Editing MPEP 400

{{MPEP Chapter|300|500}}

'''<big>Chapter 400 Representative of Inventor or Owner</big>'''

<div class="noautonum">__TOC__</div>

==401 U.S. Patent and Trademark Office Cannot Aid in Selection of Attorney==

{{Statute|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 
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 
United States Patent and Trademark Office cannot aid in the selection 
of a patent practitioner.
|}


An applicant for patent may file and prosecute his 
or her own application, and thus act as his or her own 
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 
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 
10.18(b)(2). See 37 CFR 1.4(d)(4). See also MPEP 
§ 410. 

If patentable subject matter appears to be disclosed 
in a pro se application and it is apparent that the applicant 
is unfamiliar with the proper preparation and 
prosecution of patent applications, the examiner may 
suggest to the applicant that it may be desirable to 
employ a registered patent attorney or agent.

==402 Power of Attorney; Acting in a Representative Capacity==

{{Statute|37 CFR 1.32. Power of attorney.}}
(a) Definitions.

<p style="padding-left: +20px;">(1) Patent practitioner means a registered patent attorney 
or registered patent agent under § 11.6.</p>

<p style="padding-left: +20px;">(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.</p>

<p style="padding-left: +20px;">(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.</p>

<p style="padding-left: +20px;">(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.</p>

<p style="padding-left: +20px;">(5) Customer Number means a number that may be used 
to:</p>

<p style="padding-left: +40px;">(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;</p>

<p style="padding-left: +40px;">(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 </p>

<p style="padding-left: +40px;">(iii) Submit a list of patent practitioners such that those 
patent practitioners associated with the Customer Number would 
have power of attorney.</p>

(b) A power of attorney must:

<p style="padding-left: +20px;">(1) Be in writing;</p>

<p style="padding-left: +20px;">(2) Name one or more representatives in compliance with 
(c) of this section;</p>

<p style="padding-left: +20px;">(3) Give the representative power to act on behalf of the 
principal; and</p>

<p style="padding-left: +20px;">(4) Be signed by the applicant for patent (§ 1.41(b)) or the 
assignee of the entire interest of the applicant.</p>

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

<p style="padding-left: +20px;">(1) One or more joint inventors (§ 1.45);</p>

<p style="padding-left: +20px;">(2) Those registered patent practitioners associated with a 
Customer Number;</p>

<p style="padding-left: +20px;">(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.</p>
|}


An applicant may give a power of attorney to one 
or more patent practitioners or joint inventors (37 
CFR 1.31). Powers of attorney naming firms of 
attorneys or agents filed in patent applications will not 
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). 

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 
is given to ten or fewer patent practitioners, 
37 CFR 1.32(c)(3) requires the name and registration 
number of each patent practitioner to be stated in the 
power of attorney. If the name submitted on the power 
of attorney does not match the name associated with 
the registration number provided in the Office of 
Enrollment and Discipline records for patent practitioners, 
the person that the Office will recognize as being 
of record will be the person associated with the registration 
number provided, because the Office enters the 
registration number, not the name, when making the 
practitioner of record. Accordingly, if the wrong registration 
number is provided, a new power of attorney 
will be required to correct the error.

For a power of attorney to be valid, the attorney or 
agent appointed must be registered to practice before 
the U.S. Patent and Trademark Office in accordance 
with 37 CFR 11.6. Any power of attorney given to a 
practitioner who has been suspended or disbarred by 
the Office is ineffective, and does not authorize the 
person to practice before the Office or to represent 
applicants or patentees in patent matters.

{{Statute|37 CFR 1.34. Acting in a representative capacity.}}
When a patent practitioner acting in a representative 
capacity appears in person or signs a paper in practice before the 
United States Patent and Trademark Office in a patent case, his or 
her personal appearance or signature shall constitute a representation 
to the United States Patent and Trademark Office that under 
the provisions of this subchapter and the law, he or she is authorized 
to represent the particular party on whose behalf he or she 
acts. In filing such a paper, the patent practitioner must set forth 
his or her registration number, his or her name and signature. Further 
proof of authority to act in a representative capacity may be 
required.
|}


In accordance with 37 CFR 1.34, a paper filed by a 
registered patent attorney or agent in an application in 
which he or she is not of record must include his or 
her name and registration number with his or her signature. 
Acceptance of papers filed in patent applications 
and reexamination proceedings by registered 
attorneys and agents upon a representation that the 
attorney or agent is authorized to act in a representative 
capacity is for the purpose of facilitating replies 
on behalf of applicants in patent applications and, further, 
to obviate the need for filing powers of attorney 
in individual applications or patents when there has 
been a change in composition of law firms or corporate 
patent staffs. Interviews with a registered attorney 
or agent not of record will, in view of 35 U.S.C. 122, 
be conducted only on the basis of information and 
files supplied by the attorney or agent. A person acting 
in a representative capacity may not sign (A) a 
power of attorney (37 CFR 1.32(b)(4)), (B) a document 
granting access to an application (except where 
an executed oath or declaration has not been filed, and 
the patent practitioner was named in the papers 
accompanying the application papers - 37 CFR 
1.14(c)), (C) a change of correspondence address 
(except where an executed oath or declaration has not 
been filed, and the patent practitioner filed the application 
- 37 CFR 1.33(a)), (D) a terminal disclaimer 
(37 CFR 1.321(b)(1)(iv)), or (E) a request for an 
express abandonment without filing a continuing 
application (37 CFR 1.138(b)).

A power of attorney or authorization given to a registered 
Canadian patent agent, to be valid, must be 
given by the applicants, all of whom are located in 
Canada. See 37 CFR 11.6(c).

When an application for patent is filed accompanied 
by a power of attorney to a person who is neither 
registered to practice before the United States 
Patent and Trademark Office nor named as an inventor 
in the application, the Office of Initial Patent 
Examination will send the official filing receipt 
directly to the first named inventor, together with 
an explanatory letter. A copy of the letter will be sent 
to the person named in the power and a copy placed in 
the file without being given a paper number. The 
name of the unregistered person will not be added to 
the list of patent practitioners of record for the application 
in the Office’s electronic records and the examiner 
will communicate only with the applicant directly 
unless and until the applicant appoints a recognized 
practitioner.

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. 

{{Statute|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—

<p style="padding-left: +20px;">(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</p>

<p style="padding-left: +20px;">(2) To the best of the party’s knowledge, information and 
belief, formed after an inquiry reasonable under the circumstances, 
that —</p>

<p style="padding-left: +40px;">(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;</p>

<p style="padding-left: +40px;">(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;</p>

<p style="padding-left: +40px;">(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</p>

<p style="padding-left: +40px;">(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.</p>

(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 —

<p style="padding-left: +20px;">(1) Holding certain facts to have been established;</p>

<p style="padding-left: +20px;">(2) Returning papers;</p>

<p style="padding-left: +20px;">(3) Precluding a party from filing a paper, or presenting 
or contesting an issue;</p>

<p style="padding-left: +20px;">(4) Imposing a monetary sanction;</p>

<p style="padding-left: +20px;">(5) Requiring a terminal disclaimer for the period of the 
delay; or</p>

<p style="padding-left: +20px;">(6) Terminating the proceedings in the Patent and Trademark 
Office.</p>

(d)Any practitioner violating the provisions of this section 
may also be subject to disciplinary action. See § 10.23(c)(15).
|}


37 CFR 10.18(a) emphasizes that every paper filed 
by a practitioner must be personally signed by the 
practitioner, except those required to be signed by the 
applicant or party. 37 CFR 10.18(b) provides that, by 
presenting any paper to the Office, the party presenting 
such paper (whether a practitioner or nonpractitioner) 
is: (1) certifying that the statements made therein 
are subject to the declaration clause of 37 CFR 1.68; 
and (2) making the certifications required for papers 
filed in a federal court under Rule 11(b) of the Federal 
Rules of Civil Procedure. See MPEP § 410. 37 CFR 
10.18(d) provides that any practitioner violating the 
provisions of 37 CFR 10.18 may also be subject to 
disciplinary action (see 37 CFR 10.23(c)(15)), thus 
clarifying that a practitioner may be subject to disciplinary 
action in lieu of, or in addition to, the sanctions 
set forth in 37 CFR 10.18(c) for violations of 
37 
CFR 10.18. See also 37 CFR 1.4(d)(4). 

The certifications in 37 CFR 10.18(b) apply to all 
papers filed in the Office, including allegations of 
improper conduct made by a registered practitioner in 
any Office proceeding. 

{{Statute|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 
Director, for the purpose of ascertaining whether such individual 
desires to remain on the register. The name of any individual failing 
to reply and give any information requested by the Director 
within a time limit specified will be removed from the register and 
the names of individuals so removed will be published in the Official 
Gazette. The name of any individual so removed may be reinstated 
on the register as may be appropriate and upon payment of 
the fee set forth in § 1.21(a)(3) of this subchapter.
|}


See also MPEP § 1702.

===402.01 Exceptions as to Registration===

{{Statute|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 
fulfilling the provisions of § 11.7(a) and (b) may be granted limited 
recognition if the nonimmigrant alien is authorized by the 
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. 
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.
|}


Sometimes in an application naming joint 
inventors, one or more of the joint inventors
gives to the other joint inventor(s) the power of 
attorney in the application. Such power will be recognized 
even though the one to whom it is given is not 
registered. See 37 CFR 1.31 and 1.32(c)(1).

If a request for special recognition accompanies the 
application, the Office of Initial Patent Examination 
will forward the file to the Director of the Office of 
Enrollment and Discipline.

===402.02 Appointment of Associate Attorney or Agent===

Effective June 25, 2004, the associate power of 
attorney practice has been eliminated. The Office no 
longer accepts a power of attorney signed by a principal 
to name an associate power of attorney. An 
appointment of an associate power of attorney filed 
on or after June 25, 2004 will not be accepted. See 
also MPEP § 406.

===402.05 Revocation===

{{Statute|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 
revoked at any stage in the proceedings of a case by an applicant 
for patent (§ 1.41(b)) or an assignee of the entire interest of the 
applicant, or the owner of the entire interest of a patent. A power 
of attorney to the patent practitioners associated with a Customer 
Number will be treated as a request to revoke any powers of attorney 
previously given. Fewer than all of the applicants (or fewer 
than all of the assignees of the entire interest of the applicant or, in 
a reexamination proceeding, fewer than all the owners of the 
entire interest of a patent) may revoke the power of attorney only 
upon a showing of sufficient cause, and payment of the petition 
fee set forth in § 1.17(f). A patent practitioner will be notified of 
the revocation of the power of attorney. Where power of attorney 
is given to the patent practitioners associated with a Customer 
Number (§ 1.32(c)(2)), the practitioners so appointed will also be 
notified of the revocation of the power of attorney when the power 
of attorney to all of the practitioners associated with the Customer 
Number is revoked. The notice of revocation will be mailed to the 
correspondence address for the application (§ 1.33) in effect 
before the revocation. An assignment will not of itself operate as a 
revocation of a power previously given, but the assignee of the 
entire interest of the applicant may revoke previous powers of 
attorney and give another power of attorney of the assignee’s own 
selection as provided in § 1.32(b).

(b)A registered patent attorney or patent agent who has been 
given a power of attorney pursuant to § 1.32(b) may withdraw as 
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.
|}


Upon revocation of the power of attorney, appropriate 
notification is sent by the technical support staff of 
the Technology Center.

Revocation of the power of the principal attorney 
revokes any associate powers granted by him or her to 
other attorneys.

Revocation of the power of attorney becomes effective 
on the date that the revocation is RECEIVED in 
the Office (not on the date of ACCEPTANCE).

===402.06 Attorney or Agent Withdraws===

{{Statute|37 CFR 1.36. Revocation of power of attorney; withdrawal of patent attorney or agent.}}
{{Ellipsis}}
(b)A registered patent attorney or patent agent who has been 
given a power of attorney pursuant to § 1.32(b) may withdraw as 
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 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. 

===402.07 Assignee Can Revoke Power of Attorney of Applicant and Appoint New Power of Attorney===

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.

{{Statute|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:

<p style="padding-left: +20px;">(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</p>

<p style="padding-left: +20px;">(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.</p>

(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 
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.

===402.08 Application 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.

===402.09 International Application===

{{Statute|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 
fulfilling the provisions of § 11.7(a) and (b) may be granted limited 
recognition if the nonimmigrant alien is authorized by the 
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. 
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.
|}


{{Statute|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 
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.

===402.10 Appointment/Revocation by LessThan All Applicants or Owners===

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 
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.

(B) If coinventors A and B have each appointed 
their own patent practitioner, replies must be 
signed by both patent practitioners.

==403 Correspondence — With Whom Held==

{{Statute|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:

<p style="padding-left: +20px;">(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 
by the party who filed the application. If the application was filed 
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 
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.</p>

<p style="padding-left: +20px;">(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).</p>

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

<p style="padding-left: +20px;">(1) A patent practitioner of record appointed in compliance 
with § 1.32(b);</p>

<p style="padding-left: +20px;">(2) A patent practitioner not of record who acts in a 
representative capacity under the provisions of § 1.34;</p>

<p style="padding-left: +20px;">(3) An assignee as provided for under § 3.71(b) of this chapter; or</p>

<p style="padding-left: +20px;">(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.</p>

(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 
of § 1.34. Double correspondence with the patent owner or 
owners and the patent owner’s attorney or agent, or with more 
than one attorney or agent, will not be undertaken. If more than 
one attorney or agent is of record and a correspondence address 
has not been specified, correspondence will be held with the last 
attorney or agent made of record.

(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 
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).

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.

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.CUSTOMER NUMBER PRACTICE

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

(A)designate the correspondence address of a 
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 
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.

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.

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 
nonprovisional application for patent filed in the U.S. 
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.


===403.01 Correspondence Held With Associate Attorney===

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.

===403.02 Two Patent Practitioners for Same Application===

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.

==404 Conflicting Parties Having Same Patent Practitioner==

See 37 CFR 10.66.

==405 Patent Practitioner Not of Record==

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 information 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.”

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).

==406 Death of Patent Practitioner==

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 
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 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 
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.

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.

Note MPEP § 405.

==407 Suspended or Excluded Patent Practitioner==

Any power of attorney given to a practitioner who 
has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice 
before the Office or to represent applicants or patentees 
in patent matters.

See MPEP § 105.

==408 Telephoning Patent Practitioner==

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).

==409 Death, Legal Incapacity, or Unavailability of Inventor==

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.

===409.01 Death of Inventor===

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====

{{Statute|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.
|}


{{Statute|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.

===409.02 Insanity or Other Legal Incapacity===

{{Statute|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.

===409.03 Unavailability of Inventor===

{{Statute|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.
|}


{{Statute|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.
|}


{{Statute|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 Inventor Available====

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====

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====

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====

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 application 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====

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.

==410 Representations to the U.S. Patent and Trademark Office==

{{Statute|37 CFR 1.4. Nature of correspondence and signature requirements.}}
{{Ellipsis}}
(d)

<p style="padding-left: +20px;">(4) Certifications.</p>

<p style="padding-left: +40px;">(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.</p>

<p style="padding-left: +40px;">(ii) Certifications as to the signature:</p>

<p style="padding-left: +60px;">(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.</p>

<p style="padding-left: +60px;">(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.</p>

<p style="padding-left: +60px;">(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.</p>

(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.
{{Ellipsis}}
|}


{{Statute|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—

<p style="padding-left: +20px;">(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</p>

<p style="padding-left: +20px;">(2) To the best of the party’s knowledge, information and 
belief, formed after an inquiry reasonable under the circumstances, 
that —</p>

<p style="padding-left: +40px;">(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;</p>

<p style="padding-left: +40px;">(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;</p>

<p style="padding-left: +40px;">(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</p>

<p style="padding-left: +40px;">(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.</p>

(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 —

<p style="padding-left: +20px;">(1) Holding certain facts to have been established;</p>

<p style="padding-left: +20px;">(2) Returning papers;</p>

<p style="padding-left: +20px;">(3) Precluding a party from filing a paper, or presenting 
or contesting an issue;</p>

<p style="padding-left: +20px;">(4) Imposing a monetary sanction;</p>

<p style="padding-left: +20px;">(5) Requiring a terminal disclaimer for the period of the 
delay; or</p>

<p style="padding-left: +20px;">(6) Terminating the proceedings in the Patent and Trademark 
Office.</p>

(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 
lacks contradictory evidence, to admit an allegation that it 
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 
by stating that from their initial investigation they 
lack sufficient information to form a belief as to the truth 
of the allegation. If, after further investigation or discovery, 
a denial is no longer warranted, the defendant should 
not continue to insist on that denial. While sometimes 
helpful, formal amendment of the pleadings to withdraw 
an allegation or denial is not required by [Rule 11(b)].

Arguments for extensions, modifications, or reversals of 
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 
frivolous arguments. However, to the extent to which a 
litigant has researched the issues and found some support 
for its theories even in minority opinions, in law review 
articles, or through consultation with other attorneys 
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 circumstances when a practitioner provides conclusive 
statements to the Office (e.g., a statement that the 
entire delay in filing the required reply from the due 
date for the reply until the filing of a grantable petition 
pursuant to 37 CFR 1.137(b) was unintentional).

37 CFR 10.18(c) specifically provides that violations 
of 37 CFR 10.18(b)(1) may jeopardize the validity 
of the application or document, or the validity or 
enforceability of any patent, trademark registration, or 
certificate resulting therefrom, and that violations of 
any of 37 CFR 10.18(b)(2)(i) through (iv) 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: 

(A)holding certain facts to have been established; 

(B)returning papers; 

(C)precluding a party from filing a paper, or presenting 
or contesting an issue; 

(D)imposing a monetary sanction; 

(E)requiring a terminal disclaimer for the period 
of the delay; or 

(F)terminating the proceedings in the U.S. Patent 
and Trademark Office.

The Office has amended 37 CFR 1.4(d)(4) and 
10.18 with the objective of discouraging the filing of 
frivolous or clearly unwarranted correspondence in 
the Office, not to routinely review correspondence for 
compliance with 37 CFR 10.18(b)(2) and impose 
sanctions under 37 CFR 10.18(c). 

Where the circumstances of an application or other 
proceeding warrant a determination of whether there 
has been a violation of 37 CFR 10.18(b), the file or 
the application or other proceeding will be forwarded 
to the Office of Enrollment and Discipline (OED) for 
a determination of whether there has been a violation 
of 37 CFR 10.18(b). In the event that OED determines 
that a provision of 37 CFR 10.18(b) has been violated, 
the Commissioner, or the Commissioner’s designee, 
will determine what (if any) sanction(s) under 37 CFR 
10.18(c) is to be imposed in the application or other 
proceeding. In addition, if OED determines that a provision 
of 37 CFR 10.18(b) has been violated by a 
practitioner, OED will determine whether such practitioner 
is to be subject to disciplinary action (see 37 
CFR 1.4(d)(4) and 10.18(d)). That is, OED will provide 
a determination of whether there has been a violation 
of 37 CFR 10.18(b), and if such violation is by 
a practitioner, whether such practitioner is to be subject 
to disciplinary action; however, OED will not be 
responsible for imposing sanctions under 37 CFR 
10.18(c) in an application or other proceeding. 

37 CFR 10.18(d) provides that any practitioner violating 
the provisions of this section may also be subject 
to disciplinary action. 37 CFR 10.18(d) (and the 
corresponding provision of 37 CFR 1.4(d)(4)) clarifies 
that a practitioner may be subject to disciplinary 
action in lieu of, or in addition to, the sanctions set 
forth in 37 CFR 10.18(c) for violations of 37 CFR 
10.18.
{{MPEP Chapter|300|500}}