402.02(b) Appointment in Application Filed Before September 16, 2012 [R-10.2019]
[Editor Note: See MPEP § 402.02(a) for information pertaining to appointment of a power of attorney in an application filed on or after September 16, 2012.]
I. GENERAL REQUIREMENTS FOR POWERS OF ATTORNEY
37 CFR 1.32 (pre-AIA) Power of attorney.
- (b) A power of attorney must:
- (1) Be in writing;
- (2) Name one or more representatives in compliance with paragraph (c) of this section;
- (3) Give the representative power to act on behalf of the principal; and
- (4) Be signed by the applicant for patent (§ 1.41(b)) or the assignee of the entire interest of the applicant.
For applications filed before September 16, 2012, pre-AIA 37 CFR 1.32(b) sets forth that a power of attorney must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
Pursuant to pre-AIA 37 CFR 1.41(b), the word “applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent in place of the inventor under pre-AIA 37 CFR 1.42 (legal representative of deceased inventor), 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.47(a) (joint inventor(s) on behalf of themselves and joint inventor(s) who refuse to join or cannot be reached or found after diligent effort) or 1.47(b) (by assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest whenever all of the inventors refuse to sign or cannot be found or reached after diligent effort). Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides a combined declaration and power of attorney form on the USPTO website.
While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client. Additionally, relationships between an assignee and the inventors may deteriorate. It is not uncommon in these situations for inventors to stop cooperating and in some cases file powers of attorney in an attempt to control prosecution of the application. A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b). See MPEP § 324.
II. POWERS OF ATTORNEY IN CONTINUING APPLICATIONS
When filing a continuation or divisional application with a copy of a declaration from the parent application in accordance with pre-AIA 37 CFR 1.63(d), applicants are required to identify in the continuation or divisional application any change in power of attorney that occurred after the filing of the parent application. See pre-AIA 37 CFR 1.63(d)(4). The Office suggests doing so by submitting a copy of the most recent power of attorney from the parent application in the continuing application to ensure that the Office recognizes the correct power of attorney.
III. POWER OF ATTORNEY FORMS FOR APPLICATIONS FILED BEFORE SEPTEMBER 16, 2012
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012. Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO website. Form PTO/SB/81A may be used in a patent that issued from an application filed before September 16, 2012.