402.04 Acting in a Representative Capacity [R-10.2019]

402.04 Acting in a Representative Capacity [R-10.2019]

37 CFR 1.34 Acting in a representative capacity

When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.

In accordance with 37 CFR 1.34, a paper filed by a registered patent attorney or agent in an application in which he or she is not of record must include his or her name and registration number with his or her signature. Acceptance of papers filed in patent applications and reexamination proceedings by registered attorneys and agents upon a representation that the attorney or agent is authorized to act in a representative capacity is for the purpose of facilitating replies on behalf of applicants in patent applications and, further, to obviate the need for filing powers of attorney in individual applications or patents when there has been a change in composition of law firms or corporate patent staffs.

When a patent practitioner acts in a representative capacity by filing a paper in an application filed on or after September 16, 2012, he or she must be submitting the paper on behalf of all parties identified as the applicant. The provisions of 37 CFR 1.34 in no way convey authority for a patent practitioner to submit papers in an application only on behalf of some of the parties identified as the applicant. For example, where the applicant is three joint inventors who do not agree about how to proceed in the application, a patent practitioner who only represents one of the joint inventors may not file papers in the application to the exclusion of the other joint inventors. Likewise, where there are multiple assignees identified as the applicant, a patent practitioner may not file papers only on behalf of some of the parties.

Powers of attorney by less than all applicants or owners are not accepted by the Office unless a petition under 37 CFR 1.36(a) or 37 CFR 1.183 is granted in the application, and the granted petition results in more than one attorney, agent, applicant or owner prosecuting the application at the same time and signing correspondence. See MPEP § 402.10. Acting in a representative capacity under 37 CFR 1.34 is not a means of prosecuting an application only on behalf of some of the applicant parties.

For an application filed before September 16, 2012, a patent practitioner may act in a representative capacity on behalf of the applicant or the assignee of the entire right who has properly established its right to take action under 37 CFR 3.71 and 3.73.

See MPEP § 405 for information concerning interviews with a patent practitioner not of record.

Except as noted below, a person acting in a representative capacity may not sign (A) a power of attorney (37 CFR 1.32), (B) a document granting access to an application, (C) a change of correspondence address), (D) a terminal disclaimer (37 CFR 1.321(b)(1)), or (E) a request for an express abandonment without filing a continuing application (37 CFR 1.138(b)). In an application filed on or after September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) a power of attorney has not been appointed under 37 CFR 1.32(b) and (2) the patent practitioner was named in the application transmittal papers. See 37 CFR 1.14(c) and 1.33(a). In an application filed before September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) an executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed and (2) the patent practitioner was named in the application transmittal papers. See pre-AIA 37 CFR 1.14(c) and pre-AIA 37 CFR 1.33(a).