Chapter 400 provides an overview of the individuals who are legally capable of helping an inventor file a patent application. The power of attorney and the withdrawal or revocation of the power of attorney are the focus of this chapter. This chapter also covers correspondence during the prosecution of an application.

This chapter is tested a fair amount. There will probably be at least one question from each of the major topics presented within it. Pay special attention to who may sign the forms and the topic of correspondence.

402 Power of attorney
Power of Attorney
Who may patent or aid in the patenting process?
an applicant may:
file and prosecute his/her own application
the term for this is pro se
request help from a registered attorney or agent
unregistered individuals are not allowed to help an inventor file a patent application
the registered attorney or agent may appoint an associate attorney or agent (however, the associate may not appoint a further assistant)

only certain individuals may represent themselves before the Patent Office, these include:
the inventors themselves
one representative inventor
registered patent attorneys or agents in good standing
firms can never be given the power of attorney, only individuals
an appointed agent or attorney may appoint another agent or attorney (an associate)
the power of attorney may fill out and even sign many of the patent related documents required during the prosecution of an application
for instance, the power of attorney can execute a disclaimer or terminal disclaimer

Proper signatures:
every paper filed by the practitioner must be personally signed by the practitioner (except in the few cases where the applicant's signature is required)
a signature constitutes a representation to the PTO that the signer is authorized to represent the particular party in whose behalf he or she acts
this privilege applies whether or not the registered attorney is of record (such as when the power of attorney is one of the inventors)

Joint filing:

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.

if there is joint inventorship:
one coinventor may give the other inventor the power of attorney (this is acceptable even though the coinventor is not a registered patent attorney or agent) through a request for special recognition

Revoking or withdrawing power of attorney:
The power of attorney may be revoked by the applicant, or the registered practitioner may withdraw his or her power of attorney.

§§ 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. 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 by fewer than the assignee of the entire interest of the applicant) may only revoke the power of attorney upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(h). A registered patent attorney or patent agent 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.

Customer Number: this number is used to designate the correspondence address of a patent application or patent for purposes of correspondence, fees, and to associate the power of attorney for the application.

A power of attorney may only name as representative:
one or more joint inventors;
registered patent practitioners associated with a Customer Number;
or 10 or fewer registered patent practitioners.

A power of attorney that names more than 10 patent practitioners will only be entered if Customer Number practice is used or if such power of attorney is accompanied by a separate piece of paper indicating which 10 patent practitioners named are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.

Revoking the power of attorney:
the power of attorney or authorization of an agent may be revoked whenever the inventor wishes to do so:
the power of attorney may be revoked for any reason
revocation of the power of principal attorney or agent revokes the powers granted by him or her to other attorneys or agents
all the owners of a patent application must sign the papers giving or revoking the power of attorney
if coinventor A signed, the revocation form will be invalid if B did not sign it (both A and B must sign the revocation forms)
if A and B each have their own attorney, all replies must be signed by both attorneys
it is possible for one inventor from a joint inventorship to revoke the power of attorney,
in this case, the following are required:
a petition giving good and sufficient reason to explain the missing signature
the required fee

an assignee may:
revoke power of attorney
exclude the inventor from access to the patent

an assignment will not itself operate as a revocation of a power or authorization previously given

an assignee of record may revoke the power of attorney unless an "irrevocable right to prosecute has been given"
some government affiliations will give permanent power of attorney to a registered practitioner

the revocation will become effective the date it is received by the PTO

all the owners of a patent application must sign the papers giving or revoking the power of attorney

the submission may be signed by an individual in an organization having the apparent authority to sign on behalf of the organization, such as:
an officer
a President or other such office with authority
a registered practitioner

Withdrawing the power of attorney:
the attorney must request to withdraw and obtain permission from the PTO

the withdrawal is only effective once approved:
it is not effective just because it has been sent or even when it is received, it must first be approved
each attorney of record must sign the notice of withdrawal

the attorney or agent may withdraw from his or her duties by sending in a notice of withdrawal and gaining approval by the Commissioner

a patent attorney or agent must withdrawal his or her power of attorney at least thirty days before the last possible date for any required response

403 Correspondence with whom held

§ 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 registered patent attorney or patent agent, or with more than one registered patent attorney or patent agent except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will establish one as the correspondence address and will use the address associated with a Customer Number, if given, over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
(1) Prior to filing of § 1.63 oath or declaration by any oldie 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 registered attorney or agent, any other registered practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any registered 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.
(2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
(1) A registered patent attorney or patent agent of record appointed in compliance with § 1.32(b);
(2) A registered patent attorney or patent agent not of record who acts in a representative capacity under the provisions of § 1.34;
(3) An assignee as provided for under § 3.71(b) of this chapter; or
(4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the attorney or agent of record (see § 1.32(b)) in the patent file at the address listed on the register of patent attorneys and agents maintained pursuant to §§ 11.5 and 11.11 of this subchapter, or, if no attorney or agent is of record, to the patent owner or owners at the address or addresses of record. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions 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.

Powers of attorney naming one or more individual, or all registered patent practitioners associated with a Customer Number:
as a rule, firms can never be granted the power of attorney, only individuals;
for a power of attorney to be valid, the attorney or agent appointed must be registered to practice before the USPTO;
if more than one correspondence address is specified in a single document, the PTO will use the address associated with a Customer Number over a typed correspondence address;
a registered patent practitioner listed as power of attorney is no longer able to appoint an associate agent or attorney.

Who will correspondence be held with?
all correspondence will be held with whomever has been given the power of attorney

the application must have a correspondence address specified in an application data sheet or elsewhere in any papers submitted with an application filing in a clearly identifiable manner

double correspondence will not be undertaken (for example, an applicant and an attorney or even two attorneys)
if the registered attorney or agent appoints an associate, the patent office will only communicate with the associate attorney unless told otherwise

all notices and official letters for the patent owner in a reexamination proceeding will be directed to the attorney or agent of record in the patent file at the address listed on the register of patent attorneys and agents

powers of attorney to firms filed in executed applications filed after 7/02/71 are not recognized by the PTO
however, a current firm's address will be considered to be the correspondence address in instances where it is applicable

Rules for correspondence:
if there was no oath submitted with the application, the following individuals may change the correspondence address:
only the inventor who filed the application, even if more than one inventor was identified on the application transmittal letter
any registered practitioner named in the transmittal papers accompanying the original application
the party that will be the assignee (if they filed the application)

a change of correspondence address or a document granting access 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

Missing Inventor

409 Death, legal incapacity or unavailability of inventor

§§ 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).

An application may be filed and prosecuted by the heirs, administrators or assignees of the inventor. A new power of attorney is necessary (the original power of attorney will be terminated in cases where the inventor is deceased). The heirs of a deceased inventor should identify themselves as the legal representatives of the deceased inventor in the oath or declaration submitted under 37 C.F.R. 1.63

Rules for a missing signature of an inventor when at least one joint inventor is available:
if an inventor refuses to sign the oath or declaration or is unavailable:
all available inventors must make an oath or declaration on their own behalf and make an oath or declaration on behalf of a nonsigning joint inventor;
the application must be accompanied by proof that the nonsigning inventor cannot be found or refuses to sign;
the last known address of the nonsigning inventor must be listed.

the fact that an inventor is hospitalized is not an acceptable reason for filing under 37 C.F.R. 1.47:
however, 37 C.F.R. 1.43 may be available in such circumstances
petitions filed under 37 C.F.R. 1.47 are decided by the Office of Petitions
if the inventor is dead, insane or otherwise legally incapacitated, the application can made on the original applicant's behalf and:
a Notice of Allowance will be granted even if a death occurs
the heirs of a deceased inventor should identify themselves as the legal representatives of the deceased inventor in the oath or declaration submitted under 37 C.F.R. 1.63 a certificate from a court indicating that they are all heirs is no
longer necessary in these circumstances

the legal representative of a deceased inventor must submit an oath or declaration in compliance with 37 C.F.R. 1.63 stating that he or she is the legal representative of the deceased inventor and should provide his or her residence, citizenship and post office address

an application may be made by the heirs of the inventor

if a death of an inventor has occurred, the executor or the administrator must sign the declaration in the signature block of the deceased inventor
proof of the authority of the legal representative of the deceased inventor is no longer required

an assignment does not relieve each live inventor from the statutory requirements to sign the declaration and for the executor or administrator to sign the declaration under 35 U.S.C. 117

if a signing field is left blank by an inventor, the application will be treated as having been completed by the other inventors on behalf of the nonsigning inventor

a minor may sign an oath or declaration under 37 C.F.R. 1.63 as long as he or she understands the document that he or she is signing

a Chief Executive Officer as an officer of a corporation may sign the necessary oath or declaration under 37 C.F.R. 1.63 on behalf of the corporation as the 37 C.F.R. 1.47(b) applicant

Rules for a missing signature of an inventor:
if an inventor refuses to sign the oath or declaration or is unavailable, the following may sign:
another inventor
an assignee
a person demonstrating proprietary interest

in addition to the proper signature, the following is necessary:
a petition including the last known address of the inventor (a notice will be forwarded to the missing inventor)
the required fee

410 Representations to the Patent and Trademark Office
separate verification statements are no longer needed for small entities, English translations, petitions to make special, or claims for foreign priority