Power of Attorney

Power of Attorney: A patent application is a techno-legal document by virtue of which the patent owner gets an exclusive protection right, thereby preventing others from making, using, offering for sale, and importing the invention. So, to make optimum utilization of this right, one should also have a “strong” patent, which cannot only sustain the prosecution stage but throughout its entire term. This is only possible with an attorney or an agent (patent practitioner) who is well versed with the nuances of patent law and who can take prompt strategic actions to get you a broad patent without giving up too much. This is where the power of Lawyer requisites come handy.

A Power of Attorney is a written authorization given by an applicant, as mentioned in 37 CFR 1.32, which allows a representative to act and sign on the applicant’s behalf on the patent application in front of the Patent Office. A power of attorney may name as representative: one or more joint inventors; up to 10 registered patent agents/attorneys; or a list of registered patent practitioners associated with a common Customer number. In cases where the power of attorney names more than 10 registered patent practitioners, this should be accompanied by a separate document listing the names of 10 practitioners, which would be recognized by the Patent Office, failing which these will not be mentioned on the record. Such a document can be authorized by one of the attorneys/agents of record, the agent acting in a representative capacity, the assignee or by all the applicants. One should know that the power of lawyer cannot be issued to both a list of practitioners and to a Customer number.

The applicant must authorize a power of attorney. In case, the Assignee who is not the applicant (say, in re-issue application) he must appoint any power of attorney only in compliance with 37 CFR 3.71 and 3.73, which gives the Assignee the right over the patent application. On the other hand, if joint inventors are the applicants, then the authorization must be provided by all the joint inventors. This holds true in case of a continuing patent application claiming priority from other national patent applications. In this situation, if there is any additional inventor(s) who was not the inventor(s) in the parent application, separate power of Lawyer must be obtained from her. Else, if the inventors are the same for the continuing application as in parent application, then the earlier submitted power of attorney can be provided for the continuing application, and it will have the same effect.

As authorized, a power of attorney enables a patent practitioner to act on the applicant’s behalf. This ensures smooth patent prosecution as the PTO has one point correspondence with which communication happens. Generally, a customer/registration number is associated with a group of/an individual patent practitioner, which contains the address of correspondence. Since USPTO does not entertain dual correspondence, hence it is of utmost importance to provide correct details while submitting ADS (Application data sheet) or a power of attorney. A Customer Number is a unique number associated with either one or a group of patent practitioners that may be used to designate a correspondence address, a fee address, or a power of attorney. This customer number allows the applicant or the representative of the applicant access to private PAIR to know the status of the application.

Moreover, a power of attorney can also be granted to a registered patent attorney or patent agent not of record to act in a representative capacity, subject to certain pre-requisites, by virtue of which she can represent only in the patent application or the related patent applications specified thereto.

Having said that, a power of attorney can be issued, amended, or revoked anytime during the prosecution stage by the applicant as the need be on submission of proper documents to the PTO. Also, an inventor or joint inventors, who are the applicants, may choose to prosecute their patent applications together or allow a few among themselves to do so, without them being a registered patent practitioner. However, this is not a perfect practice in the larger interest as patent prosecution is a time-sensitive process, wherein arguments put forth during the prosecution can also limit the scope of a patent application even if the patent is granted. Hence, it is advisable to weigh all options before making any decision in this respect.

Resource:
1. 37 CFR 1.32 Power of Attorney; Naming Representative
https://www.uspto.gov/web/offices/pac/mpep/s402.html

2. 37 CFR 3.71 Prosecution by Assignee.
https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#aia_d0e336679

3. Clarification of Power of Attorney Practice, USPTO
https://www.uspto.gov/patent/patents-announcements/clarification-power-attorney-practice

4. Power of Attorney and Correspondence Address Indication Form, USPTO
https://mpep.uspto.gov/RDMS/MPEP/graphics/E8r8/402-1.png

Keywords:

Power of Attorney, patent, attorney, patent agent, patent practitioner, PTO, USPTO, patent office, representative capacity.