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{{MPEP Chapter|300|500}} | {{MPEP Chapter|300|500}} | ||
401 U.S. Patent and Trademark Office | |||
Cannot Aid in Selection of Attorney[R-5] | |||
37 CFR 1.31. Applicant may be represented by one or | |||
more patent practitioners or joint inventors. | |||
An applicant for patent may file and prosecute his or her own | |||
An applicant for patent may file and prosecute his or her own | |||
case, or he or she may give a power of attorney so as to be represented | case, or he or she may give a power of attorney so as to be represented | ||
by one or more patent practitioners or joint inventors. The | by one or more patent practitioners or joint inventors. The | ||
United States Patent and Trademark Office cannot aid in the selection | United States Patent and Trademark Office cannot aid in the selection | ||
of a patent practitioner. | of a patent practitioner. | ||
An applicant for patent may file and prosecute his | An applicant for patent may file and prosecute his | ||
or her own application, and thus act as his or her own | or her own application, and thus act as his or her own | ||
representative (pro se) before the Office. In presenting (whether by signing, filing, submitting, | representative (pro se) before the Office. See 37 CFR | ||
1.31. In presenting (whether by signing, filing, submitting, | |||
or later advocating) papers to the Office, a | or later advocating) papers to the Office, a | ||
pro se applicant is making the certifications under | pro se applicant is making the certifications under | ||
37 | |||
CFR 10.18(b), and may be subject to sanctions | |||
under 37 CFR 10.18(c) for violations of 37 CFR | under 37 CFR 10.18(c) for violations of 37 CFR | ||
10.18(b)(2). | 10.18(b)(2). See 37 CFR 1.4(d)(4). See also MPEP | ||
§ | |||
410. | |||
If patentable subject matter appears to be disclosed | If patentable subject matter appears to be disclosed | ||
Line 30: | Line 33: | ||
prosecution of patent applications, the examiner may | prosecution of patent applications, the examiner may | ||
suggest to the applicant that it may be desirable to | suggest to the applicant that it may be desirable to | ||
employ a registered patent attorney or agent. | employ a registered patent attorney or agent. It is suggested | ||
that form paragraph 4.10 be incorporated in an | |||
Office action if the use of an attorney or agent is considered | |||
desirable and if patentable subject matter | |||
exists in the application. | |||
¶ 4.10 Employ Services of Attorney or Agent | |||
An examination of this application reveals that applicant is | |||
unfamiliar with patent prosecution procedure. While an inventor | |||
may prosecute the application, lack of skill in this field usually | |||
acts as a liability in affording the maximum protection for the | |||
invention disclosed. Applicant is advised to secure the services of | |||
a registered patent attorney or agent to prosecute the application, | |||
since the value of a patent is largely dependent upon skilled preparation | |||
and prosecution. The Office cannot aid in selecting an | |||
attorney or agent. | |||
A listing of registered patent attorneys and agents is available | |||
on the USPTO Internet web site http://www.uspto.gov in the Site | |||
Index under “Attorney and Agent Roster”. Applicants may also | |||
obtain a list of registered patent attorneys and agents located in | |||
their area by writing to the Mail Stop OED, Director of the U.S. | |||
Patent and Trademark Office, P.O. Box 1450, Alexandria, VA | |||
22313-1450. | |||
Examiner Note: | |||
The examiner should not suggest that applicant employ an | |||
attorney or agent if the application appears to contain no patentable | |||
subject matter. | |||
402Power of Attorney; Acting in a | |||
Representative Capacity [R-5] | |||
37 CFR 1.32. Power of attorney. | |||
(a)Definitions. | |||
(1)Patent practitioner means a registered patent attorney | |||
or registered patent agent under § 11.6. | |||
(2)Power of attorney means a written document by | |||
which a principal authorizes one or more patent practitioners or | |||
joint inventors to act on his or her behalf. | |||
(3)Principal means either an applicant for patent (§ | |||
1.41(b)) or an assignee of entire interest of the applicant for patent | |||
or in a reexamination proceeding, the assignee of the entirety of | |||
ownership of a patent. The principal executes a power of attorney | |||
designating one or more patent practitioners or joint inventors to | |||
act on his or her behalf. | |||
(4)Revocation means the cancellation by the principal of | |||
the authority previously given to a patent practitioner or joint | |||
inventor to act on his or her behalf. | |||
(5)Customer Number means a number that may be used | |||
to: | |||
(i)Designate the correspondence address of a patent | |||
application or patent such that the correspondence address for the | |||
patent application, patent or other patent proceeding would be the | |||
address associated with the Customer Number; | |||
(ii)Designate the fee address (§ 1.363) of a patent | |||
such that the fee address for the patent would be the address associated | |||
with the Customer Number; and | |||
(iii)Submit a list of patent practitioners such that those | |||
patent practitioners associated with the Customer Number would | |||
have power of attorney. | |||
(b)A power of attorney must: | |||
( | (1)Be in writing; | ||
(2)Name one or more representatives in compliance with | |||
(c) of this section; | |||
(3)Give the representative power to act on behalf of the | |||
principal; and | |||
(4)Be signed by the applicant for patent (§ 1.41(b)) or the | |||
assignee of the entire interest of the applicant. | |||
(c)A power of attorney may only name as representative: | |||
( | (1)One or more joint inventors (§ 1.45); | ||
(2)Those registered patent practitioners associated with a | |||
Customer Number; | |||
(3)Ten or fewer patent practitioners, stating the name and | |||
registration number of each patent practitioner. Except as provided | |||
in paragraph (c)(1) or (c)(2) of this section, the Office will | |||
not recognize more than ten patent practitioners as being of record | |||
in an application or patent. If a power of attorney names more | |||
than ten patent practitioners, such power of attorney must be | |||
accompanied by a separate paper indicating which ten patent practitioners | |||
named in the power of attorney are to be recognized by | |||
the Office as being of record in the application or patent to which | |||
the power of attorney is directed. | |||
An applicant may give a power of attorney to one | An applicant may give a power of attorney to one | ||
Line 77: | Line 151: | ||
CFR 1.31). Powers of attorney naming firms of | CFR 1.31). Powers of attorney naming firms of | ||
attorneys or agents filed in patent applications will not | attorneys or agents filed in patent applications will not | ||
be recognized. | be recognized. Furthermore, a power of attorney that | ||
names more than ten patent practitioners will only be | |||
entered if Customer Number practice is used or if | |||
such power of attorney is accompanied by a separate | |||
paper indicating which ten patent practitioners named | |||
in the power of attorney are to be recognized by the | |||
Office as being of record in the application or patent | |||
to which the power of attorney is directed. If a power | |||
of attorney is not entered because more than ten | |||
patent practitioners were named, a copy of the power | |||
of attorney should be refiled with the separate paper | |||
as set forth in 37 CFR 1.32(c)(3). | |||
See | Powers of attorney under 37 CFR 1.32(b) naming | ||
joint inventors, one or more registered individuals, | |||
or all registered practitioners associated with a Customer | |||
Number, may be made. See MPEP § | |||
403 for | |||
Customer Number practice. Where a power of attorney | Customer Number practice. Where a power of attorney | ||
is given to ten or fewer patent practitioners, | is given to ten or fewer patent practitioners, | ||
37 CFR 1.32(c)(3) requires the name and registration | 37 | ||
CFR 1.32(c)(3) requires the name and registration | |||
number of each patent practitioner to be stated in the | number of each patent practitioner to be stated in the | ||
power of attorney. If the name submitted on the power | power of attorney. If the name submitted on the power | ||
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the U.S. Patent and Trademark Office in accordance | the U.S. Patent and Trademark Office in accordance | ||
with 37 CFR 11.6. Any power of attorney given to a | with 37 CFR 11.6. Any power of attorney given to a | ||
practitioner who has been suspended or disbarred by | practitioner who has been suspended or disbarred by | ||
the Office is ineffective, and does not authorize the | the Office is ineffective, and does not authorize the | ||
person to practice before the Office or to represent | person to practice before the Office or to represent | ||
applicants or patentees in patent matters. | applicants or patentees in patent matters. Form PTO/ | ||
SB/81 may be used to appoint a registered patent | |||
practitioner. | |||
When a patent practitioner acting in a representative | |||
capacity appears in person or signs a paper in practice before the | |||
United States Patent and Trademark Office in a patent case, his or | |||
her personal appearance or signature shall constitute a representation | |||
Form PTO/SB/81 Power of Attorney and Correspondence Address Indication FormForm PTO/SB/81 Power of Attorney and Correspondence Address Indication Form | |||
Privacy Act StatementPrivacy Act Statement | |||
37 CFR 1.34. Acting in a representative capacity. | |||
When a patent practitioner acting in a representative | |||
capacity appears in person or signs a paper in practice before the | |||
United States Patent and Trademark Office in a patent case, his or | |||
her personal appearance or signature shall constitute a representation | |||
to the United States Patent and Trademark Office that under | to the United States Patent and Trademark Office that under | ||
the provisions of this subchapter and the law, he or she is authorized | the provisions of this subchapter and the law, he or she is authorized | ||
Line 117: | Line 242: | ||
proof of authority to act in a representative capacity may be | proof of authority to act in a representative capacity may be | ||
required. | required. | ||
In accordance with 37 CFR 1.34, a paper filed by a | In accordance with 37 CFR 1.34, a paper filed by a | ||
Line 170: | Line 293: | ||
in the Office’s electronic records and the examiner | in the Office’s electronic records and the examiner | ||
will communicate only with the applicant directly | will communicate only with the applicant directly | ||
unless and until the applicant appoints a recognized | unless and until the applicant appoints a recognized | ||
practitioner. | practitioner. | ||
Form paragraph 4.09 may be used to notify applicant | |||
that the attorney or agent is not registered. | |||
(a) For all documents filed in the Office in patent, trademark, | ¶ 4.09 Unregistered Attorney or Agent | ||
and other non-patent matters, except for correspondence | |||
An examination of this application reveals that applicant has | |||
attempted to appoint an attorney or agent who is neither registered | |||
to practice before the U.S. Patent and Trademark Office in patent | |||
matters nor one of the named inventors in the application, contrary | |||
to the Code of Federal Regulations, 37 CFR 1.31 and 1.32. | |||
Therefore, the appointment is void, ab initio. We will not recognize | |||
the appointment and all correspondence concerning this | |||
application must be signed by: 1) all named applicants (inventors), | |||
2) all the owners of the rights to the invention, or 3) a registered | |||
attorney or agent duly appointed by the inventor(s) or the | |||
owner(s). Furthermore, all communications from the Office will | |||
be addressed to the first named inventor, unless specific instructions | |||
to the contrary are supplied by the applicant(s) for patent or | |||
owner(s). | |||
While an applicant may prosecute the application, lack of skill | |||
in this field usually acts as a liability in affording the maximum | |||
protection for the invention disclosed. Applicant is, therefore, | |||
encouraged to secure the services of a registered patent attorney or | |||
agent (i.e., registered to practice before the U.S. Patent and Trademark | |||
Office) to prosecute the application, since the value of a | |||
patent is largely dependent upon skillful preparation and prosecution. | |||
The Office cannot aid you in selecting a registered attorney or | |||
agent, however, a list of attorneys and agents registered to practice | |||
before the U.S. Patent and Trademark Office is available from the | |||
USPTO web site, http://www.uspto.gov. For assistance locating | |||
this information, contact the Office of Enrollment and Discipline | |||
at (571) 272-4097 or call the Inventors Assistance Center toll-free | |||
number, 1(800)786-9199. | |||
Examiner Note: | |||
This form paragraph is to be used ONLY after ensuring that the | |||
named representative is not registered with the Office. A PALM | |||
inquiry should be first made and if no listing is given, the Office | |||
of Enrollment and Discipline should be contacted to determine the | |||
current “recognition” status of the individual named by the applicant | |||
in a “power of attorney.” If the named individual is NOT | |||
registered or otherwise recognized by the Office, the correspondence | |||
address on the face of the file should be promptly changed | |||
to that of the first named inventor unless applicant specifically | |||
provides a different “correspondence address.” A copy of the | |||
Office communication incorporating this form paragraph should | |||
also be mailed to the unregistered individual named by the applicant | |||
in the “power of attorney.” If desired, you may include with | |||
your communication, a list of the registered practitioners from | |||
applicant’s Zip Code copied from the Registered Attorney/Agent | |||
Roster posted on the USPTO Internet web site http:// | |||
www.uspto.gov. | |||
See MPEP § 601.03 for change of correspondence | |||
address. See MPEP § 201.06(c) for change in the | |||
power of attorney in continuation or divisional applications | |||
filed under 37 CFR 1.53(b). See MPEP § 403for the addition and/or deletion of a practitioner from | |||
the list of practitioners associated with a Customer | |||
Number. For a representative of a requester of reexamination, | |||
see MPEP § 2213. | |||
37 CFR 10.18. Signature and certificate for correspondence | |||
filed in the Patent and Trademark Office. | |||
(a)For all documents filed in the Office in patent, trademark, | |||
and other non-patent matters, except for correspondence | |||
that is required to be signed by the applicant or party, each piece | that is required to be signed by the applicant or party, each piece | ||
of correspondence filed by a practitioner in the Patent and Trademark | of correspondence filed by a practitioner in the Patent and Trademark | ||
Line 190: | Line 382: | ||
chapter. | chapter. | ||
(b) By presenting to the Office (whether by signing, filing, | (b)By presenting to the Office (whether by signing, filing, | ||
submitting, or later advocating) any paper, the party presenting | submitting, or later advocating) any paper, the party presenting | ||
such paper, whether a practitioner or non-practitioner, is certifying | such paper, whether a practitioner or non-practitioner, is certifying | ||
that— | that— | ||
(1)All statements made therein of the party’s own knowledge | |||
are true, all statements made therein on information and | are true, all statements made therein on information and | ||
belief are believed to be true, and all statements made therein are | belief are believed to be true, and all statements made therein are | ||
Line 209: | Line 401: | ||
may jeopardize the validity of the application or document, or the | may jeopardize the validity of the application or document, or the | ||
validity or enforceability of any patent, trademark registration, or | validity or enforceability of any patent, trademark registration, or | ||
certificate resulting therefrom; and | certificate resulting therefrom; and | ||
(2)To the best of the party’s knowledge, information and | |||
belief, formed after an inquiry reasonable under the circumstances, | belief, formed after an inquiry reasonable under the circumstances, | ||
that — | that — | ||
(i)The paper is not being presented for any improper | |||
purpose, such as to harass someone or to cause unnecessary delay | purpose, such as to harass someone or to cause unnecessary delay | ||
or needless increase in the cost of prosecution before the Office; | or needless increase in the cost of prosecution before the Office; | ||
(ii)The claims and other legal contentions therein are | |||
warranted by existing law or by a nonfrivolous argument for the | warranted by existing law or by a nonfrivolous argument for the | ||
extension, modification, or reversal of existing law or the establishment | extension, modification, or reversal of existing law or the establishment | ||
of new law; | of new law; | ||
(iii)The allegations and other factual contentions have | |||
evidentiary support or, if specifically so identified, are likely to | evidentiary support or, if specifically so identified, are likely to | ||
have evidentiary support after a reasonable opportunity for further | have evidentiary support after a reasonable opportunity for further | ||
investigation or discovery; and | investigation or discovery; and | ||
(iv)The denials of factual contentions are warranted | |||
on the evidence, or if specifically so identified, are reasonably | on the evidence, or if specifically so identified, are reasonably | ||
based on a lack of information or belief. | based on a lack of information or belief. | ||
(c) Violations of paragraph (b)(1) of this section by a practitioner | (c)Violations of paragraph (b)(1) of this section by a practitioner | ||
or non-practitioner may jeopardize the validity of the application | or non-practitioner may jeopardize the validity of the application | ||
or document, or the validity or enforceability of any patent, | or document, or the validity or enforceability of any patent, | ||
Line 243: | Line 435: | ||
to, any combination of — | to, any combination of — | ||
(1)Holding certain facts to have been established; | |||
(2)Returning papers; | |||
(3)Precluding a party from filing a paper, or presenting | |||
or contesting an issue; | or contesting an issue; | ||
(4)Imposing a monetary sanction; | |||
(5)Requiring a terminal disclaimer for the period of the | |||
delay; or | delay; or | ||
(6)Terminating the proceedings in the Patent and Trademark | |||
Office. | Office. | ||
(d)Any practitioner violating the provisions of this section | (d)Any practitioner violating the provisions of this section | ||
may also be subject to disciplinary action. See § 10.23(c)(15). | may also be subject to disciplinary action. See § | ||
10.23(c)(15). | |||
37 CFR 10.18(a) emphasizes that every paper filed | 37 CFR 10.18(a) emphasizes that every paper filed | ||
Line 288: | Line 480: | ||
any Office proceeding. | any Office proceeding. | ||
A letter may be addressed to any individual on the register, at | |||
37 CFR 10.11. Removing names from the register. | |||
A letter may be addressed to any individual on the register, at | |||
the address of which separate notice was last received by the | the address of which separate notice was last received by the | ||
Director, for the purpose of ascertaining whether such individual | Director, for the purpose of ascertaining whether such individual | ||
Line 299: | Line 497: | ||
on the register as may be appropriate and upon payment of | on the register as may be appropriate and upon payment of | ||
the fee set forth in § 1.21(a)(3) of this subchapter. | the fee set forth in § 1.21(a)(3) of this subchapter. | ||
See also MPEP § 1702. | |||
402.01Exceptions as to Registration[R-5] | |||
37 CFR 11.9. Limited recognition in patent matters. | |||
(a)Any individual not registered under § 11.6 may, upon a | (a)Any individual not registered under § 11.6 may, upon a | ||
showing of circumstances which render it necessary or justifiable, | showing of circumstances which render it necessary or justifiable, | ||
Line 342: | Line 539: | ||
the USPTO is acting as Receiving Office pursuant to PCT Rules | the USPTO is acting as Receiving Office pursuant to PCT Rules | ||
83.1bis and 90.1. | 83.1bis and 90.1. | ||
Sometimes in an application naming joint | Sometimes in an application naming joint | ||
Line 357: | Line 552: | ||
Enrollment and Discipline. | Enrollment and Discipline. | ||
402.02Appointment of Associate Attorney | |||
or Agent [R-3] | |||
Effective June 25, 2004, the associate power of | Effective June 25, 2004, the associate power of | ||
Line 367: | Line 563: | ||
also MPEP § 406. | also MPEP § 406. | ||
402.05Revocation [R-5] | |||
37 CFR 1.36. Revocation of power of attorney; withdrawal | |||
of patent attorney or agent. | |||
(a)A power of attorney, pursuant to § 1.32(b), may be | (a)A power of attorney, pursuant to § 1.32(b), may be | ||
revoked at any stage in the proceedings of a case by an applicant | revoked at any stage in the proceedings of a case by an applicant | ||
Line 404: | Line 602: | ||
patent practitioners associated with the Customer Number may | patent practitioners associated with the Customer Number may | ||
not be granted if an applicant has given power of attorney to the | not be granted if an applicant has given power of attorney to the | ||
patent practitioners associated with the Customer Number in an | patent practitioners associated with the Customer Number in an | ||
application that has an Office action to which a reply is due, but | application that has an Office action to which a reply is due, but | ||
Line 409: | Line 613: | ||
41.5 of this title for withdrawal during proceedings before the | 41.5 of this title for withdrawal during proceedings before the | ||
Board of Patent Appeals and Interferences. | Board of Patent Appeals and Interferences. | ||
Upon revocation of the power of attorney, appropriate | Upon revocation of the power of attorney, appropriate | ||
Line 424: | Line 626: | ||
the Office (not on the date of ACCEPTANCE). | the Office (not on the date of ACCEPTANCE). | ||
Form PTO/SB/82 may be used to revoke a power of | |||
attorney. | |||
Form PTO/SB/82 Revocation of Power of Attorney With New Power of Attorney and Change of Correspondence AddressForm PTO/SB/82 Revocation of Power of Attorney With New Power of Attorney and Change of Correspondence Address | |||
of | |||
Privacy Act StatementPrivacy Act Statement | |||
of | |||
of | |||
402.06Attorney or Agent Withdraws | |||
[R-5] | |||
37 CFR 1.36. Revocation of power of attorney; withdrawal | |||
of patent attorney or agent. | |||
( | (b)A registered patent attorney or patent agent who has been | ||
given a power of attorney pursuant to § 1.32(b) may withdraw as | |||
to | attorney or agent of record upon application to and approval by | ||
the Director. The applicant or patent owner will be notified of the | |||
withdrawal of the registered patent attorney or patent agent. | |||
Where power of attorney is given to the patent practitioners associated | |||
with a Customer Number, a request to delete all of the | |||
patent practitioners associated with the Customer Number may | |||
not be granted if an applicant has given power of attorney to the | |||
patent practitioners associated with the Customer Number in an | |||
application that has an Office action to which a reply is due, but | |||
insufficient time remains for the applicant to file a reply. See § | |||
41.5 of this title for withdrawal during proceedings before the | |||
Board of Patent Appeals and Interferences. | |||
See 37 CFR 1.36(a) in MPEP § 402.05 for revocation. | |||
See 37 CFR 10.40 for information regarding permissive | |||
and mandatory withdrawal. When filing a | |||
request to withdraw as attorney or agent of record, the | |||
patent attorney or agent should briefly state the reason( | |||
s) for which he or she is withdrawing so that the | |||
Office can determine whether to grant the request. | |||
Note that disciplinary rule, 37 CFR 10.40(a) provides | |||
that a “practitioner shall not withdraw from | |||
employment until the practitioner has taken reasonable | |||
steps to avoid foreseeable prejudice to the rights | |||
of the client.” Among several scenarios addressed in | |||
37 CFR 10.40(c), subsections (iv) and (vi) permit | |||
withdrawal when the client fails to compensate the | |||
practitioner, or when “other conduct on the part of the | |||
client has rendered the representation unreasonably | |||
difficult.” When preparing a request for withdrawal | |||
for such reasons, the practitioner should also be mindful | |||
of 37 | |||
CFR 10.57(b)(2), which prohibits the use of | |||
a confidence or secret of a client to the disadvantage | |||
of a client. Where withdrawal is predicated upon such | |||
reasons, the practitioner, rather than divulging confidential | |||
or secret information about the client, should | |||
identify the reason(s) for requesting to withdraw as | |||
being based on “irreconcilable differences.” An | |||
explanation of and the evidence supporting “irreconcilable | |||
differences” should be submitted as proprietary | |||
material in accordance with MPEP § 724.02 to | |||
ensure that the client’s confidences are maintained. | |||
In the event that a notice of withdrawal is filed by | |||
the attorney or agent of record, the file will be forwarded | |||
to the appropriate official for decision on | |||
the request. The withdrawal is effective when | |||
approved rather than when received. | |||
to the | |||
To expedite the handling of requests for permission | |||
to withdraw as attorney or agent, under 37 CFR | |||
1.36(b), Form PTO/SB/83 may be used. Because the | |||
Office does not recognize law firms, each attorney of | |||
record must sign the notice of withdrawal, or the | |||
notice of withdrawal must contain a clear indication | |||
of one attorney signing on behalf of himself or herself | |||
and another. A withdrawal of another attorney or | |||
agent of record, without also withdrawing the attorney | |||
or agent signing the request is a revocation, not a | |||
withdrawal. | |||
The Director of the United States Patent and Trademark | |||
Office usually requires that there be at least 30 | |||
days between approval of withdrawal and the later of | |||
the expiration date of a time period for reply or the | |||
expiration date of the period which can be obtained by | |||
a petition and fee for extension of time under 37 CFR | |||
1.136(a). This is so that the applicant will have sufficient | |||
time to obtain other representation or take other | |||
action. If a period has been set for reply and the period | |||
may be extended without a showing of cause pursuant | |||
to 37 CFR 1.136(a) by filing a petition for extension | |||
of time and fee, the practitioner will not be required to | |||
seek such extension of time for withdrawal to be | |||
approved. In such a situation, however, withdrawal | |||
will not be approved unless at least 30 days would | |||
remain between the date of approval and the last date | |||
on which such a petition for extension of time and fee | |||
could properly be filed. | |||
For withdrawal during reexamination proceedings, | |||
see MPEP § 2223. | |||
Form PTO/SB/83 may be used to request withdrawal | |||
be | of attorney or agent of record. | ||
attorney or agent | |||
Form PTO/SB/83 Request for Withdrawal as Attorney or Agent and Change of Correspondence AddressForm PTO/SB/83 Request for Withdrawal as Attorney or Agent and Change of Correspondence Address | |||
or | |||
Privacy Act StatementPrivacy Act Statement | |||
402.07Assignee Can Revoke Power of | |||
Attorney of Applicant and | |||
Appoint New Power of Attorney[R-5] | |||
The assignee of record of the entire interest can | |||
revoke the power of attorney of the applicant unless | |||
an “irrevocable” right to prosecute the application had | |||
been given as in some government owned applications. | |||
37 CFR 3.71. Prosecution by assignee. | |||
(a)Patents — conducting of prosecution. One or more | |||
assignees as defined in paragraph (b) of this section may, after | |||
becoming of record pursuant to paragraph (c) of this section, conduct | |||
prosecution of a national patent application or a reexamination | |||
proceeding to the exclusion of either the inventive entity, or | |||
the assignee(s) previously entitled to conduct prosecution. | |||
(b)Patents — assignee(s) who can prosecute. The | |||
assignee(s) who may conduct either the prosecution of a national | |||
application 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 reexamined who is | |||
of record, or | |||
(2)Partial assignee(s) together or with inventor(s). All | |||
partial assignees, or all partial assignees and inventors who have | |||
not assigned their right, title and interest in the application or | |||
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 the entire | |||
right, title and interest in the application or patent being reexamined. | |||
( | (c)Patents — Becoming of record. An assignee becomes of | ||
record either in a national patent application or a reexamination | |||
proceeding by filing a statement in compliance with § 3.73(b) that | |||
is signed by a party who is authorized to act on behalf of the | |||
assignee. | |||
( | (d)Trademarks. The assignee of a trademark application or | ||
registration may prosecute a trademark application, submit documents | |||
signed by | to maintain a trademark registration, or file papers against a | ||
third party in reliance on the assignee’s trademark application or | |||
registration, to the exclusion of the original applicant or previous | |||
assignee. The assignee must establish ownership in compliance | |||
with § 3.73(b). | |||
See 37 CFR 1.36 in MPEP § 402.05. | |||
A power of attorney by the assignee of the entire | |||
interest revokes all powers given by the applicant and | |||
prior assignees if the assignee establishes their right to | |||
take action as provided in 37 CFR 3.73(b). See MPEP | |||
§ 324. Ordinarily, the applicant will still have access | |||
to the application (MPEP § 106). | |||
In an application that has been accorded status | |||
under 37 CFR 1.47(a), or for which status under 37 | |||
CFR 1.47(a) has been requested, a power of attorney | |||
given by the inventors who have signed the declaration | |||
(available inventors) may be revoked by an | |||
assignee of the entire interest of the available inventors | |||
(i.e., the applicant). See 37 CFR 1.32(b)(4). | |||
Rights of the assignee to take action may be established | |||
as provided in 37 CFR 3.73(b) and MPEP | |||
§ | |||
324. | |||
Form PTO/SB/80 may be used by an assignee of | |||
the entire interest of the applicant to revoke a power | |||
of attorney and appoint a new power of attorney. The | |||
assignee would sign the power of attorney, and a | |||
newly appointed practitioner, having authority to take | |||
action on behalf of the assignee would sign a statement | |||
under 37 CFR 3.73(b) for the application in | |||
which the general power of attorney is to be used. | |||
Form PTO/SB/80 Power of Attorney To Prosecute Applications Before the USPTOForm PTO/SB/80 Power of Attorney To Prosecute Applications Before the USPTO | |||
Privacy Act StatementPrivacy Act Statement | |||
402.08Application in Interference | |||
While an application is involved in an interference, | |||
no power of attorney of any kind should be entered in | |||
such application by the technical support staff of the | |||
Technology Center. | |||
If a power of attorney or revocation is received for | |||
an application which is in interference, it should be | |||
forwarded to the Service Branch of the Board of | |||
Patent Appeals and Interferences because all parties to | |||
the interference must be notified. | |||
402.09International Application [R-3] | |||
37 CFR 11.9. Limited recognition in patent matters | |||
(a)Any individual not registered under § 11.6 may, upon a | |||
showing of circumstances which render it necessary or justifiable, | |||
and that the individual is of good moral character and reputation, | |||
be given limited recognition by the OED Director to prosecute as | |||
attorney or agent a specified patent application or specified patent | |||
applications. Limited recognition under this paragraph shall not | |||
extend further than the application or applications specified. Limited | |||
recognition shall not be granted while individuals who have | |||
passed the examination or for whom the examination has been | |||
waived are awaiting registration to practice before the Office in | |||
patent matters. | |||
(b)A nonimmigrant alien residing in the United States and | |||
the | fulfilling the provisions of § 11.7(a) and (b) may be granted limited | ||
recognition if the nonimmigrant alien is authorized by the | |||
of | Bureau of Citizenship and Immigration Services to be employed | ||
or trained in the United States in the capacity of representing a | |||
patent applicant by presenting or prosecuting a patent application. | |||
a | Limited recognition shall be granted for a period consistent with | ||
the terms of authorized employment or training. Limited recognition | |||
shall not be granted or extended to a non-United States citizen | |||
residing abroad. If granted, limited recognition shall automatically | |||
expire upon the nonimmigrant alien’s departure from the United | |||
States. | |||
(c)An individual not registered under § 11.6 may, if | |||
appointed by an applicant, prosecute an international patent application | |||
only before the United States International Searching | |||
Authority and the United States International Preliminary Examining | |||
Authority, provided that the individual has the right to practice | |||
before the national office with which the international | |||
application is filed as provided in PCT Art. 49, Rule 90 and § | |||
1.455 of this subchapter, or before the International Bureau when | |||
the USPTO is acting as Receiving Office pursuant to PCT Rules | |||
83.1bis and 90.1. | |||
37 CFR 1.455. Representation in international | |||
applications. | |||
(a)Applicants of international applications may be represented | |||
by attorneys or agents registered to practice before the | |||
United States Patent and Trademark Office or by an applicant | |||
of the | appointed as a common representative (PCT Art. 49, Rules 4.8and 90 and § 11.9). If applicants have not appointed an attorney or | ||
agent or one of the applicants to represent them, and there is more | |||
than one applicant, the applicant first named in the request and | |||
who is entitled to file in the U.S. Receiving Office shall be considered | |||
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 for | |||
which the United States is an International Searching Authority or | |||
International Preliminary Examining Authority may be appointed | |||
to represent the applicants in the international application before | |||
that authority. An attorney or agent may appoint an associate | |||
attorney or agent who shall also then be of record (PCT Rule | |||
90.1(d)). The appointment of an attorney or agent, or of a common | |||
representative, revokes any earlier appointment unless otherwise | |||
indicated (PCT Rule 90.6(b) and (c)). | |||
(b)Appointment of an agent, attorney or common representative | |||
(PCT Rule 4.8) must be effected either in the Request | |||
form, signed by applicant, in the Demand form, signed by applicant, | |||
or in a separate power of attorney submitted either to the | |||
United States Receiving Office or to the International Bureau. | |||
(c)Powers of attorney and revocations thereof should be | |||
submitted to the United States Receiving Office until the issuance | |||
of the international search report. | |||
(d)The addressee for correspondence will be as indicated in | |||
section 108 of the Administrative Instructions. | |||
For representation in international applications, see | |||
MPEP § 1807. | |||
402.10Appointment/Revocation by LessThan All Applicants or Owners[R-5] | |||
CFR 1. | Papers giving or revoking a power of attorney in an | ||
application generally require signature by all the | |||
applicants or owners of the application. Papers revoking | |||
the | a power of attorney in an application (or giving a | ||
power of attorney) will not be accepted by the Office | |||
when signed by less than all of the applicants or owners | |||
of the application unless they are accompanied by | |||
a petition under 37 CFR 1.36(a) and fee under 37 CFR | |||
1.17(f) with a showing of sufficient cause (if | |||
revocation), or a petition under 37 CFR 1.183 and fee | |||
under 37 CFR 1.17(f) (if appointment) demonstrating | |||
the extraordinary situation where justice requires | |||
waiver of the requirement of 37 CFR 1.32(b)(4) that | |||
the applicant, or the assignee of the entire interest of | |||
the applicant sign the power of attorney. The petition | |||
should be directed to the Office of Petitions. The | |||
acceptance of such papers by petition under 37 CFR | |||
1.36(a) or 1.183 will result in more than one attorney, | |||
agent, applicant, or owner prosecuting the application | |||
at the same time. Therefore, each of these parties must | |||
sign all subsequent replies submitted to the Office. | |||
See In re Goldstein, 16 USPQ2d 1963 (Dep. Assist. | |||
Comm’r Pat. 1988). In an application filed under | |||
37 | |||
CFR 1.47(a), an assignee of the entire interest of | |||
the available inventors (i.e., the applicant) who have | |||
signed the declaration may appoint or revoke a power | |||
of attorney without a petition under 37 CFR 1.36(a) or | |||
1.183. See MPEP § | |||
402.07. However, in applications | |||
accepted under 37 | |||
CFR 1.47, such a petition under | |||
37 | |||
CFR 1.36(a) or 1.183 submitted by a previously | |||
nonsigning inventor who has now joined in the application | |||
will not be granted. See MPEP § 409.03(i). | |||
Upon accepting papers appointing and/or revoking a | |||
power of attorney that are signed by less than all of | |||
the applicants or owners, the Office will indicate to | |||
applicants who must sign subsequent replies. Dual | |||
correspondence will still not be permitted. Accordingly, | |||
when the acceptance of such papers results in | |||
an attorney or agent and at least one applicant or | |||
owner prosecuting the application, correspondence | |||
will be mailed to the attorney or agent. When the | |||
acceptance of such papers results in more than one | |||
attorney or agent prosecuting the application, the correspondence | |||
address will continue to be that of the | |||
attorney or agent first named in the application, unless | |||
all parties agree to a different correspondence | |||
address. Each attorney or agent signing subsequent | |||
papers must indicate whom he or she represents. | |||
The following are examples of who must sign | |||
replies when there is more than one person responsible | |||
for prosecuting the application: | |||
(A)If coinventor A has given a power of attorney | |||
to a patent practitioner and coinventor B has not, | |||
replies must be signed by the patent practitioner | |||
of A and by coinventor B. | |||
If | (B)If coinventors A and B have each appointed | ||
their own patent practitioner, replies must be | |||
signed by both patent practitioners. | |||
403Correspondence — With Whom | |||
Held [R-5] | |||
37 CFR 1.33. Correspondence respecting patent | |||
applications, reexamination proceedings, and other | |||
proceedings. | |||
(a)Correspondence address and daytime telephone | |||
number. When filing an application, a correspondence address | |||
must be set forth in either an application data sheet (§ 1.76), or | |||
elsewhere, in a clearly identifiable manner, in any paper submitted | |||
with an application filing. If no correspondence address is specified, | |||
the Office may treat the mailing address of the first named | |||
inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence | |||
address. The Office will direct all notices, official | |||
letters, and other communications relating to the application to the | |||
correspondence address. The Office will not engage in double correspondence | |||
with an applicant and a patent practitioner, or with | |||
more than one patent practitioner except as deemed necessary by | |||
the Director. If more than one correspondence address is specified | |||
in a single document, the Office will select one of the specified | |||
addresses for use as the correspondence address and, if given, will | |||
select the address associated with a Customer Number over a | |||
typed correspondence address. For the party to whom correspondence | |||
is to be addressed, a daytime telephone number should be | |||
supplied in a clearly identifiable manner and may be changed by | |||
any party who may change the correspondence address. The correspondence | |||
address may be changed as follows: | |||
(1)Prior to filing of § 1.63 oath or declaration by any of | |||
the inventors. If a § 1.63 oath or declaration has not been filed by | |||
any of the inventors, the correspondence address may be changed | |||
the | by the party who filed the application. If the application was filed | ||
in the | by a patent practitioner, any other patent practitioner named in the | ||
transmittal papers may also change the correspondence address. | |||
Thus, the inventor(s), any patent practitioner named in the transmittal | |||
the | papers accompanying the original application, or a party | ||
that will be the assignee who filed the application, may change the | |||
correspondence address in that application under this paragraph. | |||
(2)Where a § 1.63 oath or declaration has been filed by | |||
any of the inventors. If a § 1.63 oath or declaration has been filed, | |||
or is filed concurrent with the filing of an application, by any of | |||
the inventors, the correspondence address may be changed by the | |||
parties set forth in paragraph (b) of this section, except for paragraph | |||
(b)(2). | |||
(b)Amendments and other papers. Amendments and other | |||
(a) | papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of | ||
patent | this part, filed in the application must be signed by: | ||
application | |||
(1)A patent practitioner of record appointed in compliance | |||
in | with § 1.32(b); | ||
(2)A patent practitioner not of record who acts in a | |||
representative capacity under the provisions of § 1.34; | |||
an | |||
(3)An assignee as provided for under § | |||
3.71(b) of this | |||
chapter; or | |||
(4)All of the applicants (§ 1.41(b)) for patent, unless | |||
there is an assignee of the entire interest and such assignee has | |||
taken action in the application in accordance with § 3.71 of this | |||
chapter. | |||
(c)All notices, official letters, and other communications for | |||
the patent owner or owners in a reexamination proceeding will be | |||
directed to the attorney or agent of record (see § 1.32(b)) in the | |||
patent file at the address listed on the register of patent attorneys | |||
and agents maintained pursuant to §§ 11.5 and 11.11 of this subchapter, | |||
or if no attorney or agent is of record, to the patent owner | |||
or owners at the address or addresses of record. Amendments and | |||
other papers filed in a reexamination proceeding on behalf 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 an attorney or agent | |||
of record in the patent file, or by a registered attorney or agent not | |||
of record who acts in a representative capacity under the provisions | |||
the provisions of | of § 1.34. Double correspondence with the patent owner or | ||
owners and the patent owner’s attorney or agent, or with more | |||
and | than one attorney or agent, will not be undertaken. If more than | ||
one attorney or agent is of record and a correspondence address | |||
will be | has not been specified, correspondence will be held with the last | ||
attorney or agent made of record. | |||
with | |||
A | (d)A “correspondence address” or change thereto may be | ||
filed with the Patent and Trademark Office during the enforceable | |||
life of the patent. The “correspondence address” will be used in | |||
any correspondence relating to maintenance fees unless a separate | |||
“fee address” has been specified. See § 1.363 for “fee address” | |||
used solely for maintenance fee purposes. | |||
(e)A change of address filed in a patent application or | |||
patent does not change the address for a patent practitioner in the | |||
roster of patent attorneys and agents. See § 11.11 of this title. | |||
37 CFR 1.33(a) provides for an applicant to supply | |||
an address to receive correspondence from the U.S. | |||
Patent and Trademark Office so that the Office may | |||
direct mail to any address of applicant’s selection, | |||
such as a corporate patent department, a firm of attorneys | |||
or agents, or an individual attorney, agent, or | |||
other person. | |||
( | 37 CFR 1.33(a) provides that in a patent application | ||
the applicant must specify a correspondence address | |||
or | to which the Office will send notices, letters and other | ||
communications relating to the application. The correspondence | |||
address must appear either in an application | |||
data sheet (37 CFR 1.76) or in a clearly | |||
identifiable manner elsewhere in any papers submitted | |||
with an application filing. Where more than one | |||
correspondence address is specified, the Office will | |||
select one of the correspondence addresses for | |||
use as the correspondence address. This is intended | |||
to cover, for example, the situation where an application | |||
is submitted with multiple addresses, such as one | |||
correspondence address being given in the application | |||
transmittal letter, and a different one in an accompanying | |||
37 CFR 1.63 oath or declaration, or other similar | |||
situations. The Office will select which of the | |||
multiple correspondence addresses to use according to | |||
the following order: (A) application data sheet (ADS); | |||
(B) application transmittal; (C) oath or declaration | |||
(unless power of attorney is more current); and (D) | |||
power of attorney. If more than one correspondence | |||
address is specified in a single document, the Office | |||
will select the address associated with a Customer | |||
Number over a typed correspondence address. | |||
( | 37 CFR 1.33(a) requests the submission of a daytime | ||
telephone number of the party to whom correspondence | |||
is to be addressed. While business is to be | |||
conducted on the written record (37 CFR 1.2), a daytime | |||
telephone number would be useful in initiating | |||
contact that could later be reduced to writing. The | |||
telephone number would be changeable by any party | |||
who could change the correspondence address. | |||
37 CFR 1.33(a)(1) provides that any party filing the | |||
application and setting forth a correspondence address | |||
could later change the correspondence address provided | |||
that a 37 CFR 1.63 oath/declaration by any of | |||
the inventors has not been submitted. If one joint | |||
inventor filed an application, the person who may | |||
change the correspondence address would include | |||
only the one inventor who filed the application, even | |||
if another inventor was identified on the application | |||
transmittal letter. If two of three inventors filed the | |||
application, the two inventors filing the application | |||
would be needed to change the correspondence | |||
address. Additionally, any registered practitioner | |||
named in the application transmittal letter, or a person | |||
who has the authority to act on behalf of the party that | |||
will be the assignee (if the application was filed by the | |||
party that will be the assignee), could change the correspondence | |||
address. A registered practitioner named | |||
in a letterhead would not be sufficient, but rather a | |||
clear identification of the individual as being a representative | |||
would be required. A company (to whom the | |||
invention has been assigned, or to whom there is an | |||
obligation to assign the invention) who files an application, | |||
is permitted to designate the correspondence | |||
address, and to change the correspondence address, | |||
until such time as a (first) 37 CFR 1.63 oath/declaration | |||
is filed. The mere filing of a 37 CFR 1.63 oath/ | |||
declaration that does not include a correspondence | |||
address does not affect any correspondence address | |||
previously established on the filing of the application, | |||
or changed per 37 CFR 1.63(a)(1), even if the application | |||
was filed by a company that is only a partial | |||
assignee. The expression “party that will be the | |||
assignee,” rather than assignee, is used in that until a | |||
declaration is submitted, inventors have only been | |||
identified, and any attempted assignment, or partial | |||
assignment, cannot operate for Office purposes until | |||
the declaration is supplied. Hence, if the application | |||
transmittal letter indicates that the application is being | |||
filed on behalf of XYZ company, with an assignment | |||
to be filed later, XYZ company would be allowed to | |||
change the correspondence address without resort to | |||
37 CFR 3.73(b) until an executed oath or declaration | |||
is filed, and with resort to 37 CFR 3.73(b) after the | |||
oath or declaration is filed. | |||
Where a correspondence address was set forth or | |||
changed pursuant to 37 CFR 1.33(a)(1) (prior to the | |||
filing of a 37 CFR 1.63 oath or declaration), that correspondence | |||
address remains in effect upon filing of a | |||
37 CFR 1.63 declaration and can then only be | |||
changed pursuant to 37 CFR 1.33(a)(2). | |||
37 CFR 1.33 states that when an attorney or agent | |||
has been duly appointed to prosecute an application, | |||
correspondence will be held with the attorney or agent | |||
unless some other correspondence address has been | |||
given. If an attorney or agent of record assigns a correspondence | |||
address which is different than an | |||
address where the attorney or agent normally receives | |||
mail, the attorney or agent is reminded that 37 CFR | |||
10.57 requires the attorney or agent to keep information | |||
obtained by attorney/agent – client relationship in | |||
confidence. Double correspondence with an applicant | |||
and his or her attorney, or with two representatives, | |||
will not be undertaken. See MPEP § 403.01, § 403.02, | |||
and § 714.01(d). | |||
If double correspondence is attempted, form paragraph | |||
4.01 should be included in the next Office | |||
action. | |||
¶ 4.01 Dual Correspondence | |||
Applicant has appointed an attorney or agent to conduct all | |||
business before the Patent and Trademark Office. Double correspondence | |||
with an applicant and applicant's attorney or agent will | |||
not be undertaken. Accordingly, applicant is required to conduct | |||
all future correspondence with this Office through the 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 of the | |||
action to the applicant. See MPEP §§ 403 and 714.01. | |||
2.Should applicant file additional replies, do not send copies of | |||
subsequent Office actions to the applicant. | |||
3.Status letters from the applicant may be acknowledged in | |||
isolated instances. | |||
( | In a joint application with no attorney or agent, the | ||
applicant whose name first appears in the papers | |||
receives the correspondence, unless other instructions | |||
are given. All applicants must sign the replies. See | |||
MPEP § 714.01(a). If the assignee of the entire interest | |||
of the applicant is prosecuting the application | |||
(MPEP § 402.07), the assignee may specify a correspondence | |||
address. | |||
( | 37 CFR 1.33(c) relates to which address communications | ||
for the patent owner will be sent in reexamination | |||
proceedings. See also MPEP § 2224. | |||
Powers of attorney to firms are not recognized by | |||
the U.S. Patent and Trademark Office. See MPEP | |||
§ | |||
402. However, the firm’s address may be used for | |||
the correspondence address. The address should | |||
appear as follows: | |||
( | John Doe (inventor) | ||
( | In care of Able, Baker, and Charlie (firm) | ||
1234 Jefferson Davis Highway | |||
Arlington, Virginia 22202 | |||
Patent practitioners are reminded that the attorney | |||
and agent roster must be updated separately from and | |||
in addition to any change of address filed in individual | |||
patent applications. | |||
See MPEP § 601.03 for change of correspondence | |||
address. | |||
See MPEP § 201.06(c) regarding change of correspondence | |||
address in continuation or divisional applications | |||
filed under 37 CFR 1.53(b). | |||
I. | I.CUSTOMER NUMBER PRACTICE | ||
A Customer Number (previously a “Payor Number”) | |||
may be used to: | |||
to | |||
(A)designate the correspondence address of a | |||
or | patent application or patent such that the correspondence | ||
address for the patent application or patent | |||
would be the address associated with the Customer | |||
Number (37 CFR 1.32(a)(5)(i)); | |||
(B)designate the fee address (37 CFR 1.363) of a | |||
patent such that the fee address for the patent would | |||
be the address associated with the Customer Number | |||
(37 CFR 1.32(a)(5)(ii)); and | |||
(C)submit a list of practitioners such that those | |||
practitioners associated with the Customer Number | |||
would have power of attorney (37 CFR | |||
1.32(a)(5)(iii)). | |||
Thus, a Customer Number may be used to designate | |||
the address associated with the Customer Number | |||
as the correspondence address of an application | |||
(or patent) or the fee address of a patent, and may also | |||
be used to submit a power of attorney in the applica | |||
tion (or patent) to the registered practitioners associated | |||
with the Customer Number. | |||
Applicant may use either the same or different customer | |||
number(s) for the correspondence address, the | |||
fee address and/or a list of practitioners. The customer | |||
number associated with the correspondence address is | |||
the Customer Number used to obtain access to the | |||
Patent Application Information Retrieval (PAIR) system | |||
at http://pair.uspto.gov. See MPEP § | |||
1730 for | |||
additional information regarding PAIR. | |||
The following forms are suggested for use with the | |||
Customer Number practice: | |||
(A)the “Request for Customer Number” (PTO/ | |||
SB/125) to request a Customer Number; | |||
(B)the “Request for Customer Number Data | |||
Change” (PTO/SB/124) to request a change in the | |||
data (address or list of practitioners) associated with | |||
an existing Customer Number; | |||
(C)the “Change of Correspondence Address, | |||
Application” (PTO/SB/122) to change the correspondence | |||
address of an individual application to the | |||
address associated with a Customer Number; and | |||
(D)the “Change of Correspondence Address, | |||
Patent” (PTO/SB/123) to change the correspondence | |||
address of an individual patent to the address associated | |||
with a Customer Number. | |||
The Office will also accept requests submitted electronically | |||
a | via a computer-readable diskette to change | ||
the correspondence address of a list of applications or | |||
patents or the fee address for a list of patents to the | |||
address associated with a Customer Number. | |||
Such electronic requests must be submitted in the | |||
manner set forth in the Notice entitled “Extension | |||
of | |||
the Payor Number Practice (through “Customer | |||
Numbers”) to Matters Involving Pending Patent | |||
Applications,” published in the Federal Register at 61 | |||
FR 54622, 54623-24 (October 21, 1996), and in the | |||
Official Gazette at 1191 O. G. 187, 188-89 (October | |||
29, 1996). Note that such electronic requests are no | |||
longer accepted to change the power of attorney in a | |||
patent application or patent. See the notice entitled | |||
“Notice of Elimination of Batch Update Practice to | |||
Change Power of Attorney,” published in the Official | |||
Gazette at 1272 O.G. 24 (July 1, 2003). | |||
With Customer Number practice, a patentee is also | |||
able to designate a “fee address” for the receipt of | |||
maintenance fee correspondence, and a different | |||
address for the receipt of all other correspondence. | |||
The designation of a “fee address” by reference to a | |||
Customer Number will not affect or be affected by the | |||
designation of a correspondence address by reference | |||
to another Customer Number, in that the Office will | |||
send maintenance fee correspondence to the address | |||
associated with the Customer Number designated as | |||
the “fee address” and will send all other correspondence | |||
to the address associated with the Customer | |||
Number designated as the correspondence address. | |||
The association of a list of practitioners with a Customer | |||
Number will permit an applicant to appoint all | |||
of the practitioners associated with the Customer | |||
Number merely by reference to the Customer Number | |||
in the Power of Attorney (i.e., without individually | |||
listing the practitioners in the Power of Attorney). The | |||
addition and/or deletion of a practitioner from the list | |||
of practitioners associated with a Customer Number | |||
by submitting a corresponding “Request for Customer | |||
Number Data Change” (PTO/SB/124) will result in | |||
the addition or deletion of such practitioner from the | |||
list of persons authorized to represent any applicant or | |||
assignee of the entire interest of the applicant who | |||
appointed all of the practitioners associated with such | |||
Customer Number. This will avoid the necessity for | |||
the filing of additional papers in each patent application | |||
affected by a change in the practitioners of the | |||
law firm prosecuting the application. The appointment | |||
of practitioners associated with a Customer | |||
Number is optional, in that any applicant may continue | |||
to individually name those practitioners to represent | |||
the applicant in a patent application, so long as | |||
fewer than ten patent practitioners are named. See | |||
37 | |||
CFR 1.32(c)(3). | |||
The Customer Number practice does not affect the | |||
prohibition against, and does not amount to, an | |||
appointment of a law firm (rather than specified practitioners). | |||
The Office prohibits an appointment of a | |||
specified law firm because the Office cannot ascertain | |||
from its records whether a particular practitioner submitting | |||
a paper to the Office is associated with the law | |||
firm specified in an appointment. The Office will permit | |||
an appointment of all of the practitioners associated | |||
with a specified Customer Number because the | |||
Office can ascertain from its records for the specified | |||
Customer Number whether a particular practitioner is | |||
associated with that Customer Number. | |||
CFR 1. | |||
As the Office will not recognize more than one correspondence | |||
address (37 CFR 1.33(a)), any inconsistencies | |||
between the correspondence address resulting | |||
from a Customer Number being provided in an application | |||
for the correspondence address and any other | |||
correspondence address provided in that application | |||
will generally be resolved in favor of the address | |||
of the Customer Number. Due to the prohibition | |||
against dual correspondence in an application (37 | |||
CFR 1.33(a)), an applicant will be permitted to provide | |||
only a single number at a time as the Customer | |||
Number for the correspondence address. | |||
Where an applicant appoints all of the practitioners | |||
associated with a Customer Number as well as a list | |||
of individually named practitioners, such action | |||
would be treated as only an appointment of all of the | |||
practitioners associated with a Customer Number due | |||
to the potential for confusion and data entry errors in | |||
entering registration numbers from plural sources. | |||
Furthermore, Office computer systems do not allow | |||
for entry of both a power of attorney to a list of practitioners | |||
associated with a Customer Number and a list | |||
of practitioners. | |||
Although Customer Numbers are designed to designate | |||
both a correspondence address and to associate | |||
one or more patent practitioners with an application, | |||
one Customer Number may be used for the correspondence | |||
address, and another Customer Number | |||
may be used for the power of attorney. | |||
( | Applicants are strongly cautioned not to attempt to | ||
appoint more than one Customer Number for a particular | |||
purpose (e.g., correspondence address) in a single | |||
communication, as such action will not have a cumulative | |||
effect. | |||
( | The Office has created a Mail Stop designation for | ||
correspondence related to a Customer Number (“Mail | |||
Stop EBC”), and all correspondence related to a Customer | |||
Number (e.g., requests for a Customer Number) | |||
should be addressed to this mail stop designation. | |||
( | The following persons are authorized to change the | ||
information associated with an established Customer | |||
Number: (1) a registered practitioner associated with | |||
the Customer Number; and (2) the person who | |||
requested the Customer Number (signed the Request | |||
for Customer Number, Form PTO/SB/125). | |||
Form PTO/SB/122. Change of Correspondence Address ApplicationForm PTO/SB/122. Change of Correspondence Address Application | |||
Privacy Act StatementPrivacy Act Statement | |||
Form PTO/SB/123. Change of Correspondence Address PatentForm PTO/SB/123. Change of Correspondence Address Patent | |||
Privacy Act StatementPrivacy Act Statement | |||
Form PTO/SB/124A. Request for Customer NumberForm PTO/SB/124A. Request for Customer Number | |||
Form PTO/SB/124B. Request for Customer Number Data Change Practitioner Registration Number Supplemental SheetForm PTO/SB/124B. Request for Customer Number Data Change Practitioner Registration Number Supplemental Sheet | |||
Privacy Act StatementPrivacy Act Statement | |||
Form PTO/SB/25A Request for Customer NumberForm PTO/SB/25A Request for Customer Number | |||
Form PTO/SB/25B Request for Customer Number Practitioner Registration Number Supplemental SheetForm PTO/SB/25B Request for Customer Number Practitioner Registration Number Supplemental Sheet | |||
Form PTO/SB/25B Request for Customer Number Practitioner Registration Number Supplemental SheetForm PTO/SB/25B Request for Customer Number Practitioner Registration Number Supplemental Sheet | |||
II.PATENT APPLICATION FILED WITHOUT | |||
CORRESPONDENCE ADDRESS | |||
In accordance with the provisions of 35 U.S.C. | |||
111(a) and 37 CFR 1.53, a filing date is granted to a | |||
or | nonprovisional application for patent filed in the U.S. | ||
or | Patent and Trademark Office, if it includes at least a | ||
specification containing a description pursuant to | |||
37 | |||
CFR 1.71 and at least one claim pursuant to | |||
37 | |||
CFR 1.75, and any drawing referred to in the specification | |||
or required by 37 CFR 1.81(a). If a nonprovisional | |||
application which has been accorded a filing | |||
date does not include the appropriate basic filing fee, | |||
search fee, examination fee, or oath or declaration, the | |||
applicant will be so notified and given a period of | |||
time within which to file the missing parts to complete | |||
the application and to pay the surcharge as set | |||
forth in 37 CFR 1.16(f) in order to prevent abandonment | |||
of the application. If a provisional application | |||
which has been accorded a filing date does not | |||
include the appropriate filing fee, or the cover sheet, | |||
the applicant will be so notified and given a period of | |||
time within which to file the missing parts to complete | |||
the application and 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, a | |||
correspondence address must also be provided by the | |||
applicant. The address may be different from the post | |||
office address of the applicant. For example, the | |||
address of the applicant’s registered attorney or agent | |||
may be used as the correspondence address. If the | |||
applicant fails to provide the Office with a correspondence | |||
address, the Office will be unable to provide the | |||
applicant with notification to complete the application | |||
and to pay the surcharge as set forth in 37 CFR 1.16(f) | |||
for nonprovisional applications and 37 CFR 1.16(g) | |||
for provisional applications. In such a case, the applicant | |||
will be considered to have constructive notice as | |||
of the filing date that the application must be completed | |||
and the applicant will have 2 months from the | |||
filing date in which to do so before abandonment | |||
occurs. | |||
The periods of time within which the applicant | |||
must complete the application may be extended under | |||
( | the provisions of 37 CFR 1.136. Applications which | ||
are not completed in a timely manner will be abandoned. | |||
403.01Correspondence Held With | |||
Associate Attorney [R-3] | |||
Where the attorneys bear relation of principal attorney | |||
and associate attorney, the correspondence will be | |||
had with the associate attorney unless the principal | |||
attorney directs otherwise. Ex parte Eggan, 1911 C.D. | |||
213, 172 O.G. 1091 (Comm’r Pat. 1911). The associate | |||
attorney may specify or change the correspondence | |||
address to which communications about the | |||
application are to be directed. Associate powers of | |||
attorney are not accepted after June 25, 2004, but any | |||
associate power of attorney filed before June 25, 2004 | |||
will continue to have effect. | |||
403.02Two Patent Practitioners for | |||
Same Application [R-5] [R-5] | |||
If the applicant simultaneously appoints two principal | |||
patent practitioners, he or she should indicate | |||
with whom correspondence is to be conducted. If one | |||
is a local Washington metropolitan area patent | |||
practitioner and the applicant fails to indicate either | |||
patent practitioner, correspondence will be conducted | |||
with the local patent practitioner. | |||
If, after one patent practitioner is appointed, a | |||
second patent practitioner is later appointed without | |||
revocation of the power of the first patent practitioner, | |||
the correspondence address of the second | |||
patent practitioner is entered into the application | |||
file record (Ex parte Eggan, 1911 C.D. 213, 172 O.G. | |||
1091 (Comm’r Pat. 1911)), so that the Office letters | |||
are to be sent to him or her. | |||
404Conflicting Parties Having SamePatent Practitioner [R-5] [R-5] | |||
See 37 CFR 10.66. | |||
405Patent Practitioner Not of | |||
Record [R-5] [R-5] | |||
Papers may be filed in patent applications and reexamination | |||
proceedings by registered attorneys or | |||
agents not of record under 37 CFR 1.34. Filing of | |||
such papers is considered to be a representation that | |||
the attorney or agent is authorized to act in a representative | |||
capacity on behalf of applicant. However, interviews | |||
with a registered attorney or agent not of record | |||
will ordinarily be conducted based only on the infor | |||
mation and files supplied by the attorney or agent in | |||
view of 35 U.S.C. 122. Interviews may be conducted | |||
with a registered practitioner who does not have a | |||
copy of the application file, but has proper authority | |||
from the applicant or attorney or agent of record in the | |||
form of a paper on file in the application. See also | |||
MPEP § 713.05. Such a paper may be an “Authorization | |||
to Act in a Representative Capacity.” Form/ | |||
PTO/SB/84, “Authorization to Act in a Representative | |||
Capacity” is available from the USPTO Internet | |||
web site at http://www.uspto.gov/web/forms/ | |||
sb0084.pdf. | |||
Sample Form - Authorization To Act in a Representative CapacitySample Form - Authorization To Act in a Representative Capacity | |||
Privacy Act Statment | |||
( | A change of correspondence address or a document | ||
granting access (i.e., a power to inspect) may | |||
only be signed by an attorney or agent who is not of | |||
record if an executed oath or declaration has not been | |||
filed in the application. See 37 CFR 1.33(a) (correspondence | |||
address) and 1.14(c)(4). | |||
406Death of Patent Practitioner | |||
[R-5] [R-5] | |||
The power of a principal patent practitioner | |||
will be revoked or terminated by his or her death. | |||
Such a revocation or termination of the power of the | |||
principal patent practitioner will also terminate | |||
the power of those appointed by him or her. Thus, a | |||
principal patent practitioner may appoint an associate | |||
patent practitioner (effective June 25, 2004, | |||
the associate power of patent practitioner practice | |||
has been eliminated) but such a power terminates | |||
with that of the principal. The principal patent practitioner | |||
may not appoint a “substitute” and any | |||
attempt by the principal to appoint a “substitute” | |||
patent practitioner whose power is intended to | |||
survive his or her own will not be recognized by the | |||
Office. | |||
If notification is received from the applicant or | |||
the | assignee of the death of the sole principal patent | ||
practitioner and the application is up for action by | |||
the examiner, correspondence is held with the applicant | |||
or assignee who originally appointed the | |||
deceased patent practitioner. | |||
If notification is received from the office of the | |||
deceased attorney and the application is up for action, | |||
the examiner when preparing the Office action should | |||
add form paragraph 4.02. | |||
¶ 4.02 Death of Patent Practitioner, Notice Received from | |||
Patent Practitioner’s Office | |||
In view of the notification of the death of the attorney or agent | |||
of record, the power of attorney is terminated. A new registered | |||
attorney or agent may be appointed. | |||
Examiner Note: | |||
As the power of attorney has been terminated, Office correspondence | |||
is sent to the applicant or the assignee who originally | |||
appointed the deceased attorney or agent. | |||
of | |||
If notification of the death of the sole principal | |||
attorney is received from the Office of Enrollment and | |||
Discipline or some other source, there will be no | |||
paper of record in the file wrapper to indicate that the | |||
attorney is deceased. Correspondence therefore continues | |||
the | to be held with the office of the deceased attorney | ||
but a copy of the Office action is also mailed to | |||
the person who originally appointed the attorney. In | |||
such an Office action where the application is not | |||
ready for allowance, the examiner should add form | |||
paragraph 4.03. | |||
¶ 4.03 Death of Patent Practitioner, Notice from Other | |||
the | Source | ||
Notice of the death of the attorney or agent of record has come | |||
to the attention of this Office. Since the power of attorney is | |||
therefore terminated, a copy of this action is being mailed to the | |||
[1]. | |||
Examiner Note: | |||
In bracket 1, insert --applicant-- or --assignee-- if the assignee | |||
originally appointed the deceased attorney or agent. | |||
If notification of the death of the sole principal | |||
patent practitioner is received from the Office of | |||
Enrollment and Discipline or some other source and | |||
the application is ready for allowance, the examiner | |||
prepares the application for allowance and writes a | |||
letter to the office of the deceased patent practitioner | |||
with a copy to the person who originally | |||
appointed the deceased patent practitioner including | |||
the wording of form paragraph 4.04. | |||
¶ 4.04 Death of Patent Practitioner, Application Is Ready | |||
for Allowance | |||
Notice of the death of the attorney or agent of record has come | |||
to the attention of this Office. Since the power of attorney is thus | |||
terminated, and this application is now ready for allowance, the | |||
Notice of Allowance will be mailed to the office of the deceased | |||
attorney or agent in the absence of a new power of attorney. | |||
Examiner Note: | |||
A copy should also be mailed to the applicant or the assignee | |||
who originally appointed the attorney or agent. | |||
Note MPEP § 405. | |||
Denials of factual contentions involve somewhat different | 407Suspended or Excluded Patent | ||
considerations. Often, of course, a denial is premised | Practitioner [R-5] [R-5] | ||
upon the existence of evidence contradicting the alleged | |||
fact. At other times a denial is permissible because, after | Any power of attorney given to a practitioner who | ||
an appropriate investigation, a party has no information | has been suspended or disbarred by the Office is inef | ||
concerning the matter or, indeed, has a reasonable basis | |||
for doubting the credibility of the only evidence relevant | |||
to the matter. A party should not deny an allegation it | |||
fective, and does not authorize the person to practice | |||
before the Office or to represent applicants or patentees | |||
in patent matters. | |||
See MPEP § 105. | |||
Form paragraphs 4.06, 4.07, and 4.08 should be | |||
used where power of attorney is given to an attorney | |||
or agent who has been suspended from practice before | |||
the Office. | |||
¶ 4.06 Attorney/Agent Suspended (Sole Practitioner, Sole | |||
Inventor) | |||
The instant application contains a power of attorney to [1] who | |||
has been [2] from practice before the Patent and Trademark Office | |||
(Office). The Office does not communicate with attorneys or | |||
agents who have been suspended or excluded from practice. | |||
Accordingly, the Office action is being mailed to you as the inventor. | |||
Applicant may, of course, file a new power of attorney in the | |||
application to have a registered attorney or agent represent you | |||
before the Office. In the absence of an attorney or agent of record, | |||
all amendments and other papers filed in the application must be | |||
signed: (1) by you; or (2) if there is an assignee of record of an | |||
undivided part interest, by you and such assignee; or (3) if there is | |||
an assignee of the entire interest, by such assignee; or (4) by a registered | |||
patent attorney or agent, not of record, who acts in a representative | |||
capacity under the provisions of 37 CFR 1.34. | |||
Applicant may obtain a list of registered patent attorneys and | |||
agents located in your area by consulting the USPTO web site, | |||
http://www.uspto.gov, or by calling the Office of Enrollment and | |||
Discipline at (571) 272-4097. | |||
Examiner Note: | |||
1.In bracket 1, insert name of suspended or excluded practitioner. | |||
2.In bracket 2, insert either --suspended-- or --excluded--. | |||
3.This form paragraph should be used when a suspended or | |||
excluded practitioner is the only practitioner of record and there is | |||
only a single inventor. Use form paragraph 4.07 if there are joint | |||
inventors. | |||
4.The Office action is to be mailed only to the inventor at his/ | |||
her current address of record. | |||
¶ 4.07 Attorney/Agent Suspended (Sole Practitioner, Joint | |||
Inventors) | |||
The instant application contains a power of attorney to [1] who | |||
has been [2] from practice before the Patent and Trademark Office | |||
(Office). The Office does not communicate with attorneys or | |||
agents who have been suspended or excluded from practice. | |||
Accordingly, the Office action is being mailed to the address of | |||
the inventor first named in the application. | |||
Applicants may, of course, file a new power of attorney in the | |||
application to have a registered attorney or agent represent them | |||
before the Office. In the absence of an attorney or agent of record, | |||
all amendments and other papers filed in the application must be | |||
signed: (1) by all named applicants unless one named applicant | |||
has been given a power of attorney to sign on behalf of the | |||
remaining applicants, and the power of attorney is of record in the | |||
application; or (2) if there is an assignee of record of an undivided | |||
part interest, by all named applicants retaining an interest and | |||
such assignee; or (3) if there is an assignee of the entire interest, | |||
by such assignee; or (4) by a registered patent attorney or agent | |||
not of record who acts in a representative capacity under the provisions | |||
of 37 CFR 1.34. | |||
Applicants may obtain a list of registered patent attorneys and | |||
agents located in their area by consulting the USPTO web site, | |||
http://www.uspto.gov, or by calling the Office of Enrollment and | |||
Discipline at (571) 272-4097. | |||
Examiner Note: | |||
1.In bracket 1, insert the name of the suspended or excluded | |||
practitioner. | |||
2.In bracket 2, insert either --suspended-- or --excluded--. | |||
3.This form paragraph should be used when the suspended or | |||
excluded practitioner is the only practitioner of record and there | |||
are joint inventors. Use form paragraph 4.06 if there is a single | |||
inventor. | |||
4.The Office action is to be mailed only to the inventor first | |||
named in the declaration at his or her current address of record. | |||
¶ 4.08 Attorney/Agent Suspended (Plural Practitioners) | |||
The present application was filed containing a power of attorney | |||
to [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 | |||
or agents 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 known | |||
address as listed on the register of patent attorneys and agents. To | |||
ensure that a copy of this Office action is received in a timely | |||
manner to allow for a timely reply, a copy of the Office action is | |||
being mailed directly to the address of the inventor first named in | |||
the declaration or oath. Any reply by applicant(s) should be by | |||
way of the remaining practitioner(s) of record and should include | |||
a new correspondence address. | |||
Examiner Note: | |||
1.In brackets 1, 3, 5 and 7 insert the name of the suspended or | |||
excluded practitioner. | |||
2.In brackets 2, 4 and 8, insert the name of the first named | |||
unsuspended (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 least | |||
one registered practitioner still of record who has not been suspended | |||
or excluded from practice. Use one of form paragraphs | |||
4.06 or 4.07 if there are no remaining registered attorneys or | |||
agents of record. | |||
5.The Office action is to be mailed both to the first named registered | |||
attorney or agent of record (who is not suspended or | |||
excluded) at the address currently listed in the Attorney's Roster, | |||
and to the inventor first named in the declaration at his or her current | |||
address of record. | |||
408Telephoning Patent Practitioner | |||
[R-5] [R-5] | |||
Present Office policy places great emphasis on telephone | |||
interviews initiated by the examiner. For this | |||
reason, it is not necessary for a patent practitioner | |||
to request a telephone interview. Examiners are | |||
not required to note or acknowledge requests for telephone | |||
calls or state reasons why such proposed telephone | |||
interviews would not be considered effective to | |||
advance prosecution. However, it is desirable for | |||
a patent practitioner to call the examiner if the | |||
patent practitioner feels the call will be beneficial | |||
to advance prosecution of the application. See MPEP | |||
§ 713.01 and § 713.05. | |||
Many patent practitioners have offices or representatives | |||
in the Washington area and it sometimes | |||
expedites business to interview them concerning an | |||
application. When the examiner believes the progress | |||
of the application would be advanced by an interview, | |||
he or she may call the patent practitioner in the | |||
application by telephone and ask the patent practitioner | |||
to come to the Office. | |||
Registered attorneys or agents not of record in a | |||
patent application and acting in a representative | |||
capacity under 37 CFR 1.34 should not be telephoned | |||
for restriction requirements, approval of examiner's | |||
amendments, or given any information relative to | |||
such patent application by telephone. In addition, | |||
non-registered representatives of the practitioner of | |||
record should not be telephoned for such actions, even | |||
if authorized by the attorney or agent of record. | |||
Examiners should place all long distance telephone | |||
calls through the FTS (Federal Telecommunications | |||
System), even though collect calls may have been | |||
authorized by the patent practitioner. | |||
To facilitate any telephone calls that may become | |||
necessary, it is strongly recommended that amendments, | |||
letters of transmittal, and powers of attorney | |||
include the complete telephone number, with area | |||
code and extension, of the person with whom the | |||
interview should be held, preferably near the signature. | |||
In new applications, the telephone number may | |||
appear on the letter of transmittal or in the power of | |||
attorney, oath, or declaration, next to the patent | |||
practitioner’s name and address. | |||
SPECIFIC TELEPHONE INTERVIEW SITUATIONS | |||
For restriction of invention, see MPEP § 812.01. | |||
For multiplicity, see MPEP § 2173.05(n). | |||
409Death, Legal Incapacity, or Unavailability | |||
of Inventor [R-5] | |||
If the inventor is dead, insane, or otherwise legally | |||
incapacitated, refuses to execute an application, or | |||
cannot be found, an application may be made by | |||
someone other than the inventor, as specified in 37 | |||
CFR 1.42, 1.43 and 1.47, and 37 CFR 1.423, | |||
MPEP § 409.01 - § 409.03(j). | |||
A minor (under age 18) inventor may execute an | |||
oath or declaration under 37 CFR 1.63 as long as the | |||
minor is competent to sign (i.e., understands the | |||
document that he or she is signing); a legal representative | |||
is not required to execute an oath or declaration | |||
on the minor’s behalf. See 37 CFR 1.63(a)(1). | |||
Employees of the United States Patent and Trademark | |||
Office (Office) who were inventors are not permitted | |||
to sign an oath or declaration for patent | |||
application (37 CFR 1.63) during the period of their | |||
employment with the Office and one year thereafter. | |||
35 U.S.C. 4. These employees (inventors) will be | |||
treated as being unavailable to sign the oath or declaration | |||
pursuant to 37 CFR 1.47. | |||
409.01Death of Inventor [R-5] | |||
Unless a power of attorney is coupled with an interest | |||
(i.e., a patent practitioner is assignee or part- | |||
assignee), the death of the inventor (or one of the joint | |||
inventors) terminates the power of attorney given by | |||
the deceased inventor. A new power from the heirs, | |||
administrators, executors, or assignees is necessary if | |||
the deceased inventor is the sole inventor or all powers | |||
of attorney in the application have been terminated | |||
(but see MPEP § 409.01(f)). See also 37 CFR 1.422. | |||
409.01(a)Prosecution by Administrator | |||
or Executor | |||
35 U.S.C. 117. Death or incapacity of inventor | |||
Legal representatives of deceased inventors and of those under | |||
legal incapacity may make application for patent upon compliance | |||
with the requirements and on the same terms and conditions applicable | |||
to the inventor. | |||
37 CFR 1.42. When the inventor is dead. | |||
In case of the death of the inventor, the legal representative | |||
(executor, administrator, etc.) of the deceased inventor may make | |||
the necessary oath or declaration, and apply for and obtain the | |||
patent. Where the inventor dies during the time intervening | |||
between the filing of the application and the granting of a patent | |||
thereon, the letters patent may be issued to the legal representative | |||
upon proper intervention. | |||
One who has reason to believe that he or she will be | |||
appointed legal representative of a deceased inventor | |||
may apply for a patent as legal representative in | |||
accordance with 37 CFR 1.42. | |||
Application may be made by the heirs of the inventor, | |||
as such, if there is no will or the will did not | |||
appoint an executor and the estate was under the sum | |||
required by state law for the appointment of an | |||
administrator. The heirs should identify themselves as | |||
the legal representative of the deceased inventor in the | |||
oath or declaration submitted pursuant to 37 CFR 1.63and 1.64. | |||
409.01(b)Proof of Authority of Administrator | |||
or Executor | |||
The Office no longer requires proof of authority of | |||
the legal representative of a deceased or incapacitated | |||
inventor. Although the Office does not require proof | |||
of authority to be filed, any person acting as a legal | |||
representative of a deceased or incapacitated inventor | |||
should ensure that he or she is properly acting in such | |||
a capacity. | |||
409.01(c)After Administrator or Executor | |||
Has Been Discharged | |||
When an administrator or executor has performed | |||
his or her functions and has been discharged and it is | |||
desired to make an application for an invention of the | |||
deceased, it is necessary for the administrator or executor | |||
to take out new letters of administration in order | |||
that he or she may file a new application for an invention | |||
of the deceased inventor. | |||
409.01(d)Exception in Some Foreign | |||
Countries | |||
The terms “Executor” and “Administrator” do not | |||
have exact counterparts in all foreign countries, and | |||
therefore, those terms must be construed to fit the circumstances | |||
of the case. Hence, the person or persons | |||
having authority corresponding to that of executor or | |||
administrator are permitted to make application as, for | |||
example, the heirs in the Federal Republic of Germany | |||
where no existing executor or administrator has | |||
been or will be appointed. | |||
409.01(e)If Applicant of Assigned Application | |||
Dies | |||
When an applicant who has prosecuted an application | |||
after assignment, dies, the administrator of the | |||
deceased applicant’s estate may carry on the prosecution | |||
upon filing letters of administration unless and | |||
until the assignee intervenes (MPEP § 402.07). | |||
409.01(f)Intervention of Executor Not | |||
Compulsory | |||
When an inventor dies after filing an application | |||
and executing the oath or declaration required by 37 | |||
CFR 1.63, the executor or administrator should intervene, | |||
but the allowance of the application will not be | |||
withheld nor the application withdrawn from issue if | |||
the executor or administrator does not intervene. | |||
This practice is applicable to an application which | |||
has been placed in condition for allowance or passed | |||
to issue prior to notification of the death of the inventor. | |||
See MPEP § 409.01. | |||
When a joint inventor of a pro se application dies | |||
after filing the application, the living joint inventor(s) | |||
must submit proof that the other joint inventor is dead. | |||
Upon submission of such proof, only the signatures of | |||
the living joint inventors are required on the papers | |||
filed with the USPTO if the legal representative of the | |||
deceased inventor does not intervene. If the legal representative | |||
of the deceased inventor wishes to intervene, | |||
the legal representative must submit an oath or | |||
declaration in compliance with 37 CFR 1.63 and 1.64 | |||
(e.g., stating that he or she is the legal representative | |||
of the deceased inventor and his or her residence, citizenship | |||
and post office address). Once the legal representative | |||
of the deceased inventor intervenes in the | |||
pro se application, the signatures of the living joint | |||
inventors and the legal representative are required on | |||
the papers filed with the USPTO. | |||
409.02Insanity or Other Legal Incapacity | |||
[R-3] | |||
37 CFR 1.43. When the inventor is insane or legally | |||
incapacitated. | |||
In case an inventor is insane or otherwise legally incapacitated, | |||
the legal representative (guardian, conservator, etc.) of such | |||
inventor may make the necessary oath or declaration, and apply | |||
for and obtain the patent. | |||
When an inventor becomes legally incapacitated | |||
prior to the filing of an application and prior to | |||
executing the oath or declaration required by 37 | |||
CFR 1.63 and no legal representative has been | |||
appointed, one must be appointed by a court of competent | |||
jurisdiction for the purpose of execution of the | |||
oath or declaration of the application. | |||
409.03Unavailability of Inventor [R-3] | |||
35 U.S.C. 116. Inventors | |||
When an invention is made by two or more persons jointly, | |||
they shall apply for patent jointly and each make the required | |||
oath, except as otherwise provided in this title. Inventors may | |||
apply for a patent jointly even though (1) they did not physically | |||
work together or at the same time, (2) each did not make the same | |||
type or amount of contribution, or (3) each did not make a contribution | |||
to the subject matter of every claim of the patent. | |||
If a joint inventor refuses to join in an application for patent or | |||
cannot be found or reached after diligent effort, the application | |||
may be made by the other inventor on behalf of himself and the | |||
omitted inventor. The Director, on proof of the pertinent facts and | |||
after such notice to the omitted inventor as he prescribes, may | |||
grant a patent to the inventor making the application, subject to | |||
the same rights which the omitted inventor would have had if he | |||
had been joined. The omitted inventor may subsequently join in | |||
the application. | |||
Whenever through error a person is named in an application for | |||
patent as the inventor, or through an error an inventor is not | |||
named in an application, and such error arose without any deceptive | |||
intention on his part, the Director may permit the application | |||
to be amended accordingly, under such terms as he prescribes. | |||
35 U.S.C. 118. Filing by other than inventor | |||
Whenever an inventor refuses to execute an application for | |||
patent, or cannot be found or reached after diligent effort, a person | |||
to whom the inventor has assigned or agreed in writing to assign | |||
the invention or who otherwise shows sufficient proprietary interest | |||
in the matter justifying such action, may make application for | |||
patent on behalf of and as agent for the inventor on proof of the | |||
pertinent facts and a showing that such action is necessary to preserve | |||
the rights of the parties or to prevent irreparable damage; | |||
and the Director may grant a patent to such inventor upon such | |||
notice to him as the Director deems sufficient, and on compliance | |||
with such regulations as he prescribes. | |||
37 CFR 1.47. Filing when an inventor refuses to sign or | |||
cannot be reached. | |||
(a)If a joint inventor refuses to join in an application for | |||
patent or cannot be found or reached after diligent effort, the | |||
application may be made by the other inventor on behalf of himself | |||
or herself and the nonsigning inventor. The oath or declaration | |||
in such an application must be accompanied by a petition | |||
including proof of the pertinent facts, the fee set forth in § 1.17(g), | |||
and the last known address of the nonsigning inventor. The nonsigning | |||
inventor may subsequently join in the application by filing | |||
an oath or declaration complying with § 1.63. | |||
(b)Whenever all of the inventors refuse to execute an | |||
application for patent, or cannot be found or reached after diligent | |||
effort, a person to whom an inventor has assigned or agreed in | |||
writing to assign the invention, or who otherwise shows sufficient | |||
proprietary interest in the matter justifying such action, may make | |||
application for patent on behalf of and as agent for all the inventors. | |||
The oath or declaration in such an application must be | |||
accompanied by a petition including proof of the pertinent facts, a | |||
showing that such action is necessary to preserve the rights of the | |||
parties or to prevent irreparable damage, the fee set forth in § | |||
1.17(g), and the last known address of all of the inventors. An | |||
inventor may subsequently join in the application by filing an oath | |||
or declaration complying with § 1.63. | |||
(c)The Office will send notice of the filing of the application | |||
to all inventors who have not joined in the application at the | |||
address(es) provided in the petition under this section, and publish | |||
notice of the filing of the application in the Official Gazette. The | |||
Office may dispense with this notice provision in a continuation | |||
or divisional application, if notice regarding the filing of the prior | |||
application was given to the nonsigning inventor(s). | |||
Application papers submitted pursuant to 37 CFR | |||
1.47 are forwarded by the Office of Initial Patent | |||
Examination (OIPE) to the Office of Petitions for a | |||
determination of whether the papers are proper, complete, | |||
and acceptable under 37 CFR 1.47 and for a | |||
decision on the petition under 37 CFR 1.47 before the | |||
application is sent to the Technology Center. Since an | |||
application without an oath or declaration executed by | |||
all of the inventors may be an incomplete application, | |||
an examiner should not mail an Office action in an | |||
application without a fully executed oath or declaration | |||
under 37 CFR 1.63 unless the application has | |||
been accorded status under 37 CFR 1.47 in a written | |||
decision on the petition. | |||
A bona fide attempt must be made to comply with | |||
the provisions of 37 CFR 1.47 at the time the oath or | |||
declaration is first submitted. If the oath or declaration, | |||
and evidence submitted with the oath or declaration, | |||
are not acceptable, the 37 CFR 1.47 applicant | |||
will be notified of the reasons why the papers are not | |||
acceptable. The 37 CFR 1.47 applicant may request | |||
reconsideration and file supplemental evidence in a | |||
case where a bona fide attempt was made to comply | |||
with 37 CFR 1.47 from the outset. | |||
A decision granting a petition under 37 CFR 1.47does not alter the ownership interest or title of the | |||
application. If the nonsigning inventor has not signed | |||
an assignment document which has been recorded in | |||
the USPTO, then the 37 CFR 1.47 applicant (the company | |||
that files the petition under 37 CFR 1.47(b) and | |||
establishes proprietary interest in the application) is | |||
NOT the assignee of the entire interest of the application. | |||
409.03(a)At Least One Joint InventorAvailable | |||
37 CFR 1.47(a) and 35 U.S.C. 116, second paragraph, | |||
requires all available joint inventors to file an | |||
application “on behalf of” themselves and on behalf | |||
of a joint inventor who “cannot be found or reached | |||
after diligent effort” or who refuses to “join in an | |||
application.” | |||
In addition to other requirements of law (35 U.S.C. | |||
111(a) and 115), an application deposited in the U.S. | |||
Patent and Trademark Office pursuant to 37 CFR | |||
1.47(a) must meet the following requirements: | |||
(A)All the available joint inventors must (1) | |||
make oath or declaration on their own behalf as | |||
required by 37 CFR 1.63 or 1.175 (see MPEP § 602, | |||
§ | |||
605.01, and § 1414) and (2) make oath or declaration | |||
on behalf of the nonsigning joint inventor as | |||
required by 37 CFR 1.64. An oath or declaration | |||
signed by all the available joint inventors with the signature | |||
block of the nonsigning inventor(s) left blank | |||
may be treated as having been signed by all the available | |||
joint inventors on behalf of the nonsigning inventor( | |||
s), unless otherwise indicated. | |||
(B)The application must be accompanied by | |||
proof that the nonsigning inventor (1) cannot be found | |||
or reached after diligent effort or (2) refuses to execute | |||
the application papers. See MPEP § 409.03(d). | |||
(C)The last known address of the nonsigning | |||
joint inventor must be stated. See MPEP § 409.03(e). | |||
409.03(b)No Inventor Available | |||
Filing under 37 CFR 1.47(b) and 35 U.S.C. 118 is | |||
permitted only when no inventor is available to make | |||
application. These provisions allow a “person” with a | |||
demonstrated proprietary interest to make application | |||
“on behalf of and as agent for” an inventor who “cannot | |||
be found or reached after diligent effort” or who | |||
refuses to sign the application oath or declaration. The | |||
word “person” has been construed by the U.S. Patent | |||
and Trademark Office to include juristic entities, such | |||
as a corporation. Where 37 CFR 1.47(a) is available, | |||
application cannot be made under 37 CFR 1.47(b). | |||
In addition to other requirements of law (35 U.S.C. | |||
111(a) and 115), an application deposited pursuant to | |||
37 CFR 1.47(b) must meet the following requirements: | |||
(A)The 37 CFR 1.47(b) applicant must make the | |||
oath required by 37 CFR 1.63 and 1.64 or 1.175. | |||
Where a corporation is the 37 CFR 1.47(b) applicant, | |||
an officer (President, Vice-President, Secretary, Treasurer, | |||
or Chief Executive Officer) thereof should normally | |||
sign the necessary oath or declaration. A | |||
corporation may authorize any person, including an | |||
attorney or agent registered to practice before the U.S. | |||
Patent and Trademark Office, to sign the application | |||
oath or declaration on its behalf. Where an oath or | |||
declaration is signed by a registered attorney or agent | |||
on behalf of a corporation, either proof of the attorney's | |||
or agent's authority in the form of a statement | |||
signed by an appropriate corporate officer must be | |||
submitted, or the attorney or agent may simply state | |||
that he or she is authorized to sign on behalf of the | |||
corporation. Where the oath or declaration is being | |||
signed on behalf of an assignee, see MPEP § 324. An | |||
inventor may not authorize another individual to act | |||
as his or her agent to sign the application oath or declaration | |||
on his or her behalf. Staeger v. Commissioner, | |||
189 USPQ 272 (D.D.C. 1976), In re Striker, 182 | |||
USPQ 507 (Comm'r Pat. 1973). Where an application | |||
is executed by one other than the inventor, the declaration | |||
required by 37 CFR 1.63 must state the full | |||
name, residence, post office address, and citizenship | |||
of the nonsigning inventor. Also, the title or position | |||
of the person signing must be stated if signing on | |||
behalf of a corporation under 37 CFR 1.47(b). | |||
(B)The 37 CFR 1.47(b) applicant must state his | |||
or her relationship to the inventor as required by | |||
37 | |||
CFR 1.64. | |||
(C)The application must be accompanied by | |||
proof that the inventor (1) cannot be found or reached | |||
after a diligent effort or (2) refuses to execute the | |||
application papers. See MPEP § 409.03(d). | |||
(D)The last known address of the inventor must | |||
be stated. See MPEP § 409.03(e). | |||
(E)The 37 CFR 1.47(b) applicant must make out | |||
a prima facie case (1) that the invention has been | |||
assigned to him or her or (2) that the inventor has | |||
agreed in writing to assign the invention to him or her | |||
or (3) otherwise demonstrate a proprietary interest in | |||
the subject matter of the application. See MPEP | |||
§ | |||
409.03(f). | |||
(F)The 37 CFR 1.47(b) applicant must prove that | |||
the filing of the application is necessary (1) to preserve | |||
the rights of the parties or (2) to prevent irreparable | |||
damage. See MPEP § 409.03(g). | |||
409.03(c)Legal Representatives of Deceased | |||
Inventor Not Available | |||
37 CFR 1.47 should not be considered an alternative | |||
to 37 CFR 1.42 or 35 U.S.C. 117 since the language | |||
“cannot be found or reached after diligent | |||
effort” has no reasonable application to a deceased | |||
inventor. In re Application Papers Filed September | |||
10, 1954, 108 USPQ 340 (Comm’r Pat. 1955). See | |||
37 | |||
CFR 1.42 and MPEP § 409.01. However, 37 CFR | |||
1.47 does apply where a known legal representative of | |||
a deceased inventor cannot be found or reached after | |||
diligent effort, or refuses to make application. In such | |||
cases, the last known address of the legal representative | |||
must be given (see MPEP § 409.03(e)). | |||
409.03(d)Proof of Unavailability or Refusal | |||
[R-3] | |||
I. INVENTOR CANNOT BE REACHED | |||
Where inability to find or reach a nonsigning inventor | |||
“after diligent effort” is the reason for filing under | |||
37 CFR 1.47, a statement of facts should be submitted | |||
that fully describes the exact facts which are relied on | |||
to establish that a diligent effort was made. | |||
The fact that a nonsigning inventor is on vacation | |||
or out of town and is therefore temporarily unavailable | |||
to sign the declaration is not an acceptable reason | |||
for filing under 37 CFR 1.47. | |||
Furthermore, the fact that an inventor is hospitalized | |||
and/or is not conscious is not an acceptable reason | |||
for filing under 37 CFR 1.47. 37 CFR 1.43 may | |||
be available under these circumstances. See MPEP | |||
§ | |||
409.02. Such a petition under 37 CFR 1.47 will be | |||
dismissed as inappropriate. | |||
The statement of facts must be signed, where at all | |||
possible, by a person having firsthand knowledge of | |||
the facts recited therein. Statements based on hearsay | |||
will not normally be accepted. Copies of documentary | |||
evidence such as internet searches, certified mail | |||
return receipts, cover letters of instructions, telegrams, | |||
that support a finding that the nonsigning | |||
inventor could not be found or reached should be | |||
made part of the statement. The steps taken to locate | |||
the whereabouts of the nonsigning inventor should be | |||
included in the statement of facts. It is important | |||
that the statement contain facts as opposed to conclusions. | |||
II. REFUSAL TO JOIN | |||
A refusal by an inventor to sign an oath or declaration | |||
when the inventor has not been presented with | |||
the application papers does not itself suggest that the | |||
inventor is refusing to join the application unless it is | |||
clear that the inventor understands exactly what he or | |||
she is being asked to sign and refuses to accept the | |||
application papers. A copy of the application papers | |||
should be sent to the last known address of the nonsigning | |||
inventor, or, if the nonsigning inventor is represented | |||
by counsel, to the address of the nonsigning | |||
inventor’s attorney. The fact that an application may | |||
contain proprietary information does not relieve the | |||
37 CFR 1.47 applicant of the responsibility to present | |||
the application papers to the inventor if the inventor is | |||
willing to receive the papers in order to sign the oath | |||
or declaration. It is noted that the inventor may obtain | |||
a complete copy of the application, unless the inventor | |||
has assigned his or her interest in the application, | |||
and the assignee has requested that the inventor not be | |||
permitted access. See MPEP § 106. It is reasonable to | |||
require that the inventor be presented with the application | |||
papers before a petition under 37 CFR 1.47 is | |||
granted since such a procedure ensures that the inventor | |||
is apprised of the application to which the oath or | |||
declaration is directed. In re Gray, 115 USPQ 80 | |||
(Comm’r Pat. 1956). | |||
Where a refusal of the inventor to sign the application | |||
papers is alleged, the circumstances of the presentation | |||
of the application papers and of the refusal | |||
must be specified in a statement of facts by the person | |||
who presented the inventor with the application | |||
papers and/or to whom the refusal was made. Statements | |||
by a party not present when an oral refusal is | |||
made will not be accepted. | |||
Proof that a bona fide attempt was made to present | |||
a copy of the application papers (specification, including | |||
claims, drawings, and oath or declaration) to the | |||
nonsigning inventor for signature, but the inventor | |||
refused to accept delivery of the papers or expressly | |||
stated that the application papers should not be sent, | |||
may be sufficient. When there is an express oral | |||
refusal, that fact along with the time and place of the | |||
refusal must be stated in the statement of facts. When | |||
there is an express written refusal, a copy of the document | |||
evidencing that refusal must be made part of the | |||
statement of facts. The document may be redacted to | |||
remove material not related to the inventor’s reasons | |||
for refusal. | |||
When it is concluded by the 37 CFR 1.47 applicant | |||
that a nonsigning inventor’s conduct constitutes a | |||
refusal, all facts upon which that conclusion is based | |||
should be stated in the statement of facts in support of | |||
the petition or directly in the petition. If there is documentary | |||
evidence to support facts alleged in the petition | |||
or in any statement of facts, such evidence should | |||
be submitted. Whenever a nonsigning inventor gives a | |||
reason for refusing to sign the application oath or declaration, | |||
that reason should be stated in the petition. | |||
409.03(e)Statement of Last Known Address | |||
An application filed pursuant to 37 CFR 1.47 must | |||
state the last known address of the nonsigning inventor. | |||
That address should be the last known address at | |||
which the inventor customarily receives mail. See | |||
MPEP § 605.03. Ordinarily, the last known address | |||
will be the last known residence of the nonsigning | |||
inventor. | |||
Inasmuch as a nonsigning inventor is notified that | |||
an application pursuant to 37 CFR 1.47 has been filed | |||
on his or her behalf, other addresses at which the nonsigning | |||
inventor may be reached should also be given. | |||
409.03(f)Proof of Proprietary Interest | |||
When an application is deposited pursuant to 37 | |||
CFR 1.47(b), the 37 CFR 1.47(b) applicant must | |||
prove that | |||
(A)the invention has been assigned to the applicant, | |||
or | |||
(B)the inventor has agreed in writing to assign | |||
the invention to the applicant, or | |||
(C)the applicant otherwise has sufficient proprietary | |||
interest in the subject matter to justify the filing | |||
of the application. | |||
If the application has been assigned, a copy of the | |||
assignment (in the English language) must be submitted. | |||
The assignment must clearly indicate that the | |||
invention described in the 37 CFR 1.47(b) application | |||
was assigned to the 37 CFR 1.47(b) applicant. A | |||
statement under 37 CFR 3.73(b) by the assignee must | |||
also be submitted (see MPEP § 324). An assignment | |||
of an application and any “reissue, division, or continuation | |||
of said application” does not itself establish an | |||
assignment of a continuation-in-part application. In re | |||
Gray, 115 USPQ 80 (Comm’r Pat. 1956). An assignment | |||
to a 37 CFR 1.47(b) applicant for the sole purpose | |||
of obtaining a filing date for a 37 CFR 1.47(b) | |||
application is not considered an assignment within the | |||
meaning of 35 U.S.C. 118 and 37 CFR 1.47(b). | |||
When an inventor has agreed in writing to assign an | |||
invention described in an application deposited pursuant | |||
to 37 CFR 1.47(b), a copy of that agreement | |||
should be submitted. If an agreement to assign is | |||
dependent on certain specified conditions being met, | |||
it must be established by a statement of facts by someone | |||
with first hand knowledge of the circumstances in | |||
which those conditions have been met. A typical | |||
agreement to assign is an employment agreement | |||
where an employee (nonsigning inventor) agrees to | |||
assign to his or her employer (37 CFR 1.47(b) applicant) | |||
all inventions made during employment. When | |||
such an agreement is relied on, it must be established | |||
by a statement of a person having firsthand knowledge | |||
of the facts that the invention was made by the | |||
employee while employed by the 37 CFR 1.47(b) | |||
applicant. | |||
If the invention has not been assigned, or if there is | |||
no written agreement to assign, the 37 CFR 1.47(b) | |||
applicant must demonstrate that he or she otherwise | |||
has a sufficient proprietary interest in the matter. | |||
A proprietary interest obtained other than by | |||
assignment or agreement to assign may be demonstrated | |||
by an appropriate legal memorandum to the | |||
effect that a court of competent jurisdiction (federal, | |||
state, or foreign) would by the weight of authority in | |||
that jurisdiction award title of the invention to the | |||
37 | |||
CFR 1.47(b) applicant. The facts in support of any | |||
conclusion that a court would award title to the | |||
37 | |||
CFR 1.47(b) applicant should be made of record | |||
by way of an affidavit or declaration of the person | |||
having firsthand knowledge of same. The legal memorandum | |||
should be prepared and signed by an attorney | |||
at law familiar with the law of the jurisdiction | |||
involved. A copy (in the English language) of a statute | |||
(if other than the United States statute) or a court | |||
decision (if other than a reported decision of a federal | |||
court or a decision reported in the United States Patents | |||
Quarterly) relied on to demonstrate a proprietary | |||
interest should be made of record. | |||
409.03(g)Proof of Irreparable Damage | |||
Irreparable damage may be established by a showing | |||
(a statement) that a filing date is necessary to preserve | |||
the rights of the party or to prevent irreparable | |||
damage. | |||
409.03(h)Processing and Acceptance of a | |||
37 CFR 1.47 Application [R-3] | |||
A filing date is assigned to an application deposited | |||
pursuant to 37 CFR 1.47 provided the requirements of | |||
37 CFR 1.53(b) are met. A filing receipt will be sent | |||
to the applicant and the application , or an electronic | |||
message concerning the petition under 37 CFR 1.47, | |||
will be forwarded to the Office of Petitions, for consideration | |||
of the petition filed under 37 CFR 1.47. | |||
When papers deposited pursuant to 37 CFR 1.47are found acceptable, the Office of Petitions enters a | |||
decision to that effect in the file. A notice will be published | |||
in the Official Gazette identifying the application | |||
number, filing date, the title of the invention and | |||
the name(s) of the nonsigning inventor(s). The U.S. | |||
Patent and Trademark Office will notify the nonsigning | |||
inventor(s) or, if the inventor is deceased, the legal | |||
representative(s), of the filing of an application under | |||
37 CFR 1.47 by sending a letter to the last known | |||
address of the nonsigning inventor(s) or legal representative( | |||
s). In a continuation or divisional application | |||
filed under 37 CFR 1.53(b) of an application | |||
accorded status under 37 CFR 1.47, if a copy of a declaration | |||
from a prior application and a copy of a decision | |||
according status under 37 CFR 1.47 are filed as | |||
permitted by 37 CFR 1.63(d)(3)(i), the notice will not | |||
be repeated. See 37 CFR 1.47(c). In addition, the | |||
notice is not repeated in continued prosecution applications | |||
filed under 37 CFR 1.53(d). | |||
409.03(i)Rights of the Nonsigning Inventor | |||
[R-3] | |||
The nonsigning inventor (also referred to as an | |||
“inventor designee”) may protest his or her designation | |||
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 CFR 1.19, | |||
and make his or her position of record in the file | |||
wrapper of the application. Alternatively, the nonsigning | |||
inventor may arrange to do any of the preceding | |||
through a registered patent attorney or agent. | |||
While the U.S. Patent and Trademark Office will | |||
grant the nonsigning inventor access to the application, | |||
inter partes proceedings will not be instituted in | |||
37 CFR 1.47 case. In re Hough, 108 USPQ 89 | |||
(Comm'r Pat. 1955). A nonsigning 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 | |||
prosecute the application if status under 37 CFR 1.47has been accorded, or if proprietary interest of the 37 | |||
CFR 1.47(b) applicant has been shown to the satisfaction | |||
of the U.S. Patent and Trademark Office. | |||
A nonsigning inventor may join in a 37 CFR 1.47application. To join in the application, the nonsigning | |||
inventor must file an appropriate 37 CFR 1.63 oath or | |||
declaration. Even if the nonsigning inventor joins in | |||
the application, he or she cannot revoke or give a | |||
power of attorney without agreement of the 37 CFR | |||
1.47 applicant. See MPEP § 402.10. | |||
The rights of a nonsigning inventor are protected by | |||
the fact that the patent resulting from an application | |||
filed under 37 CFR 1.47(b) and 35 U.S.C. 118 must | |||
issue to the inventor, and in an application filed under | |||
37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has | |||
the same rights that he or she would have if he or she | |||
had joined in the application. In re Hough, 108 USPQ | |||
89 (Comm'r Pat. 1955). | |||
If a nonsigning inventor feels that he or she is the | |||
sole inventor of an invention claimed in a 37 CFR | |||
1.47 application naming him or her as a joint inventor, | |||
the nonsigning inventor may file his or her own application | |||
and request that his or her application be placed | |||
in interference with the 37 CFR 1.47 application. If | |||
the claims in both the nonsigning inventor's applica | |||
tion and the 37 CFR 1.47 application are otherwise | |||
found allowable, an interference may be declared. | |||
409.03(j)Action Following Acceptance | |||
of a 37 CFR 1.47 Application[R-3] | |||
After an application deposited pursuant to 37 CFR | |||
1.47 is found acceptable by the Office, the examiner | |||
will act on the application in the usual manner. Papers | |||
filed by an inventor who did not originally join in the | |||
application, and papers relating to its 37 CFR 1.47status, will be placed in the file wrapper. | |||
In the event the previously nonsigning inventor | |||
decides to join in the application by filing an executed | |||
oath or declaration complying with 37 CFR 1.63, the | |||
oath or declaration will be placed in the application | |||
file. | |||
When an examiner receives an application in | |||
which a petition under 37 CFR 1.47 has been filed, he | |||
or she must check the file to determine that the petition | |||
has been decided by the Office of Petitions. If the | |||
petition has not been decided by the Office of Petitions, | |||
the application, or an electronic message concerning | |||
the petition, must be forwarded to the Office | |||
of Petitions for appropriate action. | |||
An application filed under 37 CFR 1.47 can be published | |||
as a Statutory Invention Registration. | |||
410Representations to the U.S. Patent | |||
and Trademark Office [R-5] | |||
37 CFR 1.4. Nature of correspondence and signature | |||
requirements. | |||
(d)(4) Certifications. (i) Section 10.18 certifications: The | |||
presentation to the Office (whether by signing, filing, submitting, | |||
or later advocating) of any paper by a party, whether a practitioner | |||
or non-practitioner, constitutes a certification under § 10.18(b) of | |||
this chapter. Violations of § 10.18(b)(2) of this chapter by a party, | |||
whether a practitioner or non-practitioner, may result in the imposition | |||
of sanctions under § 10.18(c) of this chapter. Any practitioner | |||
violating § 10.18(b) of this chapter may also be subject to | |||
disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chapter. | |||
(ii) Certifications as to the signature: (A) Of another: A | |||
person submitting a document signed by another under paragraphs | |||
(d)(2) or (d)(3) of this section is obligated to have a reasonable | |||
basis to believe that the person whose signature is present on the | |||
document was actually inserted by that person, and should retain | |||
evidence of authenticity of the signature. | |||
(B) Self certification: The person inserting a signature | |||
under paragraphs (d)(2) or (d)(3) of this section in a document | |||
submitted to the Office certifies that the inserted signature appearing | |||
in the document is his or her own signature. | |||
(C) Sanctions: Violations of the certifications as to the | |||
signature of another or a person’s own signature, set forth in paragraphs | |||
(d)(4)(ii)(A) and (B) of this section, may result in the | |||
imposition of sanctions under § 10.18(c) and (d) of this chapter. | |||
(e)Correspondence requiring a person’s signature and relating | |||
to registration practice before the Patent and Trademark Office | |||
in patent cases, enrollment and disciplinary investigations, or disciplinary | |||
proceedings must be submitted with an original hand | |||
written signature personally signed in permanent dark ink or its | |||
equivalent by that person. | |||
37 CFR 10.18. Signature and certificate for | |||
correspondence filed in the Patent and Trademark Office. | |||
(a)For all documents filed in the Office in patent, trademark, | |||
and other non-patent matters, except for correspondence | |||
that is required to be signed by the applicant or party, each piece | |||
of correspondence filed by a practitioner in the Patent and Trademark | |||
Office must bear a signature by such practitioner complying | |||
with the provisions of § 1.4(d), § 1.4(e), or § 2.193(c)(1) of this | |||
chapter. | |||
(b)By presenting to the Office (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 own knowledge | |||
are true, all statements made therein on information and | |||
belief are believed to be true, and all statements made therein are | |||
made with the knowledge that whoever, in any matter within the | |||
jurisdiction of the Patent and Trademark Office, knowingly and | |||
willfully falsifies, conceals, or covers up by any trick, scheme, or | |||
device a material fact, or makes any false, fictitious or fraudulent | |||
statements or representations, or makes or uses any false writing | |||
or document knowing the same to contain any false, fictitious or | |||
fraudulent statement or entry, shall be subject to the penalties set | |||
forth under 18 | |||
U.S.C. 1001, and that violations of this paragraph | |||
may jeopardize the validity of the application or document, or the | |||
validity or enforceability of any patent, trademark registration, or | |||
certificate resulting therefrom; and | |||
(2)To the best of the party’s knowledge, information and | |||
belief, formed after an inquiry reasonable under the circumstances, | |||
that — | |||
(i)The paper is not being presented for any improper | |||
purpose, such as to harass someone or to cause unnecessary delay | |||
or needless increase in the cost of prosecution before the Office; | |||
(ii)The claims and other legal contentions therein are | |||
warranted by existing law or by a nonfrivolous argument for the | |||
extension, modification, or reversal of existing law or the establishment | |||
of new law; | |||
(iii)The allegations and other factual contentions have | |||
evidentiary support or, if specifically so identified, are likely to | |||
have evidentiary support after a reasonable opportunity for further | |||
investigation or discovery; and | |||
(iv)The denials of factual contentions are warranted | |||
on the evidence, or if specifically so identified, are reasonably | |||
based on a lack of information or belief. | |||
(c)Violations of paragraph (b)(1) of this section by a practitioner | |||
or non-practitioner may jeopardize the validity of the application | |||
or document, or the validity or enforceability of any patent, | |||
trademark registration, or certificate resulting therefrom. Violations | |||
of any of paragraphs (b)(2)(i) through (iv) of this section are, | |||
after notice and reasonable opportunity to respond, subject to such | |||
sanctions as deemed appropriate by the Commissioner, or the | |||
Commissioner's designee, which may include, but are not limited | |||
to, any combination of — | |||
(1)Holding certain facts to have been established; | |||
(2)Returning papers; | |||
(3)Precluding a party from filing a paper, or presenting | |||
or contesting an issue; | |||
(4)Imposing a monetary sanction; | |||
(5)Requiring a terminal disclaimer for the period of the | |||
delay; or | |||
(6)Terminating the proceedings in the Patent and Trademark | |||
Office. | |||
(d)Any practitioner violating the provisions of this section | |||
may also be subject to disciplinary action. See § | |||
10.23(c)(15). | |||
37 CFR 1.4(d)(4) provides that the presentation to | |||
the Office (whether by signing, filing, submitting, or | |||
later advocating) of any paper by a party, whether a | |||
practitioner or nonpractitioner, constitutes a certification | |||
under 37 CFR 10.18(b), and that violations of | |||
37 | |||
CFR 10.18(b)(2) may subject the party to sanctions | |||
under 37 CFR 10.18(c). Thus, by presenting a | |||
paper to the Office, the party is making the certifications | |||
set forth in 37 CFR 10.18(b), and is subject to | |||
sanctions under 37 CFR 10.18(c) for violations of | |||
37 | |||
CFR 10.18(b)(2), regardless of whether the party is | |||
a practitioner or nonpractitioner. A practitioner violating | |||
37 CFR 10.18(b) may also be subject to disciplinary | |||
action in lieu of or in addition to sanctions under | |||
37 CFR 10.18(c) for violations of 37 CFR 10.18(b). | |||
Additional certifications provided in 37 CFR | |||
1.4(d)(4) include that a person inserting a signature | |||
into a document under 37 CFR 1.4(d)(2) or 1.4(d)(3) | |||
certifies that the inserted signature appearing in the | |||
document is his or her own signature. Also, a person | |||
filing a document signed by another under 37 CFR | |||
1.4(d)(2) or 1.4(d)(3) is obligated to have a reasonable | |||
belief that the signature present on the document was | |||
actually inserted by that person. The person filing the | |||
document should retain evidence of the authenticity | |||
of the signature. See 37 CFR 1.4(h). | |||
37 CFR 10.18(b) provides that, by presenting any | |||
paper to the USPTO, the party presenting such paper | |||
is making two certifications: (1) the first certification | |||
is that the statements made therein are subject to the | |||
declaration clause of 37 CFR 1.68; (2) the second certification | |||
is the certification required for papers filed | |||
in a federal court under Rule 11(b) of the Federal | |||
Rules of Civil Procedure. | |||
The first certification has permitted the USPTO to | |||
eliminate the separate verification requirement previously | |||
contained in 37 CFR 1.6, 1.8, 1.10, 1.27, 1.28, | |||
1.47, 1.48, 1.52, 1.55, 1.69, 1.102, 1.125, 1.137, | |||
1.377, 1.378, 1.740, 1.804, 1.805, 3.26, and 5.4 for | |||
statements of facts by persons who are not registered | |||
to practice before the USPTO. As statements submitted | |||
to the USPTO by any person are now, by operation | |||
of 37 CFR 10.18(b)(1), verified statements, a separate | |||
verification requirement is no longer necessary. The | |||
USPTO, however, has retained the verification | |||
requirement for a statement to be submitted under | |||
oath or declaration (37 CFR 1.68) in a number of sections | |||
(e.g., 37 CFR 1.63, 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 (1993). This | |||
provision is promulgated pursuant to the Director’s | |||
authority under 35 U.S.C. 2(b)(2) to establish regulations | |||
for the conduct of proceedings in the USPTO, | |||
and is intended to discourage the filing of frivolous | |||
papers by practitioners or non-practitioners in the | |||
USPTO. Rule 11(b) of the Federal Rules of Civil Procedure | |||
provides: | |||
Representations to Court. By presenting to the court | |||
(whether by signing, filing, submitting, or later advocating) | |||
a pleading, written motion, or other paper, an | |||
attorney or unrepresented party is certifying that to the | |||
best of the person's knowledge, information and belief, | |||
formed after an inquiry reasonable under the circumstances, | |||
-- | |||
(1) it is not being presented for any improper purpose, | |||
such as to harass or to cause unnecessary delay or needless | |||
increase in the cost of litigation; | |||
(2) the claims, defenses, and other legal contentions | |||
therein are warranted by existing law or by a nonfrivolous | |||
argument for the extension, modification, or reversal of | |||
existing law or the establishment of new law; | |||
(3) the allegations and other factual contentions have | |||
evidentiary support or, if specifically so identified, are | |||
likely to have evidentiary support after a reasonable | |||
opportunity for further investigation or discovery; and | |||
(4) the denials of factual contentions are warranted on | |||
the evidence or, if specifically so identified, are reasonably | |||
based on a lack of information or belief. | |||
Fed. R. Civ. P. 11(b)(1993). | |||
37 CFR 10.18(b)(2) tracks the language of Fed. R. | |||
Civ. P. 11(b). The advisory committee notes to Fed. | |||
R. Civ. P. 11(b) provide, in part, that: | |||
[Fed. R. Civ. P. 11(b) and (c)] restate the provisions | |||
requiring attorneys and pro se litigants to conduct a reasonable | |||
inquiry into the law and facts before signing | |||
pleadings, written motions, and other documents, and prescribing | |||
sanctions for violations of these obligations. The | |||
[1993] revision in part expands the responsibilities of litigants | |||
to the court, while providing greater constraints and | |||
flexibility in dealing with infractions of the rule. The rule | |||
continues to require litigants to “stop-and-think” before | |||
initially making legal or factual contentions. It also, however, | |||
emphasizes the duty of candor by subjecting litigants | |||
to potential sanctions for insisting upon a position after it | |||
is no longer tenable and by generally providing protection | |||
against sanctions if they withdraw or correct contentions | |||
after a potential violation is called to their attention. | |||
The rule applies only to assertions contained in papers | |||
filed with or submitted to the court. It does not cover matters | |||
arising for the first time during oral presentations to | |||
the court, when counsel may make statements that would | |||
not have been made if there had been more time for study | |||
and reflection. However, a litigant's obligations with | |||
respect to the contents of these papers are not measured | |||
solely as of the time they are filed with or submitted to the | |||
court, but include reaffirming to the court and advocating | |||
positions contained in those pleadings and motions after | |||
learning that they cease to have any merit. For example, | |||
an attorney who during a pretrial conference insists on a | |||
claim or defense should be viewed as “presenting to the | |||
court” that contention and would be subject to the obligations | |||
of [Rule 11(b)] measured at that time. Similarly, if | |||
after a notice of removal is filed, a party urges in federal | |||
court the allegations of a pleading filed in state court | |||
(whether as claims, defenses, or in disputes regarding | |||
removal or remand), it would be viewed as “presenting”-- | |||
and hence certifying to the district court under Rule 11-- | |||
those allegations. | |||
The certification with respect to allegations and other factual | |||
contentions is revised in recognition that sometimes a | |||
litigant may have good reason to believe that a fact is true | |||
or false but may need discovery, formal or informal, from | |||
opposing parties or third persons to gather and confirm | |||
the evidentiary basis for the allegation. Tolerance of factual | |||
contentions in initial pleadings by plaintiffs or defendants | |||
when specifically identified as made on information | |||
and belief does not relieve litigants from the obligation to | |||
conduct an appropriate investigation into the facts that is | |||
reasonable under the circumstances; it is not a license to | |||
join parties, make claims, or present defenses without any | |||
factual basis or justification. Moreover, if evidentiary support | |||
is not obtained after a reasonable opportunity for further | |||
investigation or discovery, the party has a duty under | |||
the rule not to persist with that contention. [Rule 11(b)] | |||
does not require a formal amendment to pleadings for | |||
which evidentiary support is not obtained, but rather calls | |||
upon a litigant not thereafter to advocate such claims or | |||
defenses. | |||
The certification is that there is (or likely will be) “evidentiary | |||
support” for the allegation, not that the party will | |||
prevail with respect to its contention regarding the fact. | |||
That summary judgment is rendered against a party does | |||
not necessarily mean, for purposes of this certification, | |||
that it had no evidentiary support for its position. On the | |||
other hand, if a party has evidence with respect to a contention | |||
that would be sufficient to defeat a motion for | |||
summary judgment based thereon, it would have sufficient | |||
“evidentiary support” for purposes of Rule 11. | |||
Denials of factual contentions involve somewhat different | |||
considerations. Often, of course, a denial is premised | |||
upon the existence of evidence contradicting the alleged | |||
fact. At other times a denial is permissible because, after | |||
an appropriate investigation, a party has no information | |||
concerning the matter or, indeed, has a reasonable basis | |||
for doubting the credibility of the only evidence relevant | |||
to the matter. A party should not deny an allegation it | |||
knows to be true; but it is not required, simply because it | knows to be true; but it is not required, simply because it | ||
lacks contradictory evidence, to admit an allegation that it | lacks contradictory evidence, to admit an allegation that it | ||
believes is not true. | believes is not true. | ||
The changes in [Rule 11(b)(3) and (4)] will serve to equalize | |||
the burden of the rule upon plaintiffs and defendants, | |||
who under Rule 8(b) are in effect allowed to deny allegations | The changes in [Rule 11(b)(3) and (4)] will serve to equalize | ||
by stating that from their initial investigation they | the burden of the rule upon plaintiffs and defendants, | ||
lack sufficient information to form a belief as to the truth | who under Rule 8(b) are in effect allowed to deny allegations | ||
of the allegation. If, after further investigation or discovery, | by stating that from their initial investigation they | ||
a denial is no longer warranted, the defendant should | lack sufficient information to form a belief as to the truth | ||
not continue to insist on that denial. While sometimes | of the allegation. If, after further investigation or discovery, | ||
helpful, formal amendment of the pleadings to withdraw | a denial is no longer warranted, the defendant should | ||
an allegation or denial is not required by [Rule 11(b)]. | not continue to insist on that denial. While sometimes | ||
helpful, formal amendment of the pleadings to withdraw | |||
Arguments for extensions, modifications, or reversals of | an allegation or denial is not required by [Rule 11(b)]. | ||
existing law or for creation of new law do not violate | |||
[Rule 11(b)(2)] provided they are “nonfrivolous.” This | |||
establishes an objective standard, intended to eliminate | |||
any “empty-head pure-heart” justification for patently | Arguments for extensions, modifications, or reversals of | ||
frivolous arguments. However, to the extent to which a | existing law or for creation of new law do not violate | ||
litigant has researched the issues and found some support | [Rule 11(b)(2)] provided they are “nonfrivolous.” This | ||
for its theories even in minority opinions, in law review | establishes an objective standard, intended to eliminate | ||
articles, or through consultation with other attorneys | any “empty-head pure-heart” justification for patently | ||
should certainly be taken into account in determining | frivolous arguments. However, to the extent to which a | ||
whether [Rule 11(b)(2)] has been violated. Although | litigant has researched the issues and found some support | ||
arguments for a change in law are not required to be specifically | for its theories even in minority opinions, in law review | ||
so identified, a contention that is so identified | articles, or through consultation with other attorneys | ||
should be viewed with greater tolerance under [Rule 11]. | should certainly be taken into account in determining | ||
whether [Rule 11(b)(2)] has been violated. Although | |||
arguments for a change in law are not required to be specifically | |||
so identified, a contention that is so identified | |||
should be viewed with greater tolerance under [Rule 11]. | |||
Amendments to the Federal Rules of Civil Procedureat 50-53 (1993), reprinted in 146 F.R.D. 401, 584-87. | |||
An “inquiry reasonable under the circumstances” | |||
requirement of 37 CFR 10.18(b)(2) is identical to that | |||
in Fed. R. Civ. P. 11(b). The Federal courts have | |||
stated in regard to the “reasonable inquiry” requirement | |||
of Fed. R. Civ. P. 11: | |||
In requiring reasonable inquiry before the filing of any | |||
pleading in a civil case in federal district court, Rule 11 | |||
demands “an objective determination of whether a sanctioned | |||
party's conduct was reasonable under the circumstances.” | |||
In effect it imposes a negligence standard, for | |||
negligence is a failure to use reasonable care. The equation | |||
between negligence and failure to conduct a reasonable | |||
precomplaint inquiry is . . . that “the amount of | |||
investigation required by Rule 11 depends on both the | |||
time available to investigate and on the probability that | |||
more investigation will turn up important evidence; the | |||
Rule does not require steps that are not cost-justified.” | |||
Hays v. Sony Corp. of Am., 847 F.2d 412, 418, | |||
7 | |||
USPQ2d 1043, 1048 (7th. Cir. 1988) (citations | |||
omitted) (decided prior to the 1993 amendment to | |||
Fed. R. Civ. P. 11, but discussing a “reasonable under | |||
the circumstances” standard). | |||
37 CFR 1.4(d)(4) and 10.18 do not require a practitioner | |||
to advise the client (or third party) providing | |||
information of this certification effect (or the sanctions | |||
applicable to noncompliance), or question the | |||
client (or third party) when such information or | |||
instructions are provided. When a practitioner is submitting | |||
information (e.g., a statement of fact) from the | |||
applicant or a third party, or relying upon information | |||
from the applicant or a third party in his/her arguments, | |||
the Office will consider a practitioner's | |||
“inquiry reasonable under the circumstances” duty | |||
under 37 CFR 10.18 met so long as the practitioner | |||
has no knowledge of information that is contrary to | |||
the information provided by the applicant or third | |||
party or would otherwise indicate that the information | |||
provided by the applicant or third party was so provided | |||
for the purpose of a violation of 37 CFR 10.18(e.g., was submitted to cause unnecessary delay). | |||
Nevertheless, it is highly advisable for a practitioner | |||
to advise a client or third party that any information | |||
so provided must be reliable and not misleading. | |||
The submission by an applicant of misleading or inaccurate | |||
statements of facts during the prosecution | |||
of | |||
applications for patent has resulted in the patents | |||
issuing on such applications being held unenforceable. | |||
See, e.g. , Refac Int'l Ltd. v. Lotus Development | |||
Corp., 81 F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. | |||
1996); Paragon Podiatry Laboratory, Inc. v. KLM | |||
Laboratories, Inc., 984 F.2d 1182, 25 USPQ2d 1561 | |||
(Fed. Cir 1993); Rohm & Haas Co. v. Crystal Chem. | |||
Co., 722 | |||
F.2d 1556, 200 USPQ 289 (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 Valley Microwave Food Inc. v. Weaver | |||
Popcorn Co., 837 F. 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, false statements by a practitioner in a paper | |||
submitted to the Office during the prosecution of an | |||
application for patent have resulted in the patent issuing | |||
on such application 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 an application | |||
special constitutes inequitable conduct, and renders | |||
the patent issuing on such application | |||
unenforceable). | |||
An applicant has no duty to conduct a prior art | |||
search as 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.2d 1411, | |||
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 the circumstances” | |||
requirement of 37 CFR 10.18 does not create any new | |||
duty on the part of an applicant for patent to conduct a | |||
prior art search. See MPEP § 609; cf. Judin v. United | |||
States, 110 F.3d 780, 42 USPQ2d 1300 (Fed. Cir | |||
1997)(the failure to obtain and examine the accused | |||
infringing device prior to bringing a civil action for | |||
infringement violates the 1983 version of Fed. R. Civ. | |||
P. 11). The “inquiry reasonable under the circumstances” | |||
requirement of 37 CFR 10.18, however, will | |||
require an inquiry into the underlying facts and cir | |||
cumstances when a practitioner provides conclusive | |||
statements to the Office (e.g., a statement that the | statements to the Office (e.g., a statement that the | ||
entire delay in filing the required reply from the due | entire delay in filing the required reply from the due |