MPEP - Chapter 0400 - Representative of Applicant …Chapter 400 Representative of Applicant or Owner U.S. Patent and Trademark Office Cannot Aid in Selection of Patent Practitioner

Chapter 400 Representative of Applicant or Owner

U.S. Patent and Trademark OfficeCannot Aid in Selection of PatentPractitioner

401

Power of Attorney; NamingRepresentative

402

Limited Recognition in Patent Matters402.01 Appointment of Power of Attorney402.02

Appointment in Application FiledOn or After September 16, 2012

402.02(a)

Appointment in Application FiledBefore September 16, 2012

402.02(b)

Signature Requirements for PapersFiled in an Application

402.03

[Reserved]402.04 Revocation of Power of Attorney402.05

Applicant Revocation -Application Filed On or AfterSeptember 16, 2012

402.05(a)

Applicant Revocation -Application Filed BeforeSeptember 16, 2012

402.05(b)

Attorney or Agent Withdraws402.06 Assignee Revocation of Power ofAttorney of Applicant and

402.07

Appointment of New Power ofAttorneyApplication in Interference orDerivation Proceeding

402.08

International Application402.09 Appointment/Revocation by LessThan All Applicants or Owners

402.10

Correspondence — With Whom Held;Customer Number Practice

403

[Reserved]403.01 Correspondence in ApplicationsFiled On or After September 16,2012

403.01(a)

Correspondence in ApplicationsFiled Before September 16, 2012

403.01(b)

Two Patent Practitioners for SameApplication

403.02

[Reserved]404 Interviews With Patent PractitionerNot of Record

405

Death of Patent Practitioner406 Suspended or Excluded PatentPractitioner

407

Interviews With Patent Practitioner ofRecord

408

Death, Legal Incapacity, orUnavailability of Inventor

409

[Reserved]409.01 Deceased or LegallyIncapacitated Inventor -

409.01(a)

Application Filed on or AfterSeptember 16, 2012Deceased or LegallyIncapacitated Inventor-

409.01(b)

Application Filed BeforeSeptember 16, 2012

Unavailable Joint Inventor –Application Filed on or afterSeptember 16, 2012

409.02

Unavailability of Inventor -Application Filed Before September16, 2012

409.03

At Least One Joint InventorAvailable

409.03(a)

No Inventor Available409.03(b) Unavailable Legal Representativeof Deceased Inventor

409.03(c)

Proof of Unavailability or Refusal409.03(d) Statement of Last KnownAddress

409.03(e)

Proof of Proprietary Interest409.03(f) Proof of Irreparable Damage409.03(g) Processing and Acceptance of aPre-AIA 37 CFR 1.47Application

409.03(h)

Rights of the Nonsigning Inventor409.03(i) Action Following Acceptance ofa Pre-AIA 37 CFR 1.47Application

409.03(j)

[Reserved]409.04 Application For Patent by anAssignee, Obligated Assignee, or a

409.05

Person Who Otherwise ShowsSufficient Proprietary Interest –Application Filed On or AfterSeptember 16, 2012

Representations to the U.S. Patent andTrademark Office

410

401 U.S. Patent and Trademark OfficeCannot Aid in Selection of Patent Practitioner[R-11.2013]

37 CFR 1.31 Applicant may be represented by one or morepatent practitioners or joint inventors.

An applicant for patent may file and prosecute the applicant'sown case, or the applicant may give power of attorney so as tobe represented by one or more patent practitioners or joint

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inventors, except that a juristic entity (e.g., organizationalassignee) must be represented by a patent practitioner even ifthe juristic entity is the applicant. The Office cannot aid in theselection of a patent practitioner.

An applicant who is a juristic entity must berepresented by a patent practitioner. An applicantfor patent, other than a juristic entity (e.g.,organizational assignee), may file and prosecute hisor her own application, and thus act as his or herown representative (pro se ) before the Office. See37 CFR 1.31. In presenting (whether by signing,filing, submitting, or later advocating) papers to theOffice, a pro se applicant is making thecertifications under 37 CFR 11.18(b), and may besubject to sanctions under 37 CFR 11.18(c) forviolations of 37 CFR 11.18(b)(2). See 37 CFR1.4(d)(4). See also MPEP §§ 402.03 and 410.

If patentable subject matter appears to be disclosedin a pro se application and it is apparent that theapplicant is unfamiliar with the proper preparationand prosecution of patent applications, the examinermay suggest to the applicant that it may be desirableto employ a registered patent attorney or agent. It issuggested that form paragraph 4.10 be incorporatedin an Office action if the use of an attorney or agentis considered desirable and if patentable subjectmatter exists in the application.

¶ 4.10 Employ Services of Attorney or Agent

An examination of this application reveals that applicant isunfamiliar with patent prosecution procedure. While an applicantmay prosecute the application (except that a juristic entity mustbe represented by a patent practitioner, 37 CFR 1.31), lack ofskill in this field usually acts as a liability in affording themaximum protection for the invention disclosed. Applicant isadvised to secure the services of a registered patent attorney oragent to prosecute the application, since the value of a patent islargely dependent upon skilled preparation and prosecution. TheOffice cannot aid in selecting an attorney or agent.

A listing of registered patent attorneys and agents is availableat https://oedci.uspto.gov/OEDCI/. Applicants may also obtaina list of registered patent attorneys and agents located in theirarea by writing to the Mail Stop OED, Director of the U.S. Patentand Trademark Office, P.O. Box 1450, Alexandria, VA22313-1450.

Examiner Note:

The examiner should not suggest that applicant employ anattorney or agent if the application appears to contain nopatentable subject matter.

402 Power of Attorney; NamingRepresentative [R-07.2015]

37 CFR 1.32 Power of attorney.*****

(c) A power of attorney may only name as representative:

(1) One or more joint inventors (§ 1.45);

(2) Those registered patent practitioners associatedwith a Customer Number;

(3) Ten or fewer patent practitioners, stating the nameand registration number of each patent practitioner. Except asprovided in paragraph (c)(1) or (c)(2) of this section, the Officewill not recognize more than ten patent practitioners as beingof record in an application or patent. If a power of attorneynames more than ten patent practitioners, such power of attorneymust be accompanied by a separate paper indicating which tenpatent practitioners named in the power of attorney are to berecognized by the Office as being of record in the applicationor patent to which the power of attorney is directed.

*****

I. NAMING REPRESENTATIVE IN A POWER OFATTORNEY

An applicant may give a power of attorney to oneor more patent practitioners or one or more jointinventors. A power of attorney to a joint inventorwill be recognized even though the one to whom itis given is not a registered practitioner. See 37 CFR1.31 and 37 CFR 1.32(c)(1).

Powers of attorney naming firms of attorneys oragents filed in patent applications will not berecognized. Furthermore, a power of attorney thatnames more than ten patent practitioners will onlybe entered if Customer Number practice is used orif such power of attorney is accompanied by aseparate paper indicating which ten patentpractitioners named in the power of attorney are tobe recognized by the Office as being of record in theapplication or patent to which the power of attorneyis directed. If a power of attorney is not enteredbecause more than ten patent practitioners werenamed, a copy of the power of attorney should berefiled with the separate paper as set forth in 37 CFR1.32(c)(3).

Powers of attorney naming joint inventors, one ormore registered individuals, or all registeredpractitioners associated with a Customer Number,may be made. See MPEP § 403 for CustomerNumber practice. Where a power of attorney is given

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to ten or fewer patent practitioners, 37 CFR1.32(c)(3) requires the name and registration numberof each patent practitioner to be stated in the powerof attorney. If the name submitted on the power ofattorney does not match the name associated withthe registration number provided in the Office ofEnrollment and Discipline records for patentpractitioners, the person that the Office willrecognize as being of record will be the personassociated with the registration number provided,because the Office enters the registration number,not the name, when making the practitioner ofrecord. Accordingly, if the wrong registrationnumber is provided, a new power of attorney willbe required to correct the error.

See MPEP § 601.03(a) for change of correspondenceaddress in applications filed on or after September16, 2012; see MPEP § 601.03(b) for change ofcorrespondence address in applications filed beforeSeptember 16, 2012. See MPEP § 201.06(c),402.02(a), and 402.02(b) for change in the power ofattorney in continuation or divisional applicationsfiled under 37 CFR 1.53(b). See MPEP § 403 forthe addition and/or deletion of a practitioner fromthe list of practitioners associated with a CustomerNumber. For a representative of a requester ofreexamination, see MPEP § 2213.

II. REGISTERED PRACTITIONERS

For a power of attorney to be valid, the attorney oragent appointed must be registered to practice beforethe U.S. Patent and Trademark Office in accordancewith 37 CFR 11.6. Note that under 37 CFR 11.6(c),certain foreigners who are in good standing beforethe patent office of the country in which they resideand practice may be registered as a patent agent topractice before the Office for the limited purpose ofpresenting and prosecuting patent applications ofapplicants located in such country.

Any power of attorney given to a practitioner whohas been suspended or disbarred by the Office isineffective, and does not authorize the person topractice before the Office or to represent applicantsor patentees in patent matters.

III. INEFFECTIVE POWER OF ATTORNEY

When an application for patent is filed accompaniedby a power of attorney to a person who is neitherregistered to practice before the United States Patentand Trademark Office nor named as the inventor ora joint inventor in the application, the Office ofPatent Application Processing will send the officialfiling receipt directly to the first named applicant,together with an explanatory letter. A copy of theletter will be sent to the person named in the powerand a copy placed in the file without being given apaper number. The name of the unregistered personwill not be added to the list of patent practitionersof record for the application in the Office’s electronicrecords.

Form paragraph 4.09 may be used to notify applicantthat the attorney or agent is not registered.

¶ 4.09 Unregistered Attorney or Agent

An examination of this application reveals that applicant hasattempted to appoint an attorney or agent who is neitherregistered to practice before the U.S. Patent and TrademarkOffice in patent matters nor named as an inventor in theapplication, contrary to the Code of Federal Regulations, 37CFR 1.31 and 1.32. Therefore, the appointment is void, abinitio, and the Office will not recognize the appointment. Allcommunications from the Office will be addressed to the firstnamed applicant, unless specific instructions to the contrary aresupplied by the applicant(s) for patent or owner(s).

For applications filed before September 16, 2012, in the absenceof the appointment of a registered practitioner, all papers filedin the application must be signed: (1) by all named applicantsunless one named applicant has been given a power of attorneyto sign on behalf of the remaining applicants, and the power ofattorney is of record in the application; or (2) if there is anassignee of record of an undivided part interest, by all namedapplicants retaining an interest and such assignee; or (3) if thereis an assignee of the entire interest, by such assignee; or (4) bya registered patent attorney or agent not of record who acts ina representative capacity under the provisions of 37 CFR 1.34

For applications filed on or after September 16, 2012, all papersmust be signed by: (1) a patent practitioner of record; (2) a patentpractitioner not of record who acts in a representative capacityunder the provisions of 37 CFR 1.34; or (3) the applicant, exceptthat papers submitted on behalf of a juristic entity applicantmust be signed by a patent practitioner.

While an applicant (other than a juristic entity) may prosecutethe application, lack of skill in this field usually acts as a liabilityin affording the maximum protection for the invention disclosed.Applicant is, therefore, encouraged to secure the services of aregistered patent attorney or agent (i.e., registered to practice

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§ 402REPRESENTATIVE OF APPLICANT OR OWNER

before the U.S. Patent and Trademark Office) to prosecute theapplication, since the value of a patent is largely dependent uponskillful preparation and prosecution.

The Office cannot aid you in selecting a registered attorney oragent, however, a list of attorneys and agents registered topractice before the U.S. Patent and Trademark Office is availableat https://oedci.uspto.gov/OEDCI/. For assistance locating thisinformation, contact the Office of Enrollment and Discipline at(571) 272-4097 or call the Inventors Assistance Center toll-freenumber, 1(800)786-9199.

Examiner Note:

This form paragraph is to be used ONLY after ensuring that thenamed representative is not registered with the Office. A PALMinquiry should be first made and if no listing is given, the Officeof Enrollment and Discipline should be contacted to determinethe current “recognition” status of the individual named by theapplicant in a “power of attorney.” If the named individual isNOT registered or otherwise recognized by the Office, thecorrespondence address of record should be promptly changedto that of the first named applicant unless applicant specificallyprovides a different “correspondence address.” A copy of theOffice communication incorporating this form paragraph shouldalso be mailed to the unregistered individual named by theapplicant in the “power of attorney.”

402.01 Limited Recognition in PatentMatters [R-07.2015]

37 CFR 11.9 Limited recognition in patent matters.

(a) Any individual not registered under §11.6 may, upon ashowing of circumstances which render it necessary orjustifiable, and that the individual is of good moral characterand reputation, be given limited recognition by the OED Directorto prosecute as attorney or agent a specified patent applicationor specified patent applications. Limited recognition under thisparagraph shall not extend further than the application orapplications specified. Limited recognition shall not be grantedwhile individuals who have passed the examination or for whomthe examination has been waived are awaiting registration topractice before the Office in patent matters.

(b) A nonimmigrant alien residing in the United States andfulfilling the provisions of §11.7(a) and (b) may be grantedlimited recognition if the nonimmigrant alien is authorized bythe United States Government to be employed or trained in theUnited States in the capacity of representing a patent applicantby presenting or prosecuting a patent application. Limitedrecognition shall be granted for a period consistent with theterms of authorized employment or training. Limited recognitionshall not be granted or extended to a non-United States citizenresiding abroad. If granted, limited recognition shallautomatically expire upon the nonimmigrant alien’s departurefrom the United States.

(c) An individual not registered under §11.6 may, ifappointed by an applicant, prosecute an international patentapplication only before the United States International SearchingAuthority and the United States International PreliminaryExamining Authority, provided that the individual has the right

to practice before the national office with which the internationalapplication is filed as provided in PCT Art. 49, Rule 90 and §1.455 of this subchapter, or before the International Bureauwhen the USPTO is acting as Receiving Office pursuant to PCTRules 83.1 bis and 90.1.

If a request for limited recognition under 37 CFR11.9 accompanies the application, the Office ofPatent Application Processing will forward the fileto the Director of the Office of Enrollment andDiscipline.

See MPEP § 1807 for representation in internationalapplications (PCT) and MPEP § 2911 forrepresentation in international design applications.

402.02 Appointment of Power of Attorney[R-11.2013]

For appointment of a power of attorney inapplications filed on or after September 16, 2012,see MPEP § 402.02(a). For appointment of a powerof attorney in applications filed before September16, 2012, see MPEP § 402.02(b).

Note that effective June 25, 2004, the associatepower of attorney practice was eliminated. See Revision of Power of Attorney and AssignmentPractice, 69 FR 29865 (May 2004). The Office nolonger accepts a power of attorney signed by aprincipal to name an associate power of attorney.An appointment of an associate power of attorneyfiled on or after June 25, 2004 will not be accepted.See also MPEP § 406.

402.02(a) Appointment in Application FiledOn or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 402.02(b) forinformation pertaining to appointment of a powerof attorney in an application filed before September16, 2012.]

37 CFR 1.32 Power of attorney.*****

(b) A power of attorney must:

(1) Be in writing;

(2) Name one or more representatives in compliancewith paragraph (c) of this section;

(3) Give the representative power to act on behalf ofthe principal; and

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(4) Be signed by the applicant for patent (§ 1.42) orthe patent owner. A patent owner who was not the applicantunder § 1.46 must appoint any power of attorney in compliancewith §§ 3.71 and 3.73 of this chapter.

*****

(d) A power of attorney from a prior national applicationfor which benefit is claimed under 35 U.S.C. 120, 121, 365(c),or 386(c) in a continuing application may have effect in thecontinuing application if a copy of the power of attorney fromthe 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 whowas not named as an inventor in the prior application.

(e) If the power of attorney was granted by the originallynamed inventive entity, and an added inventor pursuant to §1.48 does not provide a power of attorney consistent with thepower of attorney granted by the originally named inventiveentity, the addition of the inventor results in the loss of thatpower of attorney upon grant of the § 1.48 request. Thisprovision does not preclude a practitioner from acting pursuantto § 1.34, if applicable.

I. GENERAL REQUIREMENTS FOR POWERS OFATTORNEY

For applications filed on or after September 16,2012, 37 CFR 1.32(b)(4) sets forth that a power ofattorney must be signed by the applicant for patentor the patent owner (for reissue applications,reexamination proceedings and supplementalexamination proceedings). An assignee who is notan applicant cannot revoke or appoint power ofattorney in a patent application.

Pursuant to 37 CFR 1.42, the word “applicant” refersto the inventor or all of the joint inventors or to theperson applying for a patent as provided in 37 CFR1.43 (legal representative of a deceased or legallyincapacitated inventor), 1.45 (joint inventor(s) onbehalf of themselves and an omitted inventor) or1.46 (assignee, obligated assignee, or person whootherwise shows sufficient proprietary interest). Asset forth in 37 CFR 1.42(b), if a person is applyingfor 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 wouldnot accept a power of attorney from the inventor.An assignee or obligated assignee who is theapplicant may appoint an effective power of attorneywithout the need to establish the right to take actionunder 37 CFR 3.71. See also MPEP § 325. Personswho otherwise show sufficient proprietary interest

in the matter may supply a power of attorney alongwith a petition under 37 CFR 1.46(b)(2), whichpower would be effective once the petition isgranted.

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

The power of attorney must be signed by someonewho is authorized to act on behalf of theassignee-applicant (i.e., a person with a title thatcarries apparent authority, or a person who includesa statement of authorization to act.). A patentpractitioner is not authorized to act on behalf of anassignee simply by existence of authority toprosecute an application.

II. POWERS OF ATTORNEY IN CONTINUINGAPPLICATIONS

Pursuant to 37 CFR 1.32(d), a power of attorneyfrom a prior national application for which benefitis claimed under 35 U.S.C. 120, 121, 365(c) , or386(c) in a continuing application may have effectin the continuing application if a copy of the powerof attorney from the prior application is filed in thecontinuing application unless: (1) The power ofattorney was granted by the inventor; and (2) thecontinuing application names an inventor who wasnot named as an inventor in the prior application.Thus 37 CFR 1.32(d) specifically requires that acopy of the power of attorney from the priorapplication be filed in the continuing application tohave effect (even where a change in power did notoccur in the prior application).

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§ 402.02(a)REPRESENTATIVE OF APPLICANT OR OWNER

III. POWER OF ATTORNEY FORMS FORAPPLICATIONS FILED ON OR AFTERSEPTEMBER 16, 2012

Form PTO/AIA/80 should be used by assignees whowant to become the applicant (see 37 CFR 1.46(c)).The form may also be used by assignee-applicantswho were named as the applicant when theapplication was filed, if desired. In either situation,this form must be accompanied by a statement under37 CFR 3.73(c) (form PTO/AIA/96 or equivalent).Where an assignee gives the practitioner specificauthority to act on behalf of the assignee (e.g.,authority given by organizational resolution), apractitioner may sign the PTO/AIA/80 on behalf ofthe assignee. Where an assignee is named as theapplicant in the patent application (i.e., in a signedApplication Data Sheet, form PTO/AIA/14 orequivalent), the assignee-applicant can appoint apower of attorney using the PTO/AIA/82 form. Theforms are available on the USPTO website atwww.uspto.gov/patent/patents-forms. These formsshould only be used in applications filed on or afterSeptember 16, 2012.

Note that the Office does not recommend thatpractitioners use a combined declaration and powerof attorney document, and no longer provides sucha form on the USPTO website.

402.02(b) Appointment in Application FiledBefore September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 402.02(a) forinformation pertaining to appointment of a powerof attorney in an application filed on or afterSeptember 16, 2012.]

I. GENERAL REQUIREMENTS FOR POWERS OFATTORNEY

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 compliancewith paragraph (c) of this section;

(3) Give the representative power to act on behalf ofthe principal; and

(4) Be signed by the applicant for patent (§ 1.41(b)) orthe 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 ofattorney must be signed by the applicant for patentor 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 jointinventors or to the person applying for a patent inplace of the inventor under pre-AIA 37 CFR 1.42(legal representative of deceased inventor), 1.43(legal representative of a deceased or legallyincapacitated inventor), 1.47(a) (joint inventor(s) onbehalf of themselves and joint inventor(s) who refuseto join or cannot be reached or found after diligenteffort) or 1.47(b) (by assignee, obligated assignee,or person who otherwise shows sufficient proprietaryinterest whenever all of the inventors refuse to signor cannot be found or reached after diligent effort).Note that the Office does not recommend thatpractitioners use a combined declaration and powerof attorney document, and no longer provides acombined declaration and power of attorney formon the USPTO website.

While a power of attorney may be signed by theinventor(s), the power of attorney should be signedby the assignee of the entire interest where oneexists. Otherwise, the assignee may be paying thebill, while the inventor is providing the power ofattorney, thereby possibly raising an issue as to whois the practitioner’s client. Additionally, relationshipsbetween an assignee and the inventors maydeteriorate. It is not uncommon in these situationsfor inventors to stop cooperating and in some casesfile powers of attorney in an attempt to controlprosecution of the application. A power of attorneyby the assignee of the entire interest revokes allpowers given by the applicant and prior assigneesif the assignee establishes their right to take actionas provided in pre-AIA 37 CFR 3.71 and pre-AIA37 CFR 3.73(b). See MPEP § 324.

II. POWERS OF ATTORNEY IN CONTINUINGAPPLICATIONS

When filing a continuation or divisional applicationwith a copy of a declaration from the parent

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application in accordance with pre-AIA 37 CFR1.63(d), applicants are required to identify in thecontinuation or divisional application any change inpower of attorney that occurred after the filing ofthe parent application. See pre-AIA 37 CFR1.63(d)(4). The Office suggests doing so bysubmitting a copy of the most recent power ofattorney from the parent application in the continuingapplication to ensure that the Office recognizes thecorrect power of attorney.

III. POWER OF ATTORNEY FORMS FORAPPLICATIONS FILED BEFORE SEPTEMBER16, 2012

Form PTO/SB/80 or PTO/SB/81 (available atwww.uspto.gov/patent/patents-forms) should beused for powers of attorney in applications filedbefore September 16, 2012. Note that the Officedoes not recommend that practitioners use acombined declaration and power of attorneydocument, and no longer provides such a form onthe USPTO website.

402.03 Signature Requirements for PapersFiled in an Application [R-07.2015]

I. SIGNATURE AND CERTIFICATE

37 CFR 11.18 Signature and certificate for correspondencefiled in the Office.

(a) For all documents filed in the Office in patent,trademark, and other non-patent matters, and all documents filedwith a hearing officer in a disciplinary proceeding, except forcorrespondence that is required to be signed by the applicant orparty, each piece of correspondence filed by a practitioner inthe Office must bear a signature, personally signed or insertedby such practitioner, in compliance with § 1.4(d) or § 2.193(a)of this chapter.

(b) By presenting to the Office or hearing officer in adisciplinary proceeding (whether by signing, filing, submitting,or later advocating) any paper, the party presenting such paper,whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s ownknowledge are true, all statements made therein on informationand belief are believed to be true, and all statements made thereinare made with the knowledge that whoever, in any matter withinthe jurisdiction of the Office, knowingly and willfully falsifies,conceals, or covers up by any trick, scheme, or device a materialfact, or knowingly and willfully makes any false, fictitious, orfraudulent statements or representations, or knowingly andwillfully makes or uses any false writing or document knowingthe same to contain any false, fictitious, or fraudulent statementor entry, shall be subject to the penalties set forth under 18

U.S.C. 1001 and any other applicable criminal statute, andviolations of the provisions of this section may jeopardize theprobative value of the paper; and

(2) To the best of the party’s knowledge, informationand belief, formed after an inquiry reasonable under thecircumstances,

(i) The paper is not being presented for anyimproper purpose, such as to harass someone or to causeunnecessary delay or needless increase in the cost of anyproceeding before the Office;

(ii) The other legal contentions therein arewarranted by existing law or by a nonfrivolous argument forthe extension, modification, or reversal of existing law or theestablishment of new law;

(iii) The allegations and other factual contentionshave evidentiary support or, if specifically so identified, arelikely to have evidentiary support after a reasonable opportunityfor further investigation or discovery; and

(iv) The denials of factual contentions arewarranted on the evidence, or if specifically so identified, arereasonably based on a lack of information or belief.

(c) Violations of any of paragraphs (b)(2)(i) through (iv)of this section are, after notice and reasonable opportunity torespond, subject to such sanctions or actions as deemedappropriate by the USPTO Director, which may include, butare not limited to, any combination of—

(1) Striking the offending paper;

(2) Referring a practitioner’s conduct to the Directorof Enrollment and Discipline for appropriate action;

(3) Precluding a party or practitioner from submittinga paper, or presenting or contesting an issue;

(4) Affecting the weight given to the offending paper;or

(5) Terminating the proceedings in the Office.

(d) Any practitioner violating the provisions of this sectionmay also be subject to disciplinary action.

37 CFR 11.18(a) emphasizes that every paper filedby a practitioner must be personally signed by thepractitioner, except those required to be signed bythe applicant or party.

37 CFR 11.18(b) provides that, by presenting anypaper to the Office, the party presenting such paper(whether a practitioner or nonpractitioner) is: (1)certifying that the statements made therein aresubject to the declaration clause of 37 CFR 1.68;and (2) making the certifications required for papersfiled in a federal court under Rule 11(b) of theFederal Rules of Civil Procedure. See MPEP § 410.37 CFR 11.18(d) provides that any practitionerviolating the provisions of 37 CFR 11.18 may also

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§ 402.03REPRESENTATIVE OF APPLICANT OR OWNER


be subject to disciplinary action, thus clarifying thata practitioner may be subject to disciplinary actionin lieu of, or in addition to, the sanctions set forth in37 CFR 11.18(c) for violations of 37 CFR 11.18.See also 37 CFR 1.4(d)(4).

The certifications in 37 CFR 11.18(b) apply to allpapers filed in the Office, including allegations ofimproper conduct made by a registered practitionerin any Office proceeding.

II. ACTING IN A REPRESENTATIVE CAPACITY

37 CFR 1.34 Acting in a representative capacity

When a patent practitioner acting in a representative capacityappears in person or signs a paper in practice before the UnitedStates Patent and Trademark Office in a patent case, his or herpersonal appearance or signature shall constitute a representationto the United States Patent and Trademark Office that under theprovisions of this subchapter and the law, he or she is authorizedto represent the particular party on whose behalf he or she acts.In filing such a paper, the patent practitioner must set forth hisor her registration number, his or her name and signature. Furtherproof of authority to act in a representative capacity may berequired.

In accordance with 37 CFR 1.34, a paper filed by aregistered patent attorney or agent in an applicationin which he or she is not of record must include hisor her name and registration number with his or hersignature. Acceptance of papers filed in patentapplications and reexamination proceedings byregistered attorneys and agents upon a representationthat the attorney or agent is authorized to act in arepresentative capacity is for the purpose offacilitating replies on behalf of applicants in patentapplications and, further, to obviate the need forfiling powers of attorney in individual applicationsor patents when there has been a change incomposition of law firms or corporate patent staffs.

See MPEP § 408 for information concerninginterviews with an attorney or agent not of record.

Except as noted below, a person acting in arepresentative capacity may not sign (A) a power ofattorney (37 CFR 1.32), (B) a document grantingaccess to an application, (C) a change ofcorrespondence address)), (D) a terminal disclaimer(37 CFR 1.321(b)(1)(iv)), or (E) a request for anexpress abandonment without filing a continuingapplication (37 CFR 1.138(b)). In an application

filed on or after September 16, 2012, a person actingin a representative capacity may sign a documentgranting access to an application or a change ofcorrespondence address if (1) a power of attorneyhas not been appointed under 37 CFR 1.32(b) and(2) the patent practitioner was named in theapplication transmittal papers. See 37 CFR 1.14(c)and 1.33(a). In an application filed before September16, 2012, a person acting in a representative capacitymay sign a document granting access to anapplication or a change of correspondence addressif (1) an executed oath or declaration under pre-AIA37 CFR 1.63 has not been filed and (2) the patentpractitioner was named in the application transmittalpapers. See pre-AIA 37 CFR 1.14(c) and pre-AIA37 CFR 1.33(a).

402.04 [Reserved]

402.05 Revocation of Power of Attorney[R-11.2013]

Revocation of a power of attorney becomes effectiveon the date that the revocation is RECEIVED in theOffice (not on the date of ACCEPTANCE). Uponrevocation of the power of attorney, appropriatenotification is sent by the Office. While anapplication is involved in an interference orderivation proceeding, any power of attorney orrevocation of power of attorney should be forwardedto the Patent Trial and Appeal Board forconsideration. See MPEP § 402.08.

See MPEP § 402.05(a) for applicant revocation ofpowers of attorney in applications filed on or afterSeptember 16, 2012. See MPEP § 402.05(b) forapplicant revocation of powers of attorney inapplications filed before September 16, 2012. SeeMPEP § 402.07 for assignee revocation of a powerof attorney.

402.05(a) Applicant Revocation - ApplicationFiled On or After September 16, 2012[R-11.2013]

37 CFR 1.36 Revocation of power of attorney; withdrawalof patent attorney or agent.

(a) A power of attorney, pursuant to § 1.32(b), may berevoked at any stage in the proceedings of a case by the applicant

400-8Rev. 07.2015, October 2015


or patent owner. A power of attorney to the patent practitionersassociated with a Customer Number will be treated as a requestto revoke any powers of attorney previously given. Fewer thanall of the applicants (or fewer than all patent owners in asupplemental examination or reexamination proceeding) mayrevoke the power of attorney only upon a showing of sufficientcause, and payment of the petition fee set forth in § 1.17(f). Apatent practitioner will be notified of the revocation of the powerof attorney. Where power of attorney is given to the patentpractitioners associated with a Customer Number (§ 1.32(c)(2)),the practitioners so appointed will also be notified of therevocation of the power of attorney when the power of attorneyto all of the practitioners associated with the Customer Numberis revoked. The notice of revocation will be mailed to thecorrespondence address for the application (§ 1.33) in effectbefore the revocation. An assignment will not of itself operateas a revocation of a power previously given, but the assigneemay become the applicant under § 1.46(c) and revoke anyprevious power of attorney and grant a power of attorney asprovided in § 1.32(b).

*****

A power of attorney may be revoked only by theapplicant or patent owner. An assignee who is notthe applicant may revoke a power of attorney onlyif the assignee becomes the applicant per 37 CFR1.46(c) (which requires compliance with 37 CFR3.71 and 3.73).

If the power of attorney was granted by the originallynamed inventive entity and an added inventorpursuant to § 1.48 does not provide a power ofattorney consistent with the power of attorneygranted by the originally named inventive entity, theaddition of the inventor results in the loss of thatpower of attorney upon grant of the § 1.48 request.This provision does not preclude a practitioner fromacting pursuant to 37 CFR 1.34, if applicable. SeeMPEP § 402.03 for information pertaining to actingin a representative capacity.

A nonsigning inventor or legal representative maysubsequently join in the application by submittingan oath or declaration under 37 CFR 1.63. However,37 CFR 1.64(f) provides that the submission of anoath or declaration by a nonsigning inventor or legalrepresentative in an application filed under 37 CFR1.43, 1.45 or 1.46 will not permit the nonsigninginventor or legal representative to revoke or grant apower of attorney.

See MPEP § 402.02(a) for appointment of a newpower of attorney in an application filed on or afterSeptember 16, 2012.

When an original power of attorney is filed givingpower of attorney to attorneys A, B, and C, and thesame principal subsequently files another power ofattorney, giving power of attorney to D withoutrevoking all prior powers of attorney, thesubsequently filed power of attorney will be treatedas a revocation of the original power of attorney.Similarly, if the applicant signed the original powerof attorney, and an assignee of the entire interest ofthe applicant later takes action and files a new powerof attorney, the original power of attorney is revokedand replaced by the power of attorney filed by theassignee. In addition, if a power of attorney is givento the practitioners associated with a CustomerNumber, and a (second) power of attorney is laterreceived giving power of attorney to patentpractitioners associated with a different CustomerNumber, the second power of attorney will beprocessed, with the first Customer Number beingreplaced with the second. The power of attorney tothe practitioners associated with the first CustomerNumber is automatically revoked in this situation.In all of these situations, the most recently filedpower of attorney will control.

402.05(b) Applicant Revocation - ApplicationFiled Before September 16, 2012 [R-11.2013]

37 CFR 1.36 (pre-AIA) Revocation of power of attorney;withdrawal of patent attorney or agent.

(a) A power of attorney, pursuant to § 1.32(b), may berevoked at any stage in the proceedings of a case by an applicantfor patent (§ 1.41(b)) or an assignee of the entire interest of theapplicant, or the owner of the entire interest of a patent. A powerof attorney to the patent practitioners associated with a CustomerNumber will be treated as a request to revoke any powers ofattorney previously given. Fewer than all of the applicants (orfewer than all of the assignees of the entire interest of theapplicant or, in a reexamination proceeding, fewer than all theowners of the entire interest of a patent) may revoke the powerof attorney only upon a showing of sufficient cause, and paymentof the petition fee set forth in § 1.17(f). A patent practitionerwill be notified of the revocation of the power of attorney. Wherepower of attorney is given to the patent practitioners associatedwith a Customer Number (§ 1.32(c)(2)), the practitioners soappointed will also be notified of the revocation of the powerof attorney when the power of attorney to all of the practitionersassociated with the Customer Number is revoked. The noticeof revocation will be mailed to the correspondence address for

Rev. 07.2015, October 2015400-9

§ 402.05(b)REPRESENTATIVE OF APPLICANT OR OWNER

the application (§ 1.33) in effect before the revocation. Anassignment will not of itself operate as a revocation of a powerpreviously given, but the assignee of the entire interest of theapplicant may revoke previous powers of attorney and giveanother power of attorney of the assignee’s own selection asprovided in § 1.32(b).

*****

See MPEP § 402.07 for revocation of a powerattorney by the assignee. Form PTO/SB/81 may beused to revoke a power of attorney in an applicationfiled before September 16, 2012. See also MPEP §402.02(b).

If the power of attorney was granted by the originallynamed inventive entity and an added inventorpursuant to § 1.48 does not provide a power ofattorney consistent with the power of attorneygranted by the originally named inventive entity, theaddition of the inventor results in the loss of thatpower of attorney upon grant of the § 1.48 request.This provision does not preclude a practitioner fromacting pursuant to 37 CFR 1.34, if applicable. SeeMPEP § 402.03 for information pertaining to actingin a representative capacity.

When an original power of attorney is filed givingpower of attorney to attorneys A, B, and C, and thesame principal subsequently files another power ofattorney, giving power of attorney to D withoutrevoking all prior powers of attorney, thesubsequently filed power of attorney will be treatedas a revocation of the original power of attorney.Similarly, if the applicant signed the original powerof attorney, and an assignee of the entire interest ofthe applicant later takes action and files a new powerof attorney, the original power of attorney is revokedand replaced by the power of attorney filed by theassignee. In addition, if a power of attorney is givento the practitioners associated with a CustomerNumber, and a (second) power of attorney is laterreceived giving power of attorney to patentpractitioners associated with a different CustomerNumber, the second power of attorney will beprocessed, with the first Customer Number beingreplaced with the second. The power of attorney tothe practitioners associated with the first CustomerNumber is automatically revoked in this situation.In all of these situations, the most recently filedpower of attorney will control.

A nonsigning inventor may subsequently join in apre-AIA 37 CFR 1.47 application by submitting anoath or declaration under pre-AIA 37 CFR 1.63.However, even if the nonsigning inventor joins inthe application, he or she cannot revoke or give apower of attorney without agreement of the pre-AIA37 CFR 1.47 applicant.

402.06 Attorney or Agent Withdraws[R-07.2015]

37 CFR 1.36 Revocation of power of attorney; withdrawalof patent attorney or agent.

*****

(b) A registered patent attorney or patent agent who hasbeen given a power of attorney pursuant to § 1.32(b) maywithdraw as attorney or agent of record upon application to andapproval by the Director. The applicant or patent owner will benotified of the withdrawal of the registered patent attorney orpatent agent. Where power of attorney is given to the patentpractitioners associated with a Customer Number, a request todelete all of the patent practitioners associated with the CustomerNumber may not be granted if an applicant has given power ofattorney to the patent practitioners associated with the CustomerNumber in an application that has an Office action to which areply is due, but insufficient time remains for the applicant tofile a reply. See § 41.5 of this title for withdrawal duringproceedings before the Patent Trial and Appeal Board.

37 CFR 11.116 Declining or terminating representation.

(a) Except as stated in paragraph (c) of this section, apractitioner shall not represent a client, or where representationhas commenced, shall withdraw from the representation of aclient if:

(1) The representation will result in violation of theUSPTO Rules of Professional Conduct or other law;

(2) The practitioner’s physical or mental conditionmaterially impairs the practitioner’s ability to represent theclient; or

(3) The practitioner is discharged.

(b) Except as stated in paragraph (c) of this section, apractitioner may withdraw from representing a client if:

(1) Withdrawal can be accomplished without materialadverse effect on the interests of the client;

(2) The client persists in a course of action involvingthe practitioner’s services that the practitioner reasonablybelieves is criminal or fraudulent;

(3) The client has used the practitioner’s services toperpetrate a crime or fraud;

(4) A client insists upon taking action that thepractitioner considers repugnant or with which the practitionerhas a fundamental disagreement;

(5) The client fails substantially to fulfill an obligationto the practitioner regarding the practitioner’s services and has

400-10Rev. 07.2015, October 2015


been given reasonable warning that the practitioner willwithdraw unless the obligation is fulfilled;

(6) The representation will result in an unreasonablefinancial burden on the practitioner or has been renderedunreasonably difficult by the client; or

(7) Other good cause for withdrawal exists.

(c) A practitioner must comply with applicable lawrequiring notice to or permission of a tribunal when terminatinga representation. When ordered to do so by a tribunal, apractitioner shall continue representation notwithstanding goodcause for terminating the representation.

(d) Upon termination of representation, a practitioner shalltake steps to the extent reasonably practicable to protect aclient’s interests, such as giving reasonable notice to the client,allowing time for employment of other counsel, surrenderingpapers and property to which the client is entitled and refundingany advance payment of fee or expense that has not been earnedor incurred. The practitioner may retain papers relating to theclient to the extent permitted by other law.

See MPEP § 402.05(a) for applicant revocation ofpower of attorney in applications filed on or afterSeptember 16, 2012. For revocation of power ofattorney in applications filed before September 16,2012, see MPEP § 402.05(b) for revocation by theapplicant and MPEP § 402.07 for revocation by theassignee. See 37 CFR 11.116 for informationregarding permissive and mandatory withdrawal.When filing a request to withdraw as attorney oragent of record, the patent attorney or agent shouldbriefly state the reason(s) for which he or she iswithdrawing so that the Office can determinewhether to grant the request. Among severalscenarios addressed in 37 CFR 11.116(b),subsections (5) and (6) permit withdrawal when afterreasonable warning the client fails to compensatethe practitioner, or when the representation “has beenrendered unreasonably difficult by the client.” Whenpreparing a request for withdrawal for such reasons,the practitioner should also be mindful of 37 CFR11.106, which requires a practitioner to maintain theconfidentiality of client information (except inlimited circumstances). Where withdrawal ispredicated upon such reasons, the practitioner, ratherthan divulging confidential or secret informationabout the client, should identify the reason(s) forrequesting to withdraw as being based on“irreconcilable differences.” An explanation of andthe evidence supporting “irreconcilable differences”should be submitted as proprietary material inaccordance with MPEP § 724.02 to ensure that theclient’s confidences are maintained.

In the event that a notice of withdrawal is filed bythe attorney or agent of record, the file will beforwarded to the appropriate official for decision onthe request. The withdrawal is effective whenapproved rather than when received.

Each attorney of record must sign the notice ofwithdrawal, or the notice of withdrawal must containa clear indication of one attorney signing on behalfof himself or herself and another. A withdrawal ofanother attorney or agent of record, without alsowithdrawing the attorney or agent signing the requestis a revocation, not a withdrawal.

Pursuant to 37 CFR 11.116(c), when terminating arepresentation a practitioner must provide notice to,or request permission from, a tribunal when requiredby applicable law. Pursuant to 37 CFR 11.116(d), apractitioner is required to take steps to the extentreasonably practicable to protect a client’s interests,such as giving reasonable notice to the client,allowing time for employment of other counsel,surrendering papers and property to which the clientis entitled and refunding any advance payment offee or expense that has not been earned or incurred.

The Request for Withdrawal As Attorney or Agentand Change of Correspondence Address forms(PTO/SB/83 or PTO/AIA/83, available atwww.uspto.gov/patent/patents-forms) provide asection wherein practitioners may certify thecompletion of activities necessary for the request towithdraw from representation to be granted. ARequest for Withdrawal As Attorney or Agent mayalternatively be filed as a Web-based e-petition (seewww.uspto.gov/patents-application-process/applying-online/epetitions/epetitions-faqs for more information).When the correspondence address will change as aresult of withdrawal, the withdrawing practitioner(s)must request that the Office direct all futurecorrespondence to (i) the first named inventor orassignee that has properly made itself of recordpursuant to 37 CFR 3.71 (for applications filedbefore September 16, 2012), or (ii) the applicant (forapplications filed on or after September 16, 2012)or (iii) the assignee of record (for proceedingsinvolving issued patents). Practitioners may do soby specifying either the correspondence address of,or the address associated with the Customer Numberof, any appropriate party as specified above.

Rev. 07.2015, October 2015400-11



http://www.uspto.gov/patents-application-process/applying-online/epetitions/epetitions-faqs

http://www.uspto.gov/patents-application-process/applying-online/epetitions/epetitions-faqs

Withdrawing practitioner(s) cannot change thecorrespondence address to the address associatedwith the Customer Number of another law firm, orany other address except as noted above.

As long as the Request is filed prior to the expirationdate of a time period for reply or the expiration dateof a time period which can be obtained by a petitionand fee for extension of time under 37 CFR 1.136(a),the Office will review the Request and render adecision, even if the decision on the Request isdecided after the stated period for reply, after theapplication is abandoned, or after proceedings haveterminated. In contrast, the Office will not deciderequests to withdraw from representation aspractitioner of record which are filed after theexpiration date of a time period for reply or theexpiration date of a time period which can beobtained by a petition and fee for extension of timeunder 37 CFR 1.136(a). These Requests will beplaced in the application but will not be treated ontheir merits. In a similar situation, a revocation ofpower of attorney filed after the expiration date ofa time period for reply or the expiration date of atime period which can be obtained by a petition andfee for an extension of time under 37 CFR 1.136will simply be placed in the application file. The

only exception will be a revocation and power ofattorney accompanied with a petition to revive.

For withdrawal during reexamination proceedings,see MPEP § 2223. Requests for withdrawal filedafter a patent has issued will be placed in the file butwill generally not be treated on their merits.

The Office will not approve requests frompractitioners to withdraw from applications wherethe requesting practitioner is acting, or has acted, ina representative capacity pursuant to 37 CFR 1.34.In these situations, the practitioner is responsible forthe correspondence the practitioner files in theapplication while acting in a representative capacity.As such, there is no need for the practitioner toobtain the Office's permission to withdraw fromrepresentation. However, practitioners acting in arepresentative capacity, like practitioners who havea power of attorney in the application, remainresponsible for noncompliance with 37 CFR 1.56,as well as 37 CFR 11.18, with respect to documentsthey file.

Form PTO/AIA/83 may be used to requestwithdrawal of attorney or agent of record.

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Rev. 07.2015, October 2015400-13


400-14Rev. 07.2015, October 2015


Rev. 07.2015, October 2015400-15


402.07 Assignee Revocation of Power ofAttorney of Applicant and Appointment ofNew Power of Attorney [R-07.2015]

I. APPLICATION FILED ON OR AFTERSEPTEMBER 16, 2012

In applications filed on or after September 16, 2012,any power of attorney must be signed by theapplicant or patent owner. See 37 CFR 1.32(b). Foran assignee to revoke a previously given power ofattorney and/or grant a power of attorney, theassignee must become the applicant under 37 CFR1.46(c). See MPEP §§ 402.02(a) and 402.05(a). SeeMPEP § 325 for details pertaining to establishingthe right of an assignee to take action in anapplication filed on or after September 16, 2012.

II. APPLICATION FILED BEFORE SEPTEMBER16, 2012

In applications filed before September 16, 2012, theassignee of record of the entire interest can revokethe power of attorney of the applicant unless an“irrevocable” right to prosecute the application hadbeen given as in some government ownedapplications.

37 CFR 3.71 (pre-AIA) Prosecution by assignee.

(a) Patents — conducting of prosecution. One or moreassignees as defined in paragraph (b) of this section may, afterbecoming of record pursuant to paragraph (c) of this section,conduct prosecution of a national patent application or areexamination proceeding to the exclusion of either the inventiveentity, or the assignee(s) previously entitled to conductprosecution.

(b) Patents — assignee(s) who can prosecute. Theassignee(s) who may conduct either the prosecution of a nationalapplication for patent or a reexamination proceeding are:

(1) A single assignee. An assignee of the entire right,title and interest in the application or patent being reexaminedwho is of record, or

(2) Partial assignee(s) together or with inventor(s).All partial assignees, or all partial assignees and inventors whohave not assigned their right, title and interest in the applicationor patent being reexamined, who together own the entire right,title and interest in the application or patent being reexamined.

A partial assignee is any assignee of record having less than theentire right, title and interest in the application or patent beingreexamined.

(c) Patents — Becoming of record. An assignee becomesof record either in a national patent application or areexamination proceeding by filing a statement in compliancewith § 3.73(b) that is signed by a party who is authorized to acton behalf of the assignee.

(d) Trademarks. The assignee of a trademark applicationor registration may prosecute a trademark application, submitdocuments to maintain a trademark registration, or file papersagainst a third party in reliance on the assignee’s trademarkapplication or registration, to the exclusion of the originalapplicant or previous assignee. The assignee must establishownership in compliance with § 3.73(b).

See pre-AIA 37 CFR 1.36 in MPEP § 402.05(b).

A power of attorney by the assignee of the entireinterest revokes all powers given by the applicantand prior assignees if the assignee establishes theirright to take action as provided in pre-AIA 37 CFR3.73(b). See MPEP § 324. Ordinarily, the applicantwill still have access to the application (MPEP §106).

In an application that has been accorded status underpre-AIA 37 CFR 1.47(a), or for which status underpre-AIA 37 CFR 1.47(a) has been requested, a powerof attorney given by the inventors who have signedthe declaration (available inventors) may be revokedby an assignee of the entire interest of the availableinventors (i.e., the applicant). See pre-AIA 37 CFR1.32(b)(4). Rights of the assignee to take action maybe established as provided in pre-AIA 37 CFR3.73(b) and MPEP § 324.

Form PTO/SB/80 may be used by an assignee of theentire interest of the applicant to revoke a power ofattorney and appoint a new power of attorney. Theassignee would sign the power of attorney, and anewly appointed practitioner, having authority totake action on behalf of the assignee would sign astatement under pre-AIA 37 CFR 3.73(b) for theapplication in which the general power of attorneyis to be used.

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Rev. 07.2015, October 2015400-17


400-18Rev. 07.2015, October 2015


402.08 Application in Interference orDerivation Proceeding [R-11.2013]

While an application is involved in an interferenceor derivation proceeding, any power of attorney ofor revocation of power of attorney should beforwarded to the Patent Trial and Appeal Board forconsideration.

402.09 International Application [R-11.2013]

37 CFR 11.9 Limited recognition in patent matters.

(a) Any individual not registered under § 11.6 may, upona showing of circumstances which render it necessary orjustifiable, and that the individual is of good moral characterand reputation, be given limited recognition by the OED Directorto prosecute as attorney or agent a specified patent applicationor specified patent applications. Limited recognition under thisparagraph shall not extend further than the application orapplications specified. Limited recognition shall not be grantedwhile individuals who have passed the examination or for whomthe examination has been waived are awaiting registration topractice before the Office in patent matters.

(b) A nonimmigrant alien residing in the United States andfulfilling the provisions of § 11.7(a) and (b) may be grantedlimited recognition if the nonimmigrant alien is authorized bythe United States Government to be employed or trained in theUnited States in the capacity of representing a patent applicantby presenting or prosecuting a patent application. Limitedrecognition shall be granted for a period consistent with theterms of authorized employment or training. Limited recognitionshall not be granted or extended to a non-United States citizenresiding abroad. If granted, limited recognition shallautomatically expire upon the nonimmigrant alien’s departurefrom the United States.

(c) An individual not registered under § 11.6 may, ifappointed by an applicant, prosecute an international patentapplication only before the United States International SearchingAuthority and the United States International PreliminaryExamining Authority, provided that the individual has the rightto practice before the national office with which the internationalapplication is filed as provided in PCT Art. 49, Rule 90 and §1.455 of this subchapter, or before the International Bureauwhen the USPTO is acting as Receiving Office pursuant to PCTRules 83.1 bis and 90.1.

37 CFR 1.455 Representation in international applications.

(a) Applicants of international applications may berepresented by attorneys or agents registered to practice beforethe United States Patent and Trademark Office or by an applicantappointed as a common representative (PCT Art. 49, Rules 4.8and 90 and § 11.9). If applicants have not appointed an attorneyor agent or one of the applicants to represent them, and there ismore than one applicant, the applicant first named in the requestand who is entitled to file in the U.S. Receiving Office shall beconsidered to be the common representative of all the applicants.An attorney or agent having the right to practice before a national

office with which an international application is filed and forwhich the United States is an International Searching Authorityor International Preliminary Examining Authority may beappointed to represent the applicants in the internationalapplication before that authority. An attorney or agent mayappoint an associate attorney or agent who shall also then be ofrecord (PCT Rule 90.1(d)). The appointment of an attorney oragent, or of a common representative, revokes any earlierappointment unless otherwise indicated (PCT Rule 90.6(b) and(c)).

(b) Appointment of an agent, attorney or commonrepresentative (PCT Rule 4.8) must be effected either in theRequest form, signed by applicant, in the Demand form, signedby applicant, or in a separate power of attorney submitted eitherto the United States Receiving Office or to the InternationalBureau.

(c) Powers of attorney and revocations thereof should besubmitted to the United States Receiving Office until theissuance of the international search report.

(d) The addressee for correspondence will be as indicatedin section 108 of the Administrative Instructions.

For representation in international applications, seeMPEP § 1807.

402.10 Appointment/Revocation by LessThan All Applicants or Owners [R-11.2013]

Papers giving or revoking a power of attorney in anapplication generally require signature by all theapplicants or owners of the application. Papersrevoking a power of attorney in an application (orgiving a power of attorney) will not be accepted bythe Office when signed by less than all of theapplicants or owners of the application unless theyare accompanied by a petition under 37 CFR 1.36(a)and fee under 37 CFR 1.17(f) with a showing ofsufficient cause (if revocation), or a petition under37 CFR 1.183 and fee under 37 CFR 1.17(f) (ifappointment) demonstrating the extraordinarysituation where justice requires waiver of therequirement of 37 CFR 1.32(b)(4). The petitionshould be directed to the Office of Petitions. Theappointment and/or revocation are not accepted untilthe petition under 37 CFR 1.36(a) or 1.183 isgranted. Therefore, the attorney or agent newlyappointed by such papers is not permitted to submitany documents (such as an information disclosurestatement (IDS)) into the application file until thepetition under 37 CFR 1.36(a) or 1.183 is granted.The acceptance of such papers by petition under 37CFR 1.36(a) or 1.183 will result in more than oneattorney, agent, applicant, or owner prosecuting the

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application at the same time. Therefore, each of theseparties must sign all subsequent replies submittedto the Office. See In re Goldstein, 16 USPQ2d 1963(Dep. Assist. Comm’r Pat. 1988). In an applicationfiled under pre-AIA 37 CFR 1.47(a), an assignee ofthe entire interest of the available inventors (i.e., theapplicant) who has signed the declaration mayappoint or revoke a power of attorney without apetition under 37 CFR 1.36(a) or 1.183. See MPEP§ 402.07. However, in applications accepted underpre-AIA 37 CFR 1.47, such a petition under 37 CFR1.36(a) or 1.183 submitted by a previouslynonsigning inventor who has now joined in theapplication will not be granted. See MPEP §409.03(i). Upon accepting papers appointing and/orrevoking a power of attorney that are signed by lessthan all of the applicants or owners, the Office willindicate to applicants who must sign subsequentreplies. Dual correspondence will still not bepermitted. Accordingly, when the acceptance of suchpapers results in an attorney or agent and at least oneapplicant or owner prosecuting the application,correspondence will be mailed to the attorney oragent. When the acceptance of such papers resultsin more than one attorney or agent prosecuting theapplication, the correspondence address will continueto be that of the attorney or agent first named in theapplication, unless all parties agree to a differentcorrespondence address. Each attorney or agentsigning subsequent papers must indicate whom heor she represents.

The following are examples of who must sign replieswhen there is more than one person responsible forprosecuting the application:

(A) If coinventor A has given a power ofattorney to a patent practitioner and coinventor Bhas not, replies must be signed by the patentpractitioner of A and by coinventor B.

(B) If coinventors A and B have each appointedtheir own patent practitioner, replies must be signedby both patent practitioners.

403 Correspondence — With Whom Held;Customer Number Practice [R-11.2013]

37 CFR 1.33 states that when an attorney or agenthas been duly appointed to prosecute an application,correspondence will be held with the attorney or

agent unless some other correspondence address hasbeen given. If an attorney or agent of record assignsa correspondence address which is different than anaddress where the attorney or agent normallyreceives mail, the attorney or agent is reminded that37 CFR 11.106 requires the attorney or agent to keepinformation obtained by attorney/agent – clientrelationship in confidence. Double correspondencewith an applicant and his or her attorney, or withtwo representatives, will not be undertaken. SeeMPEP §§ 403.01(a), 403.01(b), 403.02, and714.01(d).

If double correspondence is attempted, formparagraph 4.01 should be included in the next Officeaction.

¶ 4.01 Dual Correspondence

Applicant has appointed an attorney or agent to conduct allbusiness before the Patent and Trademark Office. Doublecorrespondence with an applicant and applicant's attorney oragent will not be undertaken. Accordingly, applicant is requiredto conduct all future correspondence with this Office throughthe attorney or agent of record. See 37 CFR 1.33.

Examiner Note:

1. The first time a reply is received directly from applicant,include this paragraph in the Office action and send a copy ofthe action to the applicant. See MPEP §§ 403 and 714.01.

2. Should applicant file additional replies, do not send copiesof subsequent Office actions to the applicant.

3. Status letters from the applicant may be acknowledged inisolated instances.

See MPEP § 403.01(a) for additional informationpertaining to correspondence in applications filedon or after September 16, 2012. See MPEP §403.01(b) for additional information pertaining tocorrespondence in applications filed beforeSeptember 16, 2012.

I. CUSTOMER NUMBER PRACTICE

A Customer Number (previously a “Payor Number”)may be used to:

(A) designate the correspondence address of apatent application or patent such that thecorrespondence address for the patent applicationor patent would be the address associated with theCustomer Number (37 CFR 1.32(a)(5)(i));

400-20Rev. 07.2015, October 2015


(B) designate the fee address (37 CFR 1.363) ofa patent such that the fee address for the patentwould be the address associated with the CustomerNumber (37 CFR 1.32(a)(5)(ii)); and

(C) submit a list of practitioners such that thosepractitioners associated with the Customer Numberwould have power of attorney (37 CFR1.32(a)(5)(iii)).

Thus, a Customer Number may be used to designatethe address associated with the Customer Numberas the correspondence address of an application (orpatent) or the fee address of a patent, and may alsobe used to submit a power of attorney in theapplication (or patent) to the registered practitionersassociated with the Customer Number.

Applicant may use either the same or differentcustomer number(s) for the correspondence address,the fee address and/or a list of practitioners. Thecustomer number associated with the correspondenceaddress is the Customer Number used to obtainaccess to the Patent Application InformationRetrieval (PAIR) system at http://pair.uspto.gov.See MPEP § 1730 for additional informationregarding PAIR.

The following forms are suggested for use with theCustomer Number practice:

(A) the “Request for Customer Number”(PTO/SB/125) to request a Customer Number;

(B) the “Request for Customer Number DataChange” (PTO/SB/124) to request a change in thedata (address or list of practitioners) associated withan existing Customer Number;

(C) the “Change of Correspondence Address,Application” (PTO/SB/122) to change thecorrespondence address of an individual applicationto the address associated with a Customer Number;and

(D) the “Change of Correspondence Address,Patent” (PTO/SB/123) to change the correspondenceaddress of an individual patent to the addressassociated with a Customer Number.

The Office will also accept requests on electronicstorage media submitted electronically to change thecorrespondence address of a list of applications orpatents or the fee address for a list of patents to the

address associated with a Customer Number.Instructions for submitting such requests areavailable on the “Customer Number UploadS p r e a d s h e e t ” a v a i l a b l e a twww.uspto.gov/learning-and-resources/support-centers/patent-electronic-business-center.

Such electronic requests must comply with therequirements set forth in the Notice entitled“Extension of the Payor Number Practice (through“Customer Numbers”) to Matters Involving PendingPatent Applications,” published in the FederalRegister at 61 FR 54622, 54623-24 (October 21,1996), and in the Official Gazette at 1191 O. G. 187,188-89 (October 29, 1996).

With Customer Number practice, a patentee is alsoable to designate a “fee address” for the receipt ofmaintenance fee correspondence, and a differentaddress for the receipt of all other correspondence.The designation of a “fee address” by reference toa Customer Number will not affect or be affectedby the designation of a correspondence address byreference to another Customer Number, in that theOffice will send maintenance fee correspondence tothe address associated with the Customer Numberdesignated as the “fee address” and will send allother correspondence to the address associated withthe Customer Number designated as thecorrespondence address.

The association of a list of practitioners with aCustomer Number will permit an applicant to appointall of the practitioners associated with the CustomerNumber merely by reference to the CustomerNumber in the Power of Attorney (i.e., withoutindividually listing the practitioners in the Power ofAttorney). The addition and/or deletion of apractitioner from the list of practitioners associatedwith a Customer Number by submitting acorresponding “Request for Customer Number DataChange” (PTO/SB/124) will result in the additionor deletion of such practitioner from the list ofpersons authorized to represent any applicant orassignee of the entire interest of the applicant whoappointed all of the practitioners associated withsuch Customer Number. This will avoid the necessityfor the filing of additional papers in each patentapplication affected by a change in the practitionersof the law firm prosecuting the application. The

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appointment of practitioners associated with aCustomer Number is optional, in that any applicantmay continue to individually name thosepractitioners to represent the applicant in a patentapplication, so long as fewer than ten patentpractitioners are named. See 37 CFR 1.32(c)(3).

The Customer Number practice does not affect theprohibition against, and does not amount to, anappointment of a law firm (rather than specifiedpractitioners). The Office prohibits an appointmentof a specified law firm because the Office cannotascertain from its records whether a particularpractitioner submitting a paper to the Office isassociated with the law firm specified in anappointment. The Office will permit an appointmentof all of the practitioners associated with a specifiedCustomer Number because the Office can ascertainfrom its records for the specified Customer Numberwhether a particular practitioner is associated withthat Customer Number.

As the Office will not recognize more than onecorrespondence address (37 CFR 1.33(a)), anyinconsistencies between the correspondence addressresulting from a Customer Number being providedin an application for the correspondence address andany other correspondence address provided in thatapplication will generally be resolved in favor of theaddress of the Customer Number or the applicationdata sheet (37 CFR 1.76(d)). Due to the prohibitionagainst dual correspondence in an application (37CFR 1.33(a)), an applicant will be permitted toprovide only a single number at a time as theCustomer Number for the correspondence address.

Where an applicant appoints all of the practitionersassociated with a Customer Number as well as a listof individually named practitioners, such actionwould be treated as only an appointment of all ofthe practitioners associated with a Customer Numberdue to the potential for confusion and data entryerrors in entering registration numbers from pluralsources. Furthermore, Office computer systems donot allow for entry of both a power of attorney to alist of practitioners associated with a CustomerNumber and a list of practitioners.

Although Customer Numbers are designed todesignate both a correspondence address and to

associate one or more patent practitioners with anapplication, one Customer Number may be used forthe correspondence address, and another CustomerNumber may be used for the power of attorney.

Applicants are strongly cautioned not to attempt toappoint more than one Customer Number for aparticular purpose (e.g., correspondence address) ina single communication, as such action will not havea cumulative effect.

The Office has created a Mail Stop designation forcorrespondence related to a Customer Number(“Mail Stop EBC”), and all correspondence relatedto a Customer Number (e.g., requests for a CustomerNumber) should be addressed to this mail stopdesignation.

The following persons are authorized to change theinformation associated with an established CustomerNumber: (1) a registered practitioner associated withthe Customer Number; and (2) the person whorequested the Customer Number (signed the Requestfor Customer Number, Form PTO/SB/125).

II. PATENT APPLICATION FILED WITHOUTCORRESPONDENCE ADDRESS

In accordance with the provisions of 35 U.S.C.111(a) and 37 CFR 1.53, a filing date is granted toa nonprovisional application for patent filed in theU.S. Patent and Trademark Office, if it includes atleast a specification prescribed by 35 U.S.C. 112containing a description pursuant to 37 CFR 1.71and at least one claim pursuant to 37 CFR 1.75, andany drawing required by 37 CFR 1.81(a). If anonprovisional application which has been accordeda filing date does not include the appropriate basicfiling fee, search fee, examination fee, or inventor’soath or declaration, the applicant will be so notifiedand given a period of time within which to file themissing parts to complete the application and to paythe surcharge as set forth in 37 CFR 1.16(f) in orderto prevent abandonment of the application. If aprovisional application which has been accorded afiling date does not include the appropriate filingfee, or the cover sheet, the applicant will be sonotified and given a period of time within which tofile the missing parts to complete the application and

400-22Rev. 07.2015, October 2015


to pay the surcharge as set forth in 37 CFR 1.16(g)in order to prevent abandonment of the application.

In order for the Office to so notify the applicant, acorrespondence address must also be provided bythe applicant. The address may be different from thepost office address of the applicant. For example,the address of the applicant’s registered attorney oragent may be used as the correspondence address.If the applicant fails to provide the Office with acorrespondence address, the Office will be unableto provide the applicant with notification to completethe application and to pay the surcharge as set forthin 37 CFR 1.16(f) for nonprovisional applicationsand 37 CFR 1.16(g) for provisional applications. Insuch a case, the applicant will be considered to haveconstructive notice as of the filing date that theapplication must be completed and the applicant willhave 2 months from the filing date in which to doso before abandonment occurs.

The periods of time within which the applicant mustcomplete the application may be extended under theprovisions of 37 CFR 1.136. Applications which arenot completed in a timely manner will be abandoned.

403.01 [Reserved]

403.01(a) Correspondence in ApplicationsFiled On or After September 16, 2012[R-07.2015]

37 CFR 1.33 Correspondence respecting patent applications,reexamination proceedings, and other proceedings.

(a) Correspondence address and daytime telephonenumber. When filing an application, a correspondence addressmust be set forth in either an application data sheet (§ 1.76), orelsewhere, in a clearly identifiable manner, in any papersubmitted with an application filing. If no correspondenceaddress is specified, the Office may treat the mailing address ofthe first named inventor (if provided, see §§ 1.76(b)(1) and1.63(b)(2)) as the correspondence address. The Office will direct,or otherwise make available, all notices, official letters, andother communications relating to the application to the personassociated with the correspondence address. For correspondencesubmitted via the Office's electronic filing system, however, anelectronic acknowledgment receipt will be sent to the submitter.The Office will generally not engage in double correspondencewith an applicant and a patent practitioner, or with more thanone patent practitioner except as deemed necessary by theDirector. If more than one correspondence address is specified,the Office will select one of the specified addresses for use asthe correspondence address and, if given, may select the address

associated with a Customer Number over a typed correspondenceaddress. For the party to whom correspondence is to beaddressed, a daytime telephone number should be supplied ina clearly identifiable manner and may be changed by any partywho may change the correspondence address. Thecorrespondence address may be changed by the parties set forthin paragraph (b)(1) or (b)(3) of this section. Prior to theappointment of any power of attorney under § 1.32(b), thecorrespondence address may also be changed by any patentpractitioner named in the application transmittal papers whoacts in a representative capacity under the provisions of § 1.34.

(b) Amendments and other papers. Amendments and otherpapers, except for written assertions pursuant to § 1.27(c)(2)(iii)or (c)(2)(iv), filed in the application must be signed by:

(1) A patent practitioner of record;

(2) A patent practitioner not of record who acts in arepresentative capacity under the provisions of § 1.34; or

(3) The applicant (§ 1.42). Unless otherwise specified,all papers submitted on behalf of a juristic entity must be signedby a patent practitioner.

(c) All notices, official letters, and other communicationsfor the patent owner or owners in a reexamination orsupplemental examination proceeding will be directed to thecorrespondence address in the patent file. Amendments filed ina reexamination proceeding, and other papers filed in areexamination or supplemental examination proceeding, onbehalf 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 anattorney or agent of record in the patent file, or by a registeredattorney or agent not of record who acts in a representativecapacity under the provisions of § 1.34. Double correspondencewith the patent owner or owners and the patent owner’s attorneyor agent, or with more than one attorney or agent, will not beundertaken.

(d) A “correspondence address” or change thereto may befiled with the Patent and Trademark Office during theenforceable life of the patent. The “correspondence address”will be used in any correspondence relating to maintenance feesunless a separate “fee address” has been specified. See § 1.363for “fee address” used solely for maintenance fee purposes.

(e) A change of address filed in a patent application orpatent does not change the address for a patent practitioner inthe roster of patent attorneys and agents. See § 11.11 of thistitle.

(f) Where application papers from a prior application areused in a continuing application and the correspondence addresswas changed during the prosecution of the prior application, anapplication data sheet or separate paper identifying thecorrespondence address to be used for the continuing applicationmust be submitted. Otherwise, the Office may not recognize thechange of correspondence address effected during theprosecution of the prior application.

(g) A patent practitioner acting in a representative capacitywhose correspondence address is the correspondence addressof record in an application may change the correspondenceaddress after the patent has issued, provided that the change ofcorrespondence address is accompanied by a statement thatnotice has been given to the patentee or owner.

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37 CFR 1.33(a) specifies that if an applicant providesmore than one correspondence address (in a singlepaper or in different papers), the Office will selectone of the specified addresses for use as thecorrespondence address and, if given, may select thecorrespondence address associated with a CustomerNumber over a typed correspondence address.However, the hierarchy provided in 37 CFR 1.76(d)for inconsistencies between an application data sheetand other documents will still apply.

37 CFR 1.33(a) also provides that thecorrespondence address may be changed by theparties set forth in 37 CFR 1.33(b)(1) (a patentpractitioner of record) or 37 CFR 1.33(b)(3) (theapplicant under 37 CFR 1.42)). Prior to theappointment of any power of attorney under 37 CFR1.32(b), the correspondence address may also bechanged by any patent practitioner named in theapplication transmittal papers who acts in arepresentative capacity under the provisions of 37CFR 1.34. While a practitioner acting in arepresentative capacity cannot change thecorrespondence address in an application after apower of attorney has been appointed, 37 CFR1.33(g) provides that a practitioner acting in arepresentative capacity whose correspondenceaddress is the correspondence address of record inan application may change the correspondenceaddress after the patent has issued, provided that thechange of correspondence address is accompaniedby a statement that notice has been given to thepatentee or owner.

Amendments and other papers, except for writtenassertions pursuant to 37 CFR 1.27(c)(2)(iii) or(c)(2)(iv), filed in the application must be signed by:(1) A patent practitioner of record; (2) a patentpractitioner not of record who acts in a representativecapacity under the provisions of 37 CFR 1.34; or (3)the applicant (37 CFR 1.42). Pursuant to 37 CFR1.33(b)(3), unless otherwise specified (e.g., terminaldisclaimers and 37 CFR 3.73(c) statements; seeMPEP § 325), all papers submitted on behalf of ajuristic entity must be signed by a patent practitioner,as 37 CFR 1.31 provides that a juristic entity mayprosecute a patent application only through a patentpractitioner.

Where application papers (e.g., the inventor’s oathor declaration) from a prior application are used ina continuing application and the correspondenceaddress was changed during the prosecution of theprior application, an application data sheet orseparate paper identifying the correspondenceaddress to be used for the continuing applicationmust be submitted. See 37 CFR 1.33(f). Otherwise,the Office may not recognize the change ofcorrespondence address effected during theprosecution of the prior application.

403.01(b) Correspondence in ApplicationsFiled Before September 16, 2012 [R-11.2013]

37 CFR 1.33 (pre-AIA) Correspondence respecting patentapplications, reexamination proceedings, and otherproceedings.

(a) Correspondence address and daytime telephonenumber. When filing an application, a correspondence addressmust be set forth in either an application data sheet (§ 1.76), orelsewhere, in a clearly identifiable manner, in any papersubmitted with an application filing. If no correspondenceaddress is specified, the Office may treat the mailing address ofthe first named inventor (if provided, see §§ 1.76(b)(1) and1.63(c)(2)) as the correspondence address. The Office will direct,or otherwise make available, all notices, official letters, andother communications relating to the application to the personassociated with the correspondence address. For correspondencesubmitted via the Office’s electronic filing system, however, anelectronic acknowledgment receipt will be sent to the submitter.The Office will generally not engage in double correspondencewith an applicant and a patent practitioner, or with more thanone patent practitioner except as deemed necessary by theDirector. If more than one correspondence address is specifiedin a single document, the Office will select one of the specifiedaddresses for use as the correspondence address and, if given,will select the address associated with a Customer Number overa typed correspondence address. For the party to whomcorrespondence is to be addressed, a daytime telephone numbershould be supplied in a clearly identifiable manner and may bechanged by any party who may change the correspondenceaddress. The correspondence address may be changed as follows:

(1) Prior to filing of § 1.63 oath or declaration by anyof the inventors. If a § 1.63 oath or declaration has not beenfiled by any of the inventors, the correspondence address maybe changed by the party who filed the application. If theapplication was filed by a patent practitioner, any other patentpractitioner named in the transmittal papers may also changethe correspondence address. Thus, the inventor(s), any patentpractitioner named in the transmittal papers accompanying theoriginal application, or a party that will be the assignee whofiled the application, may change the correspondence addressin that application under this paragraph.

(2) Where a § 1.63 oath or declaration has been filedby any of the inventors. If a § 1.63 oath or declaration has beenfiled, or is filed concurrent with the filing of an application, by

400-24Rev. 07.2015, October 2015


any of the inventors, the correspondence address may be changedby the parties set forth in paragraph (b) of this section, exceptfor paragraph (b)(2).

(b) Amendments and other papers. Amendments and otherpapers, except for written assertions pursuant to § 1.27(c)(2)(ii)of this part, filed in the application must be signed by:

(1) A patent practitioner of record appointed incompliance with § 1.32(b);

(2) A patent practitioner not of record who acts in arepresentative capacity under the provisions of § 1.34;

(3) An assignee as provided for under § 3.71(b) of thischapter; or

(4) All of the applicants (§ 1.41(b)) for patent, unlessthere is an assignee of the entire interest and such assignee hastaken action in the application in accordance with § 3.71 of thischapter.

(c) All notices, official letters, and other communicationsfor the patent owner or owners in a reexamination proceedingwill be directed to the correspondence address. Amendmentsand other papers filed in a reexamination proceeding on behalfof the patent owner must be signed by the patent owner, or ifthere is more than one owner by all the owners, or by an attorneyor agent of record in the patent file, or by a registered attorneyor agent not of record who acts in a representative capacity underthe provisions of § 1.34. Double correspondence with the patentowner or owners and the patent owner’s attorney or agent, orwith more than one attorney or agent, will not be undertaken.

(d) A “correspondence address” or change thereto may befiled with the Patent and Trademark Office during theenforceable life of the patent. The “correspondence address”will be used in any correspondence relating to maintenance feesunless a separate “fee address” has been specified. See § 1.363for “fee address” used solely for maintenance fee purposes.

(e) A change of address filed in a patent application orpatent does not change the address for a patent practitioner inthe roster of patent attorneys and agents. See § 11.11 of thistitle.

Pre-AIA 37 CFR 1.33(a) provides for an applicantto supply an address to receive correspondence fromthe U.S. Patent and Trademark Office so that theOffice may direct mail to any address of applicant’sselection, such as a corporate patent department, afirm of attorneys or agents, or an individual attorney,agent, or other person.

Pre-AIA 37 CFR 1.33(a) provides that when filinga patent application the applicant must specify acorrespondence address to which the Office willsend notices, letters and other communicationsrelating to the application. The correspondenceaddress must appear either in an application datasheet (37 CFR 1.76) or in a clearly identifiablemanner elsewhere in any papers submitted with an

application filing. Where more than onecorrespondence address is specified, the Office willselect one of the correspondence addresses for useas the correspondence address. This is intended tocover, for example, the situation where anapplication is submitted with multiple addresses,such as one correspondence address being given inthe application transmittal letter, and a different onein an accompanying pre-AIA 37 CFR 1.63 oath ordeclaration, or other similar situations. The Officewill select which of the multiple correspondenceaddresses to use according to the following order:(A) application data sheet (ADS); (B) applicationtransmittal; (C) oath or declaration (unless power ofattorney is more current); and (D) power of attorney.If more than one correspondence address is specifiedin a single document, the Office will select theaddress associated with a Customer Number over atyped correspondence address.

Pre-AIA 37 CFR 1.33(a) requests the submission ofa daytime telephone number of the party to whomcorrespondence is to be addressed. While businessis to be conducted on the written record (37 CFR1.2), a daytime telephone number would be usefulin initiating contact that could later be reduced towriting. The telephone number would be changeableby any party who could change the correspondenceaddress.

Pre-AIA 37 CFR 1.33(a)(1) provides that any partyfiling the application and setting forth acorrespondence address could later change thecorrespondence address provided that a pre-AIA 37CFR 1.63 oath/declaration by any of the inventorshas not been submitted. If one joint inventor filedan application, the person who may change thecorrespondence address would include only the oneinventor who filed the application, even if anotherinventor was identified on the application transmittalletter. If two of three inventors filed the application,the two inventors filing the application would beneeded to change the correspondence address.Additionally, any registered practitioner named inthe application transmittal letter, or a person whohas the authority to act on behalf of the party thatwill be the assignee (if the application was filed bythe party that will be the assignee), could change thecorrespondence address. A registered practitionernamed in a letterhead would not be sufficient, but

Rev. 07.2015, October 2015400-25


rather a clear identification of the individual as beinga representative would be required. A company (towhom the invention has been assigned, or to whomthere is an obligation to assign the invention) whofiles an application, is permitted to designate thecorrespondence address, and to change thecorrespondence address, until such time as a (first)pre-AIA 37 CFR 1.63 oath/declaration is filed. Themere filing of a pre-AIA 37 CFR 1.63oath/declaration that does not include acorrespondence address does not affect anycorrespondence address previously established onthe filing of the application, or changed per pre-AIA37 CFR 1.63(a)(1), even if the application was filedby a company that is only a partial assignee. Theexpression “party that will be the assignee,” ratherthan assignee, is used in that until a declaration issubmitted, inventors have only been identified, andany attempted assignment, or partial assignment,cannot operate for Office purposes until thedeclaration is supplied. Hence, if the applicationtransmittal letter indicates that the application isbeing filed on behalf of XYZ company, with anassignment to be filed later, XYZ company wouldbe allowed to change the correspondence addresswithout resort to pre-AIA 37 CFR 3.73 (b) until anexecuted oath or declaration is filed, and with resortto pre-AIA 37 CFR 3.73(b) after the oath ordeclaration is filed.

Where a correspondence address was set forth orchanged pursuant to pre-AIA 37 CFR 1.33(a)(1)(prior to the filing of a pre-AIA 37 CFR 1.63 oathor declaration), that correspondence address remainsin effect upon filing of a pre-AIA 37 CFR 1.63declaration and can then only be changed pursuantto pre-AIA 37 CFR 1.33(a)(2).

In a joint application with no power of attorney toeither a registered practitioner or joint inventor, theapplicant whose name first appears in the papersreceives the correspondence, unless otherinstructions are given. All applicants must sign thereplies. See MPEP §§ 402 and 714.01(a). If theassignee of the entire interest of the applicant isprosecuting the application (MPEP § 402.07), theassignee may specify a correspondence address.

Pre-AIA 37 CFR 1.33(c) relates to which addresscommunications for the patent owner will be sent inreexamination proceedings. See also MPEP § 2224.

Powers of attorney to firms are not recognized bythe U.S. Patent and Trademark Office. See MPEP§ 402. However, the firm’s address may be used forthe correspondence address. The address shouldappear as follows:

John Doe (inventor)In care of Able, Baker, and Charlie (firm)1234 Jefferson Davis HighwayArlington, Virginia 22202

Patent practitioners are reminded that the attorneyand agent roster must be updated separately fromand in addition to any change of address filed inindividual patent applications.

See MPEP § 601.03 for change of correspondenceaddress.

See MPEP § 201.06(c) regarding change ofcorrespondence address in continuation or divisionalapplications filed under 37 CFR 1.53(b).

403.02 Two Patent Practitioners for SameApplication [R-11.2013]

If the applicant simultaneously appoints two patentpractitioners, applicant should indicate with whomcorrespondence is to be conducted by specifying acorrespondence address. See MPEP §§ 403,403.01(a), and MPEP § 403.01(b).

If, after one patent practitioner is appointed, a secondpatent practitioner is later appointed withoutrevocation of the power of the first patentpractitioner, correspondence will be mailed to thelatest correspondence address of record. See 37 CFR1.33 and 1.76

400-26Rev. 07.2015, October 2015


404 [Reserved]

405 Interviews With Patent Practitioner Notof Record [R-07.2015]

Papers may be filed in patent applications andreexamination proceedings by registered attorneysor agents not of record under 37 CFR 1.34. Filingof such papers is considered to be a representationthat the attorney or agent is authorized to act in arepresentative capacity on behalf of applicant. SeeMPEP § 402.03. Interviews may be conducted witha registered practitioner who has proper authorityfrom the applicant or attorney or agent of record inthe form of a power of attorney or authorization toact in a representative capacity, whether or not thepractitioner has a copy of the application file. See

MPEP § 713.05. Registered practitioners, whenacting in a representative capacity, can alternativelyshow authorization to conduct an interview bycompleting, signing and filing an Applicant InitiatedInterview Request Form (PTOL-413A). See MPEP§§ 713.01 and 713.05. This eliminates the need tofile a power of attorney or authorization to act in arepresentative capacity before having an interview.However, an interview concerning an applicationthat has not been published under 35 U.S.C. 122(b)with an attorney or agent not of record who obtainsauthorization through use of the interview requestform will be conducted based on the informationand files supplied by the attorney or agent in viewof the confidentiality requirements of 35 U.S.C.122(a). Such a paper may be a Form/PTO/SB/84,"Authorization to Act in a Representative Capacity,"which is available from the USPTO website atwww.uspto.gov/sites/default/files/web/forms/sb0084.pdf.

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http://www.uspto.gov/sites/default/files/web/forms/sb0084.pdf

400-28Rev. 07.2015, October 2015


Rev. 07.2015, October 2015400-29


See MPEP § 402.03 for information regarding whena change of correspondence address or a documentgranting access (i.e., a power to inspect) may besigned by an attorney or agent who is not of record.

406 Death of Patent Practitioner [R-11.2013]

The power of attorney of a patent practitioner willbe revoked or terminated by his or her death. Thepatent practitioner may not appoint a “substitute”and any attempt by the patent practitioner to appointa “substitute” patent practitioner whose power isintended to survive his or her own will not berecognized by the Office.

If notification of the death of the sole practitioner ofrecord is received by the Office, correspondencecontinues to be held with the office of the deceasedpractitioner but a copy of the Office action is alsomailed to the person who originally appointed thepractitioner. In such an Office action, the examinershould add form paragraph 4.03.

¶ 4.03 Death of Patent Practitioner

Notice of the death of the attorney or agent of record has cometo the attention of this Office. Since the power of attorney istherefore terminated, this action is being mailed to the office ofthe patent practitioner and to the party who originally appointedthe deceased patent practitioner. A new registered attorney oragent may be appointed.

Note MPEP § 405.

407 Suspended or Excluded PatentPractitioner [R-11.2013]

Any power of attorney given to a practitioner whohas been suspended or disbarred by the Office isineffective, and does not authorize the person topractice before the Office or to represent applicantsor patentees in patent matters.

See MPEP § 105.

Form paragraphs 4.07, and 4.08 should be usedwhere power of attorney is given to an attorney oragent who has been suspended from practice beforethe Office.

¶ 4.07 Attorney/Agent Suspended (Sole Practitioner)

The instant application contains a power of attorney to [1] whohas been [2] from practice before the Patent and TrademarkOffice (Office). The Office does not communicate with attorneysor agents who have been suspended or excluded from practice.Accordingly, the Office action is being mailed to the address ofthe applicant first named in the application. Applicant(s) mayfile a new power of attorney in the application to have aregistered attorney or agent represent them before the Office.

In the absence of an attorney or agent of record, for applicationsfiled before September 16, 2012, all papers filed in theapplication must be signed: (1) by all named applicants unlessone named applicant has been given a power of attorney to signon behalf of the remaining applicants, and the power of attorneyis of record in the application; or (2) if there is an assignee ofrecord of an undivided part interest, by all named applicantsretaining an interest and such assignee; or (3) if there is anassignee of the entire interest, by such assignee; or (4) by aregistered patent attorney or agent not of record who acts in arepresentative capacity under the provisions of 37 CFR 1.34.

For applications filed on or after September 16, 2012, all papersmust be signed by: (1) a patent practitioner of record; (2) a patentpractitioner not of record who acts in a representative capacityunder the provisions of 37 CFR 1.34; or (3) the applicant, exceptthat papers submitted on behalf of a juristic entity applicantmust be signed by a patent practitioner.

Applicants may obtain a list of registered patent attorneys andagents located in their area by consulting the USPTO website,https://oedci.uspto.gov/OEDCI/, or by calling the Office ofEnrollment and Discipline at (571) 272-4097.

Examiner Note:

1. In bracket 1, insert the name of the suspended or excludedpractitioner.

2. In bracket 2, insert either --suspended-- or --excluded--.

3. This form paragraph should be used when the suspendedor excluded practitioner is the only practitioner of record.

4. The Office action is to be mailed only to the applicant firstnamed in the application at that applicant’s current address ofrecord.

¶ 4.08 Attorney/Agent Suspended (Plural Practitioners)

The present application was filed containing a power of attorneyto [1] and [2]. A correspondence address was supplied for [3].No address was supplied for [4].

[5] was [6] from practice before the Patent and Trademark Office(Office). The Office does not communicate with attorneys oragents who have been suspended or excluded from practice.

As a correspondence address, other than to [7], is not of record,this Office action is being mailed to [8] at his/her last knownaddress as listed on the register of patent attorneys and agents.

400-30Rev. 07.2015, October 2015


https://oedci.uspto.gov/OEDCI/

To ensure that a copy of this Office action is received in a timelymanner to allow for a timely reply, a copy of the Office actionis being mailed directly to the address of the applicant firstnamed in the application. Any reply by applicant(s) should beby way of the remaining practitioner(s) of record and shouldinclude a new correspondence address.

Examiner Note:

1. In brackets 1, 3, 5 and 7 insert the name of the suspendedor excluded practitioner.

2. In brackets 2, 4 and 8, insert the name of the first namedunsuspended (unexcluded) registered practitioner of record.

3. In bracket 6, insert either --suspended-- or --excluded--.

4. This form paragraph should be used when there is at leastone registered practitioner still of record who has not beensuspended or excluded from practice. Use form paragraph 4.07if there are no remaining registered attorneys or agents of record.

5. The Office action is to be mailed both to the first namedregistered attorney or agent of record (who is not suspended orexcluded) at the address currently listed in the Attorney’s Roster,and to the applicant first named in the application at thatapplicant’s current address of record.

408 Interviews With Patent Practitioner ofRecord [R-07.2015]

The Office encourages the use of interviews toexpedite prosecution. When the examiner believesthe progress of the application would be advancedby an interview, he or she may contact the patentpractitioner of record in the application (inaccordance with MPEP § 502.03) and suggest atelephonic, personal, or video conference interview.Registered attorneys or agents not of record in apatent application and acting in a representativecapacity under 37 CFR 1.34 should not be contactedfor restriction requirements or approval of examiner'samendments. In addition, non-registeredrepresentatives of the practitioner of record shouldnot be contacted for such actions, even if apparentlyauthorized by the attorney or agent of record. SeeMPEP § 812.01 for telephone restriction practice.See MPEP § 405 for interviews with a patentpractitioner not of record. See also MPEP §§101-104 for information regarding access toapplication information by persons other than apatent practitioner of record.

When applicant is initiating a request for aninterview, an “Applicant Initiated Interview Request”form (PTOL-413A) should be submitted to theexaminer prior to the interview in order to permit

the examiner to prepare in advance for the interviewand to focus on the issues to be discussed. This formshould identify the participants of the interview, theproposed date of the interview, whether the interviewwill be personal, telephonic, or video conference,and should include a brief description of the issuesto be discussed. See MPEP §§ 713.01 and 713.05.

409 Death, Legal Incapacity, orUnavailability of Inventor [R-11.2013]

For information regarding applications for patentfiled on or after September 16, 2012 on behalf of adeceased or legally incapacitated inventor, see MPEP§ 409.01(a). For information regarding applicationsfor patent filed on or after September 16, 2012 wherethe inventor or at least one joint inventor isunavailable, see MPEP § 409.02, 604, and 605.

For information regarding applications for patentfiled before September 16, 2012 on behalf of adeceased inventor or legally incapacitated inventor,see MPEP § 409.01(b). For information regardingapplications for patent filed before September 16,2012 where at least one inventor is unavailable, seeMPEP §§ 409.03 – 409.03(j).

409.01 [Reserved]

409.01(a) Deceased or Legally IncapacitatedInventor - Application Filed on or AfterSeptember 16, 2012 [R-11.2013]

[Editor Note: See MPEP § 409.01(b) forinformation pertaining to a deceased or legallyincapacitated inventor in an application filed beforeSeptember 16, 2012.]

35 U.S.C. 117 Death or incapacity of inventor.

Legal representatives of deceased inventors and of those underlegal incapacity may make application for patent uponcompliance with the requirements and on the same terms andconditions applicable to the inventor.

37 CFR 1.43 Application for patent by a legal representativeof a deceased or legally incapacitated inventor.

If an inventor is deceased or under legal incapacity, the legalrepresentative of the inventor may make an application for patenton behalf of the inventor. If an inventor dies during the time

Rev. 07.2015, October 2015400-31


intervening between the filing of the application and the grantingof a patent thereon, the letters patent may be issued to the legalrepresentative upon proper intervention. See § 1.64 concerningthe execution of a substitute statement by a legal representativein lieu of an oath or declaration.

If an inventor is deceased or under legal incapacity,the legal representative of the inventor may makean application for patent on behalf of the inventor.If an inventor dies during the time interveningbetween the filing of the application and the grantingof a patent thereon, the letters patent may be issuedto the legal representative upon proper intervention.See 35 U.S.C. 117. See 37 CFR 1.64 and MPEP §604 concerning the execution of a substitutestatement by a legal representative in lieu of an oathor declaration.

409.01(b) Deceased or Legally IncapacitatedInventor- Application Filed Before September16, 2012 [R-11.2013]

[Editor Note: See MPEP § 409.01(a) forinformation pertaining to a deceased or legallyincapacitated inventor in an application filed on orafter September 16, 2012.]

35 U.S.C. 117 Death or incapacity of inventor.

Legal representatives of deceased inventors and of those underlegal incapacity may make application for patent uponcompliance with the requirements and on the same terms andconditions applicable to the inventor.

37 CFR 1.42 (pre-AIA) When the inventor is dead.

In case of the death of the inventor, the legal representative(executor, administrator, etc.) of the deceased inventor maymake the necessary oath or declaration, and apply for and obtainthe patent. Where the inventor dies during the time interveningbetween the filing of the application and the granting of a patentthereon, the letters patent may be issued to the legalrepresentative upon proper intervention.

37 CFR 1.43 (pre-AIA) When the inventor is insane or legallyincapacitated.

In case an inventor is insane or otherwise legally incapacitated,the legal representative (guardian, conservator, etc.) of suchinventor may make the necessary oath or declaration, and applyfor and obtain the patent.

I. TERMINATION OF POWER OF ATTORNEY –DECEASED INVENTOR

Unless a power of attorney is coupled with aninterest (i.e., a patent practitioner is assignee orpart-assignee), the death of the inventor (or one ofthe joint inventors) terminates the power of attorneygiven by the deceased inventor in an applicationfiled before September 16, 2012. A new power fromthe heirs, administrators, executors, or assignees isnecessary if the deceased inventor is the soleinventor or all powers of attorney in the applicationhave been terminated. See also pre-AIA 37 CFR1.422.

II. PROSECUTION BY LEGALREPRESENTATIVE, ADMINISTRATOR OREXECUTOR

When an inventor becomes legally incapacitatedprior to the filing of an application and prior toexecuting the oath or declaration required bypre-AIA 37 CFR 1.63 and no legal representativehas been appointed, one must be appointed by a courtof competent jurisdiction for the purpose ofexecution of the oath or declaration of theapplication.

One who has reason to believe that he or she will beappointed legal representative of a deceased inventormay apply for a patent as legal representative inaccordance with pre-AIA 37 CFR 1.42.

Application may be made by the heirs of theinventor, as such, if there is no will or the will didnot appoint an executor and the estate was under thesum required by state law for the appointment of anadministrator. The heirs should identify themselvesas the legal representative of the deceased inventorin the oath or declaration submitted pursuant topre-AIA 37 CFR 1.63 and 1.64.

III. PROOF OF AUTHORITY OFADMINISTRATOR OR EXECUTOR

The Office no longer requires proof of authority ofthe legal representative of a deceased orincapacitated inventor. Although the Office does notrequire proof of authority to be filed, any personacting as a legal representative of a deceased or

400-32Rev. 07.2015, October 2015


incapacitated inventor should ensure that he or sheis properly acting in such a capacity.

IV. AFTER ADMINISTRATOR OR EXECUTORHAS BEEN DISCHARGED

When an administrator or executor has performedhis or her functions and has been discharged and itis desired to make an application for an invention ofthe deceased, it is necessary for the administrator orexecutor to take out new letters of administration inorder that he or she may file a new application foran invention of the deceased inventor.

V. EXCEPTION IN SOME FOREIGN COUNTRIES

The terms “Executor” and “Administrator” do nothave exact counterparts in all foreign countries, andtherefore, those terms must be construed to fit thecircumstances of the case. Hence, the person orpersons having authority corresponding to that ofexecutor or administrator are permitted to makeapplication as, for example, the heirs in the FederalRepublic of Germany where no existing executor oradministrator has been or will be appointed.

VI. IF INVENTOR OF ASSIGNED APPLICATIONDIES

When an inventor who has prosecuted an applicationafter assignment, dies, the administrator of thedeceased inventor’s estate may carry on theprosecution upon filing letters of administrationunless and until the assignee intervenes (see MPEP§ 402.07).

VII. INTERVENTION OF EXECUTOR NOTCOMPULSORY

When an inventor dies after filing an application andexecuting the oath or declaration required bypre-AIA 37 CFR 1.63, the executor or administratorshould intervene, but the allowance of the applicationwill not be withheld nor the application withdrawnfrom issue if the executor or administrator does notintervene.

This practice is applicable to an application whichhas been placed in condition for allowance or passed

to issue prior to notification of the death of theinventor. See MPEP § 409.01.

When a joint inventor of a pro se application diesafter filing the application, the living joint inventor(s)must submit proof that the other joint inventor isdead. Upon submission of such proof, only thesignatures of the living joint inventors are requiredon the papers filed with the USPTO if the legalrepresentative of the deceased inventor does notintervene. If the legal representative of the deceasedinventor wishes to intervene, the legal representativemust submit an oath or declaration in compliancewith pre-AIA 37 CFR 1.63 and 1.64 (e.g., statingthat he or she is the legal representative of thedeceased inventor and his or her residence,citizenship and post office address). Once the legalrepresentative of the deceased inventor intervenesin the pro se application, the signatures of the livingjoint inventors and the legal representative arerequired on the papers filed with the USPTO.

409.02 Unavailable Joint Inventor –Application Filed on or after September 16,2012 [R-11.2013]

[Editor Note: See MPEP § 409.03 et seq. forinformation pertaining to the unavailability of aninventor in an application filed on or after September16, 2012.]

37 CFR 1.45 Application for patent by joint inventors.

(a) Joint inventors must apply for a patent jointly, and eachmust make an inventor's oath or declaration as required by §1.63, except as provided for in § 1.64. If a joint inventor refusesto join in an application for patent or cannot be found or reachedafter diligent effort, the other joint inventor or inventors maymake the application for patent on behalf of themselves and theomitted inventor. See § 1.64 concerning the execution of asubstitute statement by the other joint inventor or inventors inlieu of an oath or declaration.

*****

Joint inventors must apply for a patent jointly, andeach joint inventor must make the inventor’s oathor declaration required by 37 CFR 1.63, except asprovided for in 37 CFR 1.64. See 35 U.S.C. 116(a)(“[w]hen an invention is made by two or morepersons jointly, they shall apply for patent jointlyand each make the required oath, except as otherwiseprovided in this title.”). 37 CFR 1.45(a) providesthat if a joint inventor refuses to join in an

Rev. 07.2015, October 2015400-33


application for patent or cannot be found or reachedafter diligent effort, the other joint inventor(s) maymake the application for patent on behalf ofthemselves and the omitted inventor. 37 CFR 1.45(a)also cross-references 37 CFR 1.64 concerning theexecution of a substitute statement by the other jointinventor(s) in lieu of an oath or declaration. SeeMPEP § 604 for additional information pertainingto substitute statements

409.03 Unavailability of Inventor -Application Filed Before September 16, 2012[R-11.2013]

[Editor Note: MPEP §§409.03 – 409.03(j) are notapplicable to patent applications filed under 35U.S.C. 111(a), 363, or 35 U.S.C. 385 on or afterSeptember 16, 2012. See MPEP § 409.02 forinformation pertaining to the unavailability of aninventor in an application filed on or after September16, 2012.]

35 U.S.C. 116 (pre-AIA) Inventors.

When an invention is made by two or more persons jointly, theyshall apply for patent jointly and each make the required oath,except as otherwise provided in this title. Inventors may applyfor a patent jointly even though (1) they did not physically worktogether or at the same time, (2) each did not make the sametype or amount of contribution, or (3) each did not make acontribution to the subject matter of every claim of the patent.

If a joint inventor refuses to join in an application for patent orcannot be found or reached after diligent effort, the applicationmay be made by the other inventor on behalf of himself and theomitted inventor. The Director, on proof of the pertinent factsand after such notice to the omitted inventor as he prescribes,may grant a patent to the inventor making the application, subjectto the same rights which the omitted inventor would have hadif he had been joined. The omitted inventor may subsequentlyjoin in the application.

Whenever through error a person is named in an application forpatent as the inventor, or through an error an inventor is notnamed in an application, and such error arose without anydeceptive intention on his part, the Director may permit theapplication to be amended accordingly, under such terms as heprescribes.

35 U.S.C. 118 (pre-AIA) Filing by other than inventor.

Whenever an inventor refuses to execute an application forpatent, or cannot be found or reached after diligent effort, aperson to whom the inventor has assigned or agreed in writingto assign the invention or who otherwise shows sufficientproprietary interest in the matter justifying such action, may

make application for patent on behalf of and as agent for theinventor on proof of the pertinent facts and a showing that suchaction is necessary to preserve the rights of the parties or toprevent irreparable damage; and the Director may grant a patentto such inventor upon such notice to him as the Director deemssufficient, and on compliance with such regulations as heprescribes.

37 CFR 1.47 (pre-AIA) Filing when an inventor refuses tosign or cannot be reached.

(a) If a joint inventor refuses to join in an application forpatent or cannot be found or reached after diligent effort, theapplication may be made by the other inventor on behalf ofhimself or herself and the nonsigning inventor. The oath ordeclaration in such an application must be accompanied by apetition including proof of the pertinent facts, the fee set forthin § 1.17(g), and the last known address of the nonsigninginventor. The nonsigning inventor may subsequently join in theapplication by filing an oath or declaration complying with §1.63 .

(b) Whenever all of the inventors refuse to execute anapplication for patent, or cannot be found or reached afterdiligent effort, a person to whom an inventor has assigned oragreed in writing to assign the invention, or who otherwiseshows sufficient proprietary interest in the matter justifying suchaction, may make application for patent on behalf of and asagent for all the inventors. The oath or declaration in such anapplication must be accompanied by a petition including proofof the pertinent facts, a showing that such action is necessaryto preserve the rights of the parties or to prevent irreparabledamage, the fee set forth in § 1.17(g), and the last known addressof all of the inventors. An inventor may subsequently join inthe application by filing an oath or declaration complying with§ 1.63.

(c) The Office will send notice of the filing of theapplication to all inventors who have not joined in theapplication at the address(es) provided in the petition under thissection, and publish notice of the filing of the application in the Official Gazette. The Office may dispense with this noticeprovision in a continuation or divisional application, if noticeregarding the filing of the prior application was given to thenonsigning inventor(s).

Application papers submitted pursuant to pre-AIA37 CFR 1.47 are forwarded by the Office of PatentApplication Processing (OPAP) to the Office ofPetitions for a determination of whether the papersare proper, complete, and acceptable under pre-AIA37 CFR 1.47 and for a decision on the petition underpre-AIA 37 CFR 1.47 before the application is sentto the Technology Center. Since an applicationwithout an oath or declaration executed by all of theinventors may be an incomplete application, anexaminer should not mail an Office action in anapplication without a fully executed oath ordeclaration under pre-AIA 37 CFR 1.63 unless the

400-34Rev. 07.2015, October 2015


application has been accorded status under pre-AIA37 CFR 1.47 in a written decision on the petition.

A bona fide attempt must be made to comply withthe provisions of pre-AIA 37 CFR 1.47 at the timethe oath or declaration is first submitted. If the oathor declaration, and evidence submitted with the oathor declaration, are not acceptable, the pre-AIA 37CFR 1.47 applicant will be notified of the reasonswhy the papers are not acceptable. The pre-AIA 37CFR 1.47 applicant may request reconsideration andfile supplemental evidence in a case where a bonafide attempt was made to comply with pre-AIA 37CFR 1.47 from the outset.

A decision granting a petition under pre-AIA 37CFR 1.47 does not alter the ownership interest ortitle of the application. If the nonsigning inventorhas not signed an assignment document which hasbeen recorded in the USPTO, then the pre-AIA 37CFR 1.47 applicant (the company that files thepetition under pre-AIA 37 CFR 1.47(b) andestablishes proprietary interest in the application) isNOT the assignee of the entire interest of theapplication.

409.03(a) At Least One Joint InventorAvailable [R-11.2013]

[Editor Note: This MPEP section is not applicableto applications filed on or after September 16, 2012.]

Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C.116, second paragraph, requires all available jointinventors to file an application “on behalf of”themselves and on behalf of a joint inventor who“cannot be found or reached after diligent effort” orwho refuses to “join in an application.”

In addition to other requirements of law (pre-AIA35 U.S.C. 111(a) and 115), an application depositedin the U.S. Patent and Trademark Office pursuantto pre-AIA 37 CFR 1.47(a) must meet the followingrequirements:

(A) All the available joint inventors must (1)make oath or declaration on their own behalf asrequired by pre-AIA 37 CFR 1.63 or 1.175 (seeMPEP §§ 602, 605.01, 602.09, and 1414) and (2)make oath or declaration on behalf of the nonsigning

joint inventor as required by pre-AIA 37 CFR 1.64.An oath or declaration signed by all the availablejoint inventors with the signature block of thenonsigning inventor(s) left blank may be treated ashaving been signed by all the available jointinventors on behalf of the nonsigning inventor(s),unless otherwise indicated.

(B) The application must be accompanied byproof that the nonsigning inventor (1) cannot befound or reached after diligent effort or (2) refusesto execute the application papers. See MPEP §409.03(d).

(C) The last known address of the nonsigningjoint inventor must be stated. See MPEP § 409.03(e).

409.03(b) No Inventor Available [R-08.2012]


Filing under pre-AIA 37 CFR 1.47(b) and pre-AIA35 U.S.C. 118 is permitted only when no inventoris available to make application. These provisionsallow a “person” with a demonstrated proprietaryinterest to make application “on behalf of and asagent for” an inventor who “cannot be found orreached after diligent effort” or who refuses to signthe application oath or declaration. The word“person” has been construed by the U.S. Patent andTrademark Office to include juristic entities, suchas a corporation. Where pre-AIA 37 CFR 1.47(a) isavailable, application cannot be made under pre-AIA37 CFR 1.47(b).

In addition to other requirements of law (pre-AIA35 U.S.C. 111(a) and 115), an application depositedpursuant to pre-AIA 37 CFR 1.47(b) must meet thefollowing requirements:

(A) The pre-AIA 37 CFR 1.47(b) applicant mustmake the oath required by pre-AIA 37 CFR 1.63 and1.64 or 1.175. Where a corporation is the pre-AIA37 CFR 1.47(b) applicant, an officer (President,Vice-President, Secretary, Treasurer, or ChiefExecutive Officer) thereof should normally sign thenecessary oath or declaration. A corporation mayauthorize any person, including an attorney or agentregistered to practice before the U.S. Patent andTrademark Office, to sign the application oath ordeclaration on its behalf. Where an oath or

Rev. 07.2015, October 2015400-35


declaration is signed by a registered attorney or agenton behalf of a corporation, either proof of theattorney's or agent's authority in the form of astatement signed by an appropriate corporate officermust be submitted, or the attorney or agent maysimply state that he or she is authorized to sign onbehalf of the corporation. Where the oath ordeclaration is being signed on behalf of an assignee,see MPEP § 324. An inventor may not authorizeanother individual to act as his or her agent to signthe application oath or declaration on his or herbehalf. Staeger v. Commissioner, 189 USPQ 272(D.D.C. 1976), In re Striker, 182 USPQ 507(Comm'r Pat. 1973). Where an application isexecuted by one other than the inventor, thedeclaration required by pre-AIA 37 CFR 1.63 muststate the full name, residence, post office address,and citizenship of the nonsigning inventor. Also, thetitle or position of the person signing must be statedif signing on behalf of a corporation under pre-AIA37 CFR 1.47(b).

(B) The pre-AIA 37 CFR 1.47(b) applicant muststate his or her relationship to the inventor asrequired by pre-AIA 37 CFR 1.64.

(C) The application must be accompanied byproof that the inventor (1) cannot be found orreached after a diligent effort or (2) refuses toexecute the application papers. See MPEP §409.03(d).

(D) The last known address of the inventor mustbe stated. See MPEP § 409.03(e).

(E) The pre-AIA 37 CFR 1.47(b) applicant mustmake out a prima facie case (1) that the inventionhas been assigned to him or her or (2) that theinventor has agreed in writing to assign the inventionto him or her or (3) otherwise demonstrate aproprietary interest in the subject matter of theapplication. See MPEP § 409.03(f).

(F) The pre-AIA 37 CFR 1.47(b) applicant mustprove that the filing of the application is necessary(1) to preserve the rights of the parties or (2) toprevent irreparable damage. See MPEP § 409.03(g).

409.03(c) Unavailable Legal Representativeof Deceased Inventor [R-11.2013]


Pre-AIA 37 CFR 1.47 should not be considered analternative to pre-AIA 37 CFR 1.42 or pre-AIA 35U.S.C. 117 since the language “cannot be found orreached after diligent effort” has no reasonableapplication to a deceased inventor. In re ApplicationPapers Filed September 10, 1954, 108 USPQ 340(Comm’r Pat. 1955). See pre-AIA 37 CFR 1.42 andMPEP § 409.01. However, pre-AIA 37 CFR 1.47does apply where a known legal representative of adeceased inventor cannot be found or reached afterdiligent effort, or refuses to make application. Insuch cases, the last known address of the legalrepresentative must be given (see MPEP §409.03(e)).

409.03(d) Proof of Unavailability or Refusal[R-07.2015]


I. INVENTOR CANNOT BE REACHED

Where inability to find or reach a nonsigninginventor “after diligent effort” is the reason for filingunder pre-AIA 37 CFR 1.47, a statement of factsshould be submitted that fully describes the exactfacts which are relied on to establish that a diligenteffort was made.

The fact that a nonsigning inventor is on vacationor out of town and is therefore temporarilyunavailable to sign the declaration is not anacceptable reason for filing under pre-AIA 37 CFR1.47.

Furthermore, the fact that an inventor is hospitalizedand/or is not conscious is not an acceptable reasonfor filing under pre-AIA 37 CFR 1.47. Pre-AIA 37CFR 1.43 may be available under thesecircumstances. See MPEP § 409.01(b). Such apetition under pre-AIA 37 CFR 1.47 will bedismissed as inappropriate.

The statement of facts must be signed, where at allpossible, by a person having firsthand knowledgeof the facts recited therein. Statements based onhearsay will not normally be accepted. Copies ofdocumentary evidence such as Internet searches,certified mail return receipts, cover letters of

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MANUAL OF PATENT EXAMINING PROCEDURE§ 409.03(c)

instructions, telegrams, that support a finding thatthe nonsigning inventor could not be found orreached should be made part of the statement. Thesteps taken to locate the whereabouts of thenonsigning inventor should be included in thestatement of facts. It is important that the statementcontain facts as opposed to conclusions.

II. REFUSAL TO JOIN

A refusal by an inventor to sign an oath ordeclaration when the inventor has not been presentedwith the application papers does not itself suggestthat the inventor is refusing to join the applicationunless it is clear that the inventor understands exactlywhat he or she is being asked to sign and refuses toaccept the application papers. A copy of theapplication papers should be sent to the last knownaddress of the nonsigning inventor, or, if thenonsigning inventor is represented by counsel, tothe address of the nonsigning inventor’s attorney.The fact that an application may contain proprietaryinformation does not relieve the pre-AIA 37 CFR1.47 applicant of the responsibility to present theapplication papers to the inventor if the inventor iswilling to receive the papers in order to sign the oathor declaration. It is noted that the inventor mayobtain a complete copy of the application, unless theinventor has assigned his or her interest in theapplication, and the assignee has requested that theinventor not be permitted access. See MPEP § 106.It is reasonable to require that the inventor bepresented with the application papers before apetition under pre-AIA 37 CFR 1.47 is granted sincesuch a procedure ensures that the inventor is apprisedof the application to which the oath or declarationis directed. In re Gray, 115 USPQ 80 (Comm’r Pat.1956).

Where a refusal of the inventor to sign theapplication papers is alleged, the circumstances ofthe presentation of the application papers and of therefusal must be specified in a statement of facts bythe person who presented the inventor with theapplication papers and/or to whom the refusal wasmade. Statements by a party not present when anoral refusal is made will not be accepted.

Proof that a bona fide attempt was made to presenta copy of the application papers (specification,

including claims, drawings, and oath or declaration)to the nonsigning inventor for signature, but theinventor refused to accept delivery of the papers orexpressly stated that the application papers shouldnot be sent, may be sufficient. When there is anexpress oral refusal, that fact along with the timeand place of the refusal must be stated in thestatement of facts. When there is an express writtenrefusal, a copy of the document evidencing thatrefusal must be made part of the statement of facts.The document may be redacted to remove materialnot related to the inventor’s reasons for refusal.

When it is concluded by the pre-AIA 37 CFR 1.47applicant that a nonsigning inventor’s conductconstitutes a refusal, all facts upon which thatconclusion is based should be stated in the statementof facts in support of the petition or directly in thepetition. If there is documentary evidence to supportfacts alleged in the petition or in any statement offacts, such evidence should be submitted. Whenevera nonsigning inventor gives a reason for refusing tosign the application oath or declaration, that reasonshould be stated in the petition. See also MPEP §1702.

409.03(e) Statement of Last Known Address[R-08.2012]


An application filed pursuant to pre-AIA 37 CFR1.47 must state the last known address of thenonsigning inventor.

That address should be the last known address atwhich the inventor customarily receives mail. SeeMPEP § 602.08(a). Ordinarily, the last knownaddress will be the last known residence of thenonsigning inventor.

Inasmuch as a nonsigning inventor is notified thatan application pursuant to pre-AIA 37 CFR 1.47 hasbeen filed on his or her behalf, other addresses atwhich the nonsigning inventor may be reachedshould also be given.

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§ 409.03(e)REPRESENTATIVE OF APPLICANT OR OWNER

409.03(f) Proof of Proprietary Interest[R-08.2012]

[Editor Note: This MPEP section is not applicableto applications filed on or after September 16, 2012.See MPEP §§ 325, 409.05, and 605 for informationpertaining to applications for patent filed on or afterSeptember 16, 2012 by an assignee, obligatedassignee, or a person who otherwise shows sufficientproprietary interest in the matter.]

When an application is deposited pursuant topre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR1.47(b) applicant must prove that

(A) the invention has been assigned to theapplicant, or

(B) the inventor has agreed in writing to assignthe invention to the applicant, or

(C) the applicant otherwise has sufficientproprietary interest in the subject matter to justifythe filing of the application.

If the application has been assigned, a copy of theassignment (in the English language) must besubmitted. The assignment must clearly indicate thatthe invention described in the pre-AIA 37 CFR1.47(b) application was assigned to the pre-AIA 37CFR 1.47(b) applicant. A statement under pre-AIA37 CFR 3.73(b) by the assignee must also besubmitted (see MPEP § 324). An assignment of anapplication and any “reissue, division, orcontinuation of said application” does not itselfestablish an assignment of a continuation-in-partapplication. In re Gray, 115 USPQ 80 (Comm’rPat. 1956). An assignment to a pre-AIA 37 CFR1.47(b) applicant for the sole purpose of obtaininga filing date for a pre-AIA 37 CFR 1.47(b)application is not considered an assignment withinthe meaning of pre-AIA 35 U.S.C. 118 and pre-AIA37 CFR 1.47(b).

When an inventor has agreed in writing to assign aninvention described in an application depositedpursuant to pre-AIA 37 CFR 1.47(b), a copy of thatagreement should be submitted. If an agreement toassign is dependent on certain specified conditionsbeing met, it must be established by a statement offacts by someone with first hand knowledge of thecircumstances in which those conditions have been

met. A typical agreement to assign is an employmentagreement where an employee (nonsigning inventor)agrees to assign to his or her employer (pre-AIA 37CFR 1.47(b) applicant) all inventions made duringemployment. When such an agreement is relied on,it must be established by a statement of a personhaving firsthand knowledge of the facts that theinvention was made by the employee whileemployed by the pre-AIA 37 CFR 1.47(b) applicant.

If the invention has not been assigned, or if there isno written agreement to assign, the pre-AIA 37 CFR1.47(b) applicant must demonstrate that he or sheotherwise has a sufficient proprietary interest in thematter.

A proprietary interest obtained other than byassignment or agreement to assign may bedemonstrated by an appropriate legal memorandumto the effect that a court of competent jurisdiction(federal, state, or foreign) would by the weight ofauthority in that jurisdiction award title of theinvention to the pre-AIA 37 CFR 1.47(b) applicant.The facts in support of any conclusion that a courtwould award title to the pre-AIA 37 CFR 1.47(b)applicant should be made of record by way of anaffidavit or declaration of the person having firsthandknowledge of same. The legal memorandum shouldbe prepared and signed by an attorney at law familiarwith the law of the jurisdiction involved. A copy (inthe English language) of a statute (if other than theUnited States statute) or a court decision (if otherthan a reported decision of a federal court or adecision reported in the United States PatentsQuarterly) relied on to demonstrate a proprietaryinterest should be made of record.

409.03(g) Proof of Irreparable Damage[R-11.2013]


Irreparable damage may be established by a pre-AIA37 CFR 1.47(b) applicant by a showing (a statement)that a filing date is necessary to preserve the rightsof the party or to prevent irreparable damage.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 409.03(f)

409.03(h) Processing and Acceptance of aPre-AIA 37 CFR 1.47 Application[R-08.2012]


A filing date is assigned to an application depositedpursuant to pre-AIA 37 CFR 1.47 provided therequirements of 37 CFR 1.53(b) are met. A filingreceipt will be sent to the applicant and theapplication , or an electronic message concerningthe petition under pre-AIA 37 CFR 1.47, will beforwarded to the Office of Petitions, forconsideration of the petition filed under pre-AIA 37CFR 1.47.

When papers deposited pursuant to pre-AIA 37 CFR1.47 are found acceptable, the Office of Petitionsenters a decision to that effect in the file. A noticewill be published in the Official Gazette identifyingthe application number, filing date, the title of theinvention and the name(s) of the nonsigninginventor(s). The U.S. Patent and Trademark Officewill notify the nonsigning inventor(s) or, if theinventor is deceased, the legal representative(s), ofthe filing of an application under pre-AIA 37 CFR1.47 by sending a letter to the last known address ofthe nonsigning inventor(s) or legal representative(s).In a continuation or divisional application filed under37 CFR 1.53(b) of an application accorded statusunder pre-AIA 37 CFR 1.47, if a copy of adeclaration from a prior application and a copy of adecision according status under pre-AIA 37 CFR1.47 are filed as permitted by pre-AIA 37 CFR1.63(d)(3)(i), the notice will not be repeated. Seepre-AIA 37 CFR 1.47(c). In addition, the notice isnot repeated in continued prosecution applicationsfiled under 37 CFR 1.53(d).

409.03(i) Rights of the Nonsigning Inventor[R-08.2012]


The nonsigning inventor (also referred to as an“inventor designee”) may protest his or herdesignation as an inventor. The nonsigning inventor

is entitled to inspect any paper in the application,order copies thereof at the price set forth in 37 CFR1.19, and make his or her position of record in thefile wrapper of the application. Alternatively, thenonsigning inventor may arrange to do any of thepreceding through a registered patent attorney oragent.

While the U.S. Patent and Trademark Office willgrant the nonsigning inventor access to theapplication, inter partes proceedings will not beinstituted in a pre-AIA 37 CFR 1.47 case. In reHough, 108 USPQ 89 (Comm'r Pat. 1955). Anonsigning inventor is not entitled to a hearing(Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389(D.C. Cir. 1972)), and is not entitled to prosecutethe application if status under pre-AIA 37 CFR 1.47has been accorded, or if proprietary interest of thepre-AIA 37 CFR 1.47(b) applicant has been shownto the satisfaction of the U.S. Patent and TrademarkOffice.

A nonsigning inventor may join in a pre-AIA 37CFR 1.47 application. To join in the application, thenonsigning inventor must file an appropriate pre-AIA37 CFR 1.63 oath or declaration. Even if thenonsigning inventor joins in the application, he orshe cannot revoke or give a power of attorneywithout agreement of the 37 CFR 1.47 applicant.See MPEP § 402.10.

The rights of a nonsigning inventor are protected bythe fact that the patent resulting from an applicationfiled under pre-AIA 37 CFR 1.47(b) and pre-AIA35 U.S.C. 118 must issue to the inventor, and in anapplication filed under pre-AIA 37 CFR 1.47(a) and35 U.S.C. 116, the inventor has the same rights thathe or she would have if he or she had joined in theapplication. In re Hough, 108 USPQ 89 (Comm'rPat. 1955).

If a nonsigning inventor feels that he or she is thesole inventor of an invention claimed in a pre-AIA37 CFR 1.47 application naming him or her as a jointinventor, the nonsigning inventor may file his or herown application and request that his or herapplication be placed in interference with thepre-AIA 37 CFR 1.47 application. If the claims inboth the nonsigning inventor's application and the

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§ 409.03(i)REPRESENTATIVE OF APPLICANT OR OWNER

pre-AIA 37 CFR 1.47 application are otherwisefound allowable, an interference may be declared.

409.03(j) Action Following Acceptance of aPre-AIA 37 CFR 1.47 Application[R-11.2013]


After an application deposited pursuant to pre-AIA37 CFR 1.47 is found acceptable by the Office, theexaminer will act on the application in the usualmanner. Papers filed by an inventor who did notoriginally join in the application, and papers relatingto its pre-AIA 37 CFR 1.47 status, will be placed inthe file wrapper.

In the event the previously nonsigning inventordecides to join in the application by filing anexecuted oath or declaration complying withpre-AIA 37 CFR 1.63, the oath or declaration willbe placed in the application file.

When an examiner receives an application in whicha petition under pre-AIA 37 CFR 1.47 has been filed,he or she must check the file to determine that thepetition has been decided by the Office of Petitions.If the petition has not been decided by the Office ofPetitions, the application, or an electronic messageconcerning the petition, must be forwarded to theOffice of Petitions for appropriate action.

An application filed under pre-AIA 37 CFR 1.47can be published as a Statutory InventionRegistration (provided the request for a StatutoryInvention Registration was filed before March 16,2013).

409.04 [Reserved]

409.05 Application For Patent by anAssignee, Obligated Assignee, or a PersonWho Otherwise Shows Sufficient Proprietary

Interest – Application Filed On or AfterSeptember 16, 2012 [R-07.2015]

[Editor Note: This MPEP section is only applicableto applications filed on or after September 16, 2012.]

37 CFR 1.46 Application for patent by an assignee, obligatedassignee, or a person who otherwise shows sufficientproprietary interest in the matter.

(a) A person to whom the inventor has assigned or is underan obligation to assign the invention may make an applicationfor patent. A person who otherwise shows sufficient proprietaryinterest in the matter may make an application for patent onbehalf of and as agent for the inventor on proof of the pertinentfacts and a showing that such action is appropriate to preservethe rights of the parties.

(b) If an application under 35 U.S.C. 111 is made by aperson other than the inventor under paragraph (a) of this section,the application must contain an application data sheet under §1.76 specifying in the applicant information section (§1.76(b)(7)) the assignee, person to whom the inventor is underan obligation to assign the invention, or person who otherwiseshows sufficient proprietary interest in the matter. If anapplication entering the national stage under 35 U.S.C. 371, ora nonprovisional international design application, is applied forby a person other than the inventor under paragraph (a) of thissection, the assignee, person to whom the inventor is under anobligation to assign the invention, or person who otherwiseshows sufficient proprietary interest in the matter must havebeen identified as the applicant for the United States in theinternational stage of the international application or as theapplicant in the publication of the international registration underHague Agreement Article 10(3).

(1) If the applicant is the assignee or a person to whomthe inventor is under an obligation to assign the invention,documentary evidence of ownership (e.g., assignment for anassignee, employment agreement for a person to whom theinventor is under an obligation to assign the invention) shouldbe recorded as provided for in part 3 of this chapter no later thanthe date the issue fee is paid in the application.

(2) If the applicant is a person who otherwise showssufficient proprietary interest in the matter, such applicant mustsubmit a petition including:

(i) The fee set forth in § 1.17(g)

(ii) A showing that such person has sufficientproprietary interest in the matter; and

(iii) A statement that making the application forpatent by a person who otherwise shows sufficient proprietaryinterest in the matter on behalf of and as agent for the inventoris appropriate to preserve the rights of the parties.

37 CFR 1.64 Substitute statement in lieu of an oath ordeclaration.

(a) An applicant under § 1.43, 1.45 or 1.46 may execute asubstitute statement in lieu of an oath or declaration under §1.63 if the inventor is deceased, is under a legal incapacity, has

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MANUAL OF PATENT EXAMINING PROCEDURE§ 409.03(j)

refused to execute the oath or declaration under § 1.63, or cannotbe found or reached after diligent effort.

(b) A substitute statement under this section must:

(1) Comply with the requirements of § 1.63(a),identifying the inventor or joint inventor with respect to whoma substitute statement in lieu of an oath or declaration isexecuted, and stating upon information and belief the facts whichsuch inventor is required to state;

(2) Identify the person executing the substitutestatement and the relationship of such person to the inventor orjoint inventor with respect to whom the substitute statement isexecuted, and unless such information is supplied in anapplication data sheet in accordance with § 1.76, the residenceand mailing address of the person signing the substitutestatement;

(3) Identify the circumstances permitting the person toexecute the substitute statement in lieu of an oath or declarationunder § 1.63, namely whether the inventor is deceased, is undera legal incapacity, cannot be found or reached after a diligenteffort was made, or has refused to execute the oath or declarationunder § 1.63; and

(4) Unless the following information is supplied in anapplication data sheet in accordance with § 1.76, also identify:

(i) Each inventor by his or her legal name; and

(ii) The last known mailing address where theinventor customarily receives mail, and last known residence,if an inventor lives at a location which is different from wherethe inventor customarily receives mail, for each inventor whois not deceased or under a legal incapacity.

I. ASSIGNEE OR OBLIGATED ASSIGNEE

An assignee or obligated assignee may file a patentapplication as the applicant. An assignee or obligatedassignee doing so should record documentaryevidence of ownership (e.g., assignment for anassignee, employment agreement for an obligatedassignee) as provided for in 37 CFR part 3 no laterthan the date the issue fee is paid in the application.See 37 CFR 1.46(b)(1).

See 37 CFR 1.64 concerning the execution of asubstitute statement by an assignee or obligatedassignee in lieu of an inventor’s oath or declaration(available when an inventor is deceased, is under alegal incapacity, cannot be found or reached after adiligent effort was made, or has refused to executethe oath or declaration under 37 CFR 1.63). See alsoMPEP § 604.

II. SUFFICIENT PROPRIETARY INTEREST

37 CFR 1.46(a) provides that a person who otherwiseshows sufficient proprietary interest in the mattermay make an application for patent on behalf of andas agent for the inventor on proof of the pertinentfacts and a showing that such action is appropriateto preserve the rights of the parties. The ability fora person who otherwise shows sufficient proprietaryinterest in the matter to make an application forpatent is not limited to situations in which all of theinventors refuse to execute the application, or cannotbe found or reached after diligent effort.

Section 1.46(b)(2) provides that if the applicant is aperson who otherwise shows sufficient proprietaryinterest in the matter, such applicant must submit apetition including: (1) The fee set forth in § 1.17(g);(2) a showing that such person has sufficientproprietary interest in the matter; and (3) a statementthat making the application for patent by a personwho otherwise shows sufficient proprietary intereston behalf of and as agent for the inventor isappropriate to preserve the rights of the parties. See37 CFR 1.64 concerning the execution of a substitutestatement by a person who otherwise showssufficient proprietary interest in the matter in lieu ofan inventor’s oath or declaration. See also MPEP §604.

A proprietary interest obtained other than byassignment or agreement to assign may bedemonstrated by an appropriate legal memorandumto the effect that a court of competent jurisdiction(federal, state, or foreign) would by the weight ofauthority in that jurisdiction award title of theinvention to the 37 CFR 1.46 applicant. The facts insupport of any conclusion that a court would awardtitle to the 37 CFR 1.46 applicant should be madeof record by way of an affidavit or declaration of theperson having firsthand knowledge of same. Thelegal memorandum should be prepared and signedby an attorney at law familiar with the law of thejurisdiction involved. A copy (in the Englishlanguage) of a statute (if other than the United Statesstatute) or a court decision (if other than a reporteddecision of a federal court or a decision reported inthe United States Patents Quarterly) relied on todemonstrate a proprietary interest should be madeof record.

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410 Representations to the U.S. Patent andTrademark Office [R-07.2015]

37 CFR 1.4 Nature of correspondence and signaturerequirements.

*****

(d)

*****

(4) Certifications—

(i) Certification as to the paper presented. Thepresentation to the Office (whether by signing, filing, submitting,or later advocating) of any paper by a party, whether apractitioner or non-practitioner, constitutes a certification under§ 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of thissubchapter by a party, whether a practitioner or non-practitioner,may result in the imposition of sanctions under § 11.18(c) ofthis subchapter. Any practitioner violating § 11.18(b) of thissubchapter may also be subject to disciplinary action. See §11.18(d) of this subchapter.

(ii) Certification as to the signature. The personinserting a signature under paragraph (d)(2) or (d)(3) of thissection in a document submitted to the Office certifies that theinserted signature appearing in the document is his or her ownsignature. A person submitting a document signed by anotherunder paragraph (d)(2) or (d)(3) of this section is obligated tohave a reasonable basis to believe that the person whosesignature is present on the document was actually inserted bythat person, and should retain evidence of authenticity of thesignature. Violations of the certification as to the signature ofanother or a person’s own signature as set forth in this paragraphmay result in the imposition of sanctions under § 11.18(c) and(d) of this chapter.

(5) Forms. The Office provides forms for the publicto use in certain situations to assist in the filing ofcorrespondence for a certain purpose and to meet certainrequirements for patent applications and proceedings. Use ofthe forms for purposes for which they were not designed isprohibited. No changes to certification statements on the Officeforms (e.g., oath or declaration forms, terminal disclaimer forms,petition forms, and nonpublication request forms) may be made.The existing text of a form, other than a certification statement,may be modified, deleted, or added to, if all text identifying theform as an Office form is removed. The presentation to theOffice (whether by signing, filing, submitting, or lateradvocating) of any Office form with text identifying the formas an Office form by a party, whether a practitioner ornon-practitioner, constitutes a certification under § 37 CFR11.18(b) of this chapter that the existing text and any certificationstatements on the form have not been altered other thanpermitted by EFS-Web customization.

(e) The following correspondence must be submitted withan original handwritten signature personally signed in permanentdark ink or its equivalent:

(1) Correspondence requiring a person's signature andrelating to registration to practice before the Patent andTrademark Office in patent cases, enrollment and disciplinaryinvestigations, or disciplinary proceedings; and

(2) Payments by credit cards where the payment is notbeing made via the Office's electronic filing systems.

*****

37 CFR 11.18 Signature and certificate for correspondencefiled in the Office.

(a) For all documents filed in the Office in patent,trademark, and other non-patent matters, and all documents filedwith a hearing officer in a disciplinary proceeding, except forcorrespondence that is required to be signed by the applicant orparty, each piece of correspondence filed by a practitioner inthe Office must bear a signature, personally signed or insertedby such practitioner, in compliance with § 1.4(d) or § 2.193(a)of this chapter.

(b) By presenting to the Office or hearing officer in adisciplinary proceeding (whether by signing, filing, submitting,or later advocating) any paper, the party presenting such paper,whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s ownknowledge are true, all statements made therein on informationand belief are believed to be true, and all statements made thereinare made with the knowledge that whoever, in any matter withinthe jurisdiction of the Office, knowingly and willfully falsifies,conceals, or covers up by any trick, scheme, or device a materialfact, or knowingly and willfully makes any false, fictitious, orfraudulent statements or representations, or knowingly andwillfully makes or uses any false writing or document knowingthe same to contain any false, fictitious, or fraudulent statementor entry, shall be subject to the penalties set forth under 18U.S.C. 1001 and any other applicable criminal statute, andviolations of the provisions of this section may jeopardize theprobative value of the paper; and

(2) To the best of the party’s knowledge, informationand belief, formed after an inquiry reasonable under thecircumstances,

(i) The paper is not being presented for anyimproper purpose, such as to harass someone or to causeunnecessary delay or needless increase in the cost of anyproceeding before the Office;

(ii) The other legal contentions therein arewarranted by existing law or by a nonfrivolous argument forthe extension, modification, or reversal of existing law or theestablishment of new law;

(iii) The allegations and other factual contentionshave evidentiary support or, if specifically so identified, arelikely to have evidentiary support after a reasonable opportunityfor further investigation or discovery; and

(iv) The denials of factual contentions arewarranted on the evidence, or if specifically so identified, arereasonably based on a lack of information or belief.

(c) Violations of any of paragraphs (b)(2)(i) through (iv)of this section are, after notice and reasonable opportunity torespond, subject to such sanctions or actions as deemedappropriate by the USPTO Director, which may include, butare not limited to, any combination of—


400-42Rev. 07.2015, October 2015


(2) Referring a practitioner’s conduct to the Directorof Enrollment and Discipline for appropriate action;

(3) Precluding a party or practitioner from submittinga paper, or presenting or contesting an issue;

(4) Affecting the weight given to the offending paper;or

(5) Terminating the proceedings in the Office.

(d) Any practitioner violating the provisions of this sectionmay also be subject to disciplinary action.

37 CFR 1.4(d)(4) and (5) provide that thepresentation to the Office (whether by signing, filing,submitting, or later advocating) of any paper orOffice form by a party, whether a practitioner ornonpractitioner, constitutes a certification under 37CFR 11.18(b), and that violations of 37 CFR11.18(b)(2) may subject the party to sanctions under37 CFR 11.18(c). Thus, by presenting to the Officea paper or Office form, the party is making thecertifications set forth in 37 CFR 11.18(b), and issubject to sanctions under 37 CFR 11.18(c) forviolations of 37 CFR 11.18(b)(2), regardless ofwhether the party is a practitioner or nonpractitioner.A practitioner violating 37 CFR 11.18(b) may alsobe subject to disciplinary action in lieu of or inaddition to sanctions under 37 CFR 11.18(c) forviolations of 37 CFR 11.18(b). See 37 CFR 11.18(d).

Additional certifications provided in 37 CFR1.4(d)(4) and (5) include that a person inserting asignature into a document under 37 CFR 1.4(d)(2)certifies that the inserted signature appearing in thedocument is his or her own signature. Also, a personfiling a document signed by another under 37 CFR1.4(d)(2) is obligated to have a reasonable basis tobelieve that the signature present on the documentwas actually inserted by that person. The personfiling the document should retain evidence of theauthenticity of the signature. See 37 CFR 1.4(h).

37 CFR 11.18(b) provides that, by presenting anypaper to the USPTO, the party presenting such paperis making two certifications: (1) the first certificationis that the statements made therein are subject to thedeclaration clause of 37 CFR 1.68; (2) the secondcertification is the certification required for papersfiled in a federal court under Rule 11(b) of theFederal Rules of Civil Procedure. 37 CFR 1.4(d)(5)makes clear that presenting a completed Office form

to the USPTO constitutes a specific certificationunder 37 CFR 11.18(b).

The first certification has permitted the USPTO toeliminate the separate verification requirementpreviously contained in several rules for statementsof facts by persons who are not registered to practicebefore the USPTO. As statements submitted to theUSPTO by any person are now, by operation of 37CFR 11.18(b)(1), verified statements, a separateverification requirement is no longer necessary. TheUSPTO, however, has retained the verificationrequirement for a statement to be submitted underoath or declaration (37 CFR 1.68) in a number ofsections (e.g., 37 CFR 1.63, 1.64, 1.130, 1.131,1.132, 1.495(f), and 5.25).

The second certification is based upon Rule 11(b)of the Federal Rules of Civil Procedure (2007). Thisprovision is promulgated pursuant to the Director’sauthority under 35 U.S.C. 2(b)(2) to establishregulations for the conduct of proceedings in theUSPTO, and is intended to discourage the filing offrivolous papers by practitioners or non-practitionersin the USPTO. Rule 11(b) of the Federal Rules ofCivil Procedure provides:

Representations to Court. By presenting tothe court a pleading, written motion, or otherpaper—whether by signing, filing, submitting,or later advocating it—an attorney orunrepresented party certifies that to the best ofthe person's knowledge, information, and belief,formed after an inquiry reasonable under thecircumstances:(1) it is not being presented for any improperpurpose, such as to harass, cause unnecessarydelay, or needlessly increase the cost oflitigation;(2) the claims, defenses, and other legalcontentions are warranted by existing law orby a nonfrivolous argument for extending,modifying, or reversing existing law or forestablishing new law;(3)the factual contentions have evidentiarysupport or, if specifically so identified, willlikely have evidentiary support after areasonable opportunity for further investigationor discovery; and

Rev. 07.2015, October 2015400-43


(4) the denials of factual contentions arewarranted on the evidence or, if specifically soidentified, are reasonably based on belief or alack of information.

Fed. R. Civ. P. 11(b)(2007).

37 CFR 11.18(b)(2) includes the same substantiverequirements as Fed. R. Civ. P. 11(b). The advisorycommittee notes to the 1993 revision of Fed. R. Civ.P. 11(b) provide, in part, that:

[Fed. R. Civ. P. 11(b) and (c)] restate theprovisions requiring attorneys and pro selitigants to conduct a reasonable inquiry intothe law and facts before signing pleadings,written motions, and other documents, andprescribing sanctions for violations of theseobligations. The [1993] revision in part expandsthe responsibilities of litigants to the court,while providing greater constraints andflexibility in dealing with infractions of the rule.The rule continues to require litigants to“stop-and-think” before initially making legalor factual contentions. It also, however,emphasizes the duty of candor by subjectinglitigants to potential sanctions for insisting upona position after it is no longer tenable and bygenerally providing protection against sanctionsif they withdraw or correct contentions after apotential violation is called to their attention.The rule applies only to assertions containedin papers filed with or submitted to the court.It does not cover matters arising for the firsttime during oral presentations to the court,when counsel may make statements that wouldnot have been made if there had been more timefor study and reflection. However, a litigant'sobligations with respect to the contents of thesepapers are not measured solely as of the timethey are filed with or submitted to the court,but include reaffirming to the court andadvocating positions contained in thosepleadings and motions after learning that theycease to have any merit. For example, anattorney who during a pretrial conference insistson a claim or defense should be viewed as“presenting to the court” that contention andwould be subject to the obligations of [Rule

11(b)] measured as of that time. Similarly, ifafter a notice of removal is filed, a party urgesin federal court the allegations of a pleadingfiled in state court (whether as claims, defenses,or in disputes regarding removal or remand),it would be viewed as “presenting”-- and hencecertifying to the district court under Rule11--those allegations.The certification with respect to allegations andother factual contentions is revised inrecognition that sometimes a litigant may havegood reason to believe that a fact is true or falsebut may need discovery, formal or informal,from opposing parties or third persons to gatherand confirm the evidentiary basis for theallegation. Tolerance of factual contentions ininitial pleadings by plaintiffs or defendantswhen specifically identified as made oninformation and belief does not relieve litigantsfrom the obligation to conduct an appropriateinvestigation into the facts that is reasonableunder the circumstances; it is not a license tojoin parties, make claims, or present defenseswithout any factual basis or justification.Moreover, if evidentiary support is not obtainedafter a reasonable opportunity for furtherinvestigation or discovery, the party has a dutyunder the rule not to persist with thatcontention. [Rule 11(b)] does not require aformal amendment to pleadings for whichevidentiary support is not obtained, but rathercalls upon a litigant not thereafter to advocatesuch claims or defenses.The certification is that there is (or likely willbe) “evidentiary support” for the allegation, notthat the party will prevail with respect to itscontention regarding the fact. That summaryjudgment is rendered against a party does notnecessarily mean, for purposes of thiscertification, that it had no evidentiary supportfor its position. On the other hand, if a partyhas evidence with respect to a contention thatwould suffice to defeat a motion for summaryjudgment based thereon, it would havesufficient “evidentiary support” for purposesof Rule 11.Denials of factual contentions involvesomewhat different considerations. Often, ofcourse, a denial is premised upon the existenceof evidence contradicting the alleged fact. At

400-44Rev. 07.2015, October 2015


other times a denial is permissible because,after an appropriate investigation, a party hasno information concerning the matter or,indeed, has a reasonable basis for doubting thecredibility of the only evidence relevant to thematter. A party should not deny an allegationit knows to be true; but it is not required, simplybecause it lacks contradictory evidence, toadmit an allegation that it believes is not true.The changes in [Rule 11(b)(3) and (4)] willserve to equalize the burden of the rule uponplaintiffs and defendants, who under Rule 8(b)are in effect allowed to deny allegations bystating that from their initial investigation theylack sufficient information to form a belief asto the truth of the allegation. If, after furtherinvestigation or discovery, a denial is no longerwarranted, the defendant should not continueto insist on that denial. While sometimeshelpful, formal amendment of the pleadings towithdraw an allegation or denial is not requiredby [Rule 11(b)].Arguments for extensions, modifications, orreversals of existing law or for creation of newlaw do not violate [Rule 11(b)(2)] providedthey are “nonfrivolous.” This establishes anobjective standard, intended to eliminate any“empty-head pure-heart” justification forpatently frivolous arguments. However, to theextent to which a litigant has researched theissues and found some support for its theorieseven in minority opinions, in law reviewarticles, or through consultation with otherattorneys should certainly be taken into accountin determining whether [Rule 11(b)(2)] hasbeen violated. Although arguments for a changein law are not required to be specifically soidentified, a contention that is so identifiedshould be viewed with greater tolerance under[Rule 11].

Amendments to the Federal Rules of Civil Procedureat 50-53 (1993). An “inquiry reasonable under thecircumstances” requirement of 37 CFR 10.18(b)(2)is identical to that in Fed. R. Civ. P. 11(b). TheFederal courts have stated in regard to the“reasonable inquiry” requirement of Fed. R. Civ. P.11:

In requiring reasonable inquiry before the filingof any pleading in a civil case in federal districtcourt, Rule 11 demands “an objectivedetermination of whether a sanctioned party'sconduct was reasonable under thecircumstances.” In effect it imposes anegligence standard, for negligence is a failureto use reasonable care. The equation betweennegligence and failure to conduct a reasonableprecomplaint inquiry is . . . that “the amount ofinvestigation required by Rule 11 depends onboth the time available to investigate and onthe probability that more investigation will turnup important evidence; the Rule does notrequire steps that are not cost-justified.”

Hays v. Sony Corp. of Am., 847 F.2d 412, 418,7 USPQ2d 1043, 1048 (7th. Cir. 1988) (citationsomitted) (decided prior to the 1993 amendment toFed. R. Civ. P. 11, but discussing a “reasonableunder the circumstances” standard).

37 CFR 1.4(d)(4) and (5) and 11.18 do not requirea practitioner to advise the client (or third party)providing information of this certification effect (orthe sanctions applicable to noncompliance), orquestion the client (or third party) when suchinformation or instructions are provided. When apractitioner is submitting information (e.g., astatement of fact) from the applicant or a third party,or relying upon information from the applicant or athird party in his/her arguments, the Office willconsider a practitioner's “inquiry reasonable underthe circumstances” duty under 37 CFR 11.18 metso long as the practitioner has no knowledge ofinformation that is contrary to the informationprovided by the applicant or third party or wouldotherwise indicate that the information provided bythe applicant or third party was so provided for thepurpose of a violation of 37 CFR 11.18 (e.g., wassubmitted to cause unnecessary delay).

Nevertheless, it is highly advisable for a practitionerto advise a client or third party that any informationso provided must be reliable and not misleading.The submission by an applicant of misleading orinaccurate statements of facts during the prosecutionof applications for patent has resulted in the patentsissuing on such applications being heldunenforceable. See, e.g. , Refac Int'l Ltd. v. Lotus

Rev. 07.2015, October 2015400-45


Development Corp., 81 F.3d 1576, 38 USPQ2d 1665(Fed. Cir. 1996); Paragon Podiatry Laboratory,Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 25USPQ2d 1561 (Fed. Cir 1993); Rohm & Haas Co.v. Crystal Chem. Co., 722 F.2d 1556, 200 USPQ289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851(1984); Ott v. Goodpasture, 40 USPQ2d 1831 (D.N.Tex. 1996); Herman v. William Brooks Shoe Co.,39 USPQ2d 1773 (S.D.N.Y. 1996); Golden ValleyMicrowave Food Inc. v. Weaver Popcorn Co., 837F. Supp. 1444, 24 USPQ2d 1801 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed. Cir. 1993)(table), cert.denied, 511 U.S. 1128 (1994). Likewise, falsestatements by a practitioner in a paper submitted tothe Office during the prosecution of an applicationfor patent have resulted in the patent issuing on suchapplication also being held unenforceable. See General Electro Music Corp. v. Samick Music Corp.,19 F.3d 1405, 30 USPQ2d 1149 (Fed. Cir.1994)(false statement in a petition to make anapplication special constitutes inequitable conduct,and renders the patent issuing on such applicationunenforceable).

An applicant has no duty to conduct a prior art searchas a prerequisite to filing an application for patent.See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394,397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996);FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521,526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir.1987); FMC Corp. v. Manitowoc Co., 835 F.2d1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987);American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed.Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520(1984). Thus, the “inquiry reasonable under thecircumstances” requirement of 37 CFR 11.18 doesnot create any new duty on the part of an applicantfor patent to conduct a prior art search. See MPEP§ 609; cf. Judin v. United States, 110 F.3d 780, 42USPQ2d 1300 (Fed. Cir 1997)(the failure to obtainand examine the accused infringing device prior tobringing a civil action for infringement violates the1983 version of Fed. R. Civ. P. 11). The “inquiryreasonable under the circumstances” requirement of37 CFR 11.18, however, will require an inquiry intothe underlying facts and circumstances when apractitioner provides conclusive statements to theOffice (e.g., a statement that the entire delay in filingthe required reply from the due date for the reply

until the filing of a grantable petition pursuant to 37CFR 1.137(a) was unintentional).

37 CFR 11.18(c) specifically provides that violationsof 37 CFR 11.18(b)(1) may jeopardize the validityof the application or document, or the validity orenforceability of any patent, trademark registration,or certificate resulting therefrom, and that violationsof any of 37 CFR 11.18(b)(2)(i) through (iv) are,after notice and reasonable opportunity to respond,subject to such sanctions as deemed appropriate bythe USPTO Director, which may include, but arenot limited to, any combination of:


(2) Referring a practitioner’s conduct to theDirector of Enrollment and Discipline for appropriateaction;

(3) Precluding a party or practitioner fromsubmitting a paper, or presenting or contesting anissue;

(4) Affecting the weight given to the offendingpaper; or

(5) Terminating the proceedings in the Office

The Office has amended 37 CFR 1.4(d)(4) and 11.18with the objective of discouraging the filing offrivolous or clearly unwarranted correspondence inthe Office, not to routinely review correspondencefor compliance with 37 CFR 11.18(b)(2) and imposesanctions under 37 CFR 11.18(c).

Where the circumstances of an application or otherproceeding warrant a determination of whether therehas been a violation of 37 CFR 11.18(b), the file orthe application or other proceeding will be forwardedto the Office of Enrollment and Discipline (OED)for a determination of whether there has been aviolation of 37 CFR 11.18(b). In the event that OEDdetermines that a provision of 37 CFR 11.18(b) hasbeen violated, the USPTO Director will determinewhat (if any) sanction(s) under 37 CFR 11.18(c) isto be imposed in the application or other proceeding.In addition, if OED determines that a provision of37 CFR 11.18(b) has been violated by a practitioner,OED will determine whether such practitioner is tobe subject to disciplinary action (see 37 CFR1.4(d)(4) and 11.18(d)). That is, OED will providea determination of whether there has been a violation

400-46Rev. 07.2015, October 2015


of 37 CFR 11.18(b), and if such violation is by apractitioner, whether such practitioner is to besubject to disciplinary action; however, OED willnot be responsible for imposing sanctions under 37CFR 11.18(c) in an application or other proceeding.

37 CFR 11.18(d) provides that any practitionerviolating the provisions of this section may also besubject to disciplinary action. 37 CFR 11.18(d) (andthe corresponding provision of 37 CFR 1.4(d)(4))clarifies that a practitioner may be subject todisciplinary action in lieu of, or in addition to, thesanctions set forth in 37 CFR 11.18(c) for violationsof 37 CFR 11.18.

Rev. 07.2015, October 2015400-47


Documents

MPEP - Chapter 0400 - Representative of Applicant …Chapter 400 Representative of Applicant or Owner U.S. Patent and Trademark Office Cannot Aid in Selection of Patent Practitioner