402.02(a) Appointment in Application Filed On or After September 16, 2012 [R-10.2019]

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

I. GENERAL REQUIREMENTS FOR POWERS OF ATTORNEY

For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application.

Pursuant to 37 CFR 1.42, the word “applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent as provided in 37 CFR 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.45 (joint inventor(s) on behalf of themselves and an omitted inventor) or 1.46 (assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest). Where the applicant is all of the joint inventors under 37 CFR 1.45, one or more of the joint inventor-applicants may be appointed to represent all of the joint inventor-applicants. The power of attorney must be signed by parties identified as the applicant in order to be effective.

As set forth in 37 CFR 1.42(b), if a person is applying for a patent as provided in 37 CFR 1.46, that person (which may be a juristic entity), and not the inventor, is the applicant. In this situation, the Office would not accept a power of attorney from the inventor. An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71. See also MPEP § 325. Persons who otherwise show sufficient proprietary interest in the matter may supply a power of attorney along with a petition under 37 CFR 1.46(b)(2), which power would be effective once the petition is granted.

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

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

II. POWERS OF ATTORNEY IN CONTINUING APPLICATIONS

Pursuant to 37 CFR 1.32(d), a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless: (1) The power of attorney was granted by the inventor; and (2) the continuing application names an inventor who was not named as an inventor in the prior application. Thus 37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application). Additionally, the copy of the power of attorney must comply with 37 CFR 1.32(b) in the continuing application in order to be accepted, meaning that it must be signed by the applicant for patent named in the continuing application.

III. POWER OF ATTORNEY FORMS FOR APPLICATIONS FILED ON OR AFTER SEPTEMBER 16, 2012

The following forms, available on the USPTO website at www.uspto.gov/patent/patents-forms, are for use in applications filed on or after September 16, 2012: PTO/AIA/80, PTO/AIA/81, and PTO/AIA/82. Form PTO/AIA/81A may be used in a patent that issued from an application filed on or after September 16, 2012.

PTO/AIA/80

Form PTO/AIA/80 may be used by assignees who either are the named applicant or are becoming the applicant by filing a request to change the applicant under 37 CFR 1.46(c). In either situation, this form must be accompanied by a statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent). The Form PTO/AIA/80 must be signed by the named assignee or, where the assignee is a juristic entity, by a person who is authorized to act on behalf of the assignee. Where an assignee gives the practitioner specific authority to act on behalf of the assignee (e.g., authority given by organizational resolution), a practitioner may sign the PTO/AIA/80 on behalf of the assignee. Where an assignee is named as the applicant in the patent application, the assignee-applicant can appoint a power of attorney using the PTO/AIA/82 form instead of Form PTO/AIA/80.

PTO/AIA/81

Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by “the applicant,” all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney. For example, if the applicant is four joint inventors, A, B, C. and D, and all four wish to appoint inventor-applicant C as having power of attorney, A, B, C and D must all sign a power of attorney that appoints C.

PTO/AIA/82

Form PTO/AIA/82 may be used by the applicant for patent to appoint one or more patent practitioners. The form has three pages, PTO/AIA/82A (Part A), PTO/AIA/82B (Part B), and PTO/AIA/82C (Part C). Part A is a transmittal page used to identify the application (e.g., application number, if known, filing date, first named inventor) to which the power of attorney is directed and must be signed by a proper 37 CFR 1.33(b) party. Part B is the power of attorney and may also specify the correspondence address. Part B must be signed by the applicant. Where there are multiple applicant parties, a power of attorney signed by each party must be submitted, and the powers must make the same appointment. For information about powers of attorney by less than all applicants, see MPEP § 402.10. Part C is an optional page that may be used to appoint up to 10 patent practitioners by name and registration number.

PTO/AIA/82 may be used like a general power of attorney, if desired. For example, where the applicant is a juristic entity assignee, an officer of the company could sign Part B, leaving the optional “Application Number” and “Filing Date” boxes empty, and then the patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A. If Part A or an equivalent is not filed with Part B, then the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application to which the power is being directed. See 37 CFR 1.5. Note that the “Application Number” and “Filing Date” boxes of Part B may not be filled in by a patent practitioner after Part B has been signed by the applicant (i.e., the form may not be altered once it has been signed).

Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO website.

PTO/AIA/81A

Form PTO/AIA/81A may be used to appoint a power of attorney in a patent resulting from an application filed on or after September 16, 2012 and must be signed by the applicant or the current patent owner. If the form is signed by the current patent owner, compliance with 37 CFR 3.71 and 3.73 is required by filing a Statement Under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent).