) is
executed concurrently with, or subsequent to, the execution of the
patent application, but before the patent application is filed, it must
identify the patent application by the name of each inventor and the
title of the invention so that there can be no mistake as to the patent
application intended. If an assignment of a provisional application
under 1.53(c) is executed before the provisional application is
filed, it must identify the provisional application by the name of each
inventor and the title of the invention so that there can be no mistake
as to the provisional application intended.
. 14. Revise 3.24 to read as follows:
3.24 Requirements for documents and cover sheets relating to patents and
patent applications.
(a) For electronic submissions: Either a copy of the
original document or an extract of the original document may be
submitted for recording. All documents must be submitted as digitized
images in Tagged Image File Format (TIFF) or another form as prescribed
by the Director. When printed to a paper size of either 21.6 by 27.9 cm
(8 1/2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document
must be legible and a 2.5 cm (one-inch) margin must be present on all
sides.
(b) For paper or facsimile submissions: Either a copy of
the original document or an extract of the original document must be
submitted for recording. Only one side of each page may be used. The
paper size must be either 21.6 by 27.9 cm (8 1/2 by 11 inches) or 21.0
by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch)
margin must be present on all sides. For paper submissions, the paper
used should be flexible, strong white, non-shiny, and durable. The
Office will not return recorded documents, so original documents must
not be submitted for recording.
. 15. Revise 3.25 to read as follows:
3.25 Recording requirements for trademark applications and registrations.
(a) Documents affecting title. To record documents affecting
title to a trademark application or registration, a legible cover sheet
(see 3.31) and one of the following must be submitted:
(1) A copy of the original document;
(2) A copy of an extract from the document evidencing the effect on
title; or
(3) A statement signed by both the party conveying the interest and
the party receiving the interest explaining how the conveyance affects
title.
(b) Name changes. Only a legible cover sheet is required (See 3.31).
(c) All documents. (1) For electronic submissions: All documents
must be submitted as digitized images in Tagged Image File Format
(TIFF) or another form as prescribed by the Director. When printed to a
paper size of either 21.6 by 27.9 cm (8 1/2 by 11 inches) or 21.0 by
29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on
all sides.
(2) For paper or facsimile submissions: All documents should be
submitted on white and non-shiny paper that is either 8 1/2 by 11
inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-
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inch (2.5 cm) margin on all sides in either case. Only one side of each
page may be used. The Office will not return recorded documents, so
original documents should not be submitted for recording.
. 16. Revise 3.27 to read as follows:
3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets submitted by mail for recordation
should be addressed to Mail Stop Assignment Recordation Services,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia 22313-1450, unless they are filed together
with new applications.
. 17. Amend 3.31 by revising paragraphs (a)(7) and (c)(1)
and adding a paragraph (f) to read as follows:
3.31 Cover sheet content.
(a) * * *
(7) The signature of the party submitting the document. For an
assignment document or name change filed electronically, the person who
signs the cover sheet must either:
(i) Place a symbol comprised of letters, numbers, and/or punctuation
marks between forward slash marks submission (e.g. Thomas
O'Malley III) in the signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic signature
specified by the Director.
* * * * *
(c) * * *
(1) Indicate that the document relates to a Government interest; and
* * * * *
(f) Each trademark cover sheet should include the citizenship
of the party conveying the interest and the citizenship of the party
receiving the interest. In addition, if the party receiving the
interest is a partnership or joint venture, the cover sheet should set
forth the names, legal entities, and national citizenship (or the state
or country of organization) of all general partners or active members
that compose the partnership or joint venture.
. 18. Revise 3.34 to read as follows:
3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant to 3.11 will
be corrected only if:
(1) The error is apparent when the cover sheet is compared with the
recorded document to which it pertains, and
(2) A corrected cover sheet is filed for recordation.
(b) The corrected cover sheet must be accompanied by a copy of
the document originally submitted for recording and by the recording
fee as set forth in 3.41.
. 19. Revise 3.41(b)(2) to read as follows:
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3.41 Recording fees.
* * * * *
(b) * * *
(2) The document and cover sheet are either: Faxed or
electronically submitted as prescribed by the Director, or mailed to
the Office in compliance with 3.27.
. 20. Revise 3.81 to read as follows:
3.81 Issue of patent to assignee.
(a) With payment of the issue fee: An application may
issue in the name of the assignee consistent with the application's
assignment where a request for such issuance is submitted with payment
of the issue fee, provided the assignment has been previously recorded
in the Office. If the assignment has not been previously recorded, the
request must state that the document has been filed for recordation as
set forth in 3.11.
(b) After payment of the issue fee: Any request for
issuance of an application in the name of the assignee submitted after
the date of payment of the issue fee, and any request for a patent to
be corrected to state the name of the assignee, must state that the
assignment was submitted for recordation as set forth in 3.11 before
issuance of the patent, and must include a request for a certificate of
correction under 1.323 of this chapter (accompanied by the fee set
forth in 1.20(a)) and the processing fee set forth in 1.17(i) of
this chapter.
(c) Partial assignees. (1) If one or more assignee, together
with one or more inventor, holds the entire right, title, and interest
in the application, the patent may issue in the names of the assignee
and the inventor.
(2) If multiple assignees hold the entire right, title, and
interest to the exclusion of all the inventors, the patent may issue in
the names of the multiple assignees.
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
. 21. The authority citation for 37 CFR part 5 continues to
read as follows:
Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by
the Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418,
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751
et seq.; the Atomic Energy Act of 1954, as amended, 42
U.S.C. 2011 et seq.; the Nuclear Non Proliferation Act of
1978, 22 U.S.C. 3201 et seq.; and the delegations in the
regulations under these Acts to the Director (15 CFR 370.10(j), 22 CFR
125.04, and 10 CFR 810.7).
. 22. Revise 5.1(a) to read as follows:
5.1 Applications and correspondence involving national security.
(a) All correspondence in connection with this part, including
petitions, should be addressed to: Mail Stop L&R, Commissioner for
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
* * * * *
May 18, 2004 JON W. DUDAS
Acting Under Secretary of Commerce for
Intellectual Property and Acting
Director of the United States
Patent and Trademark Office
[1283 OG 148]