An applicant for a patent can submit and prosecute the application pro se (on his own) or he can be represented by a registered attorney or agent. One can appoint a practitioner through executing a power of attorney or authorization of agent, having the practitioner appear in person before the USPTO or by having the practitioner sign a paper on their behalf before the USPTO. The USPTO only recognizes individuals (attorney or agents) and not law firms.
Correspondence with the PTO
Through filing, prosecution and possible granting of the application there will likely be must communication between the applicant and the USPTO. To facilitate such communication the applicant needs to provide at least one correspondence address. This correspondence address does not need to be the same as the fee address. If one practitioner is replaced by another practitioner and the power of attorney or agent authorization is now revoked the USPTO correspondence will automatically be sent to the later individual.
A customer number provides a correspondence address, fee address and a list of practitioners with power of attorney. If there are multiple customer numbers the correspondence address will be take from the latest number provided. Applicants can appoint practitioner by reference in the power of attorney to the customer number. Any practitioners can be added or removed from the customer number.
It is at the examiner’s discretion to hold a phone interview. An attorney can call the examiner if the call is beneficial to the prosecution of the patent application.
37 CFR 10.18(b) – All papers signed must be truthful
A practitioner must personally sign every paper filed to the USPTO unless the applicant is required to sign them. 37 C.F.R. § 10.18(b) is invoked every time a paper is signed before the USPTO. It is recommended that the practitioner advise the client of these requirements however it is not required to do so.
Changing Representation: Change, Revocation, or Resignation
The applicant my change or revoke the representation during prosecution of a patent application. This can be at any time and for any reason. The revocation is effective when it is received by the USPTO. The revocation of power of attorney from a principal attorney also revokes any powers granted by the principal attorney to other attorneys.
In the event that an assignment is recorded after a representative has already been appointed, the assignment does not revoke the previous powers of attorney or agent. However, the new assignee can explicitly revoke the previous practitioners powers and appoint a new practitioner in their place.
All applicants or owners need to sign a revocation of power of attorney unless it is accompanied with a petition disclosing sufficient reason why the partially signed paper should be accepted. All subsequent replies need to be signed by all applicants as well.
The assigned practitioner of an application may resign with some restrictions. The withdraw is effective once approved and not simply when it is received. This ensures the applicant can obtain different representation. There is usually a 30 day period between the approval of the withdraw and the end of a reply period or the expiration date of the period which can be obtained through petition for extension of time.
Situations Where Representation Ceases
The principal attorney’s power of attorney terminates if the inventor dies unless the practitioner also have interest in the application (such as an assignee). However, a patent applied for by an inventor who dies after filing can issue to his legal representative. If the rights of the application or granted patent are passed to heirs, administrators or estate executors a new power of attorney is needed.
If the Inventor is Dead, Insane or Unavailable
In the case where an inventor is dead, won’t execute part of an application, cannot be found or is insane or legally incapacitated the application can be made by someone other than the inventor. If there is at least one inventor still available then these inventors can prosecute the application. For the case of joint inventors refusing to help in the prosecution of the application or if they cannot be found or reached (after diligent effort) the other inventors can act for themselves and the other non-signing inventor. An oath in an application such as this should include a petition with the last known address of the unavailable inventor or the representative of the deceased inventor. A non-signing inventor can then join in the prosecution of the application at a later date. If all the inventors and legal representatives of a deceased inventor refuse to prosecute an application or they cannot be reached through diligent effort a different person or corporation my make the application and any true inventors my later join in the application prosecution. In this case the oath of application must include a petition showing the applicant is one whom the inventor agreed to assign the invention to or the applicant must show a sufficient proprietary interest. These actions stand as a preservation to the rights of the parties and to prevent irreparable harm.
Proof of Unavailability: In the case where an inventor is unavailable the applications oath must be accompanied by a petition which fully describes the exact facts regarding the situation. If the context of the situation is the unavailability of representation of a deceased inventor proof of the new attorney’s authority as a representative is needed. Hearsay statements are not normally accepted.
Proof of Refusal: An affidavit containing the circumstances of the refusal must be made explaining the time and place of the refusal. For a written refusal a copy of the document should be made part of the affidavit. Proof of a bona fide attempt to present a copy of the application papers to the non-signing inventor for signature should be included.
In the case that the application only has one inventor and they are not available to sign the oath (so NO inventors are available):
Applicant can be filed by someone else under 37 C.F.R. § 1.47(b). The new applicant must take the normal oath and state relationship to inventor. The applicant needs to have proof that the inventor cannot be found after diligent effort to find him or that the inventor refuses to execute the oath and sign the application. The last known address of the inventor should be included. The applicant should make a prima facie case that the invention is assigned to him or that the inventor agreed in writing to assign the invention to the applicant. The applicant can also show proprietary interest in the subject matter of the application. The applicant needs to show that the application filing is necessary to preserve the rights of the parties and to prevent irreparable damage.
When there are multiple inventors and not all are available:
Reference 37 C.F.R. § 1.47(a). All of the available inventors need to file for themselves like normal. But, they must make an oath or declaration on behalf of the non-signing joint inventor. A non-signing inventor must refuse to sign or be un-locatable after a ‘diligent’ search. All of the inventors need to still be listed on the application. The blank line next to the missing inventors name will be treated as having been signed on behalf of the other inventors. The application must include proof that non-signing inventor cannot be found or reached after diligent effort, refuses to execute the oath. This should also include the last known address of the non-signing inventor.
Non-signing Inventor’s Rights:
In the case of a non-signing inventor, a non-signing inventor may protest their designation as an inventor. They are allowed to inspect any part of the application itself even if it isn’t published. The attorney or agent of the non-signing inventor may also be allowed to inspect the application record.