Issue 208 | June 2, 2004
USPTO Revising Power of Attorney
and Assignment Practice

Starting June 25, 2004, the U.S. Patent and Trademark Office is revising the Rules of Practice as discussed at http://www.uspto.gov/web/offices/com/sol/notices/69fr29865.pdf to require customer numbers in powers of attorney listing more than ten patent practitioners, to discontinue the use of associate powers of attorney, and to require copies or extracts of an assignment documents for recordation. Previously filed associate powers of attorney remain valid, and will continue to be effective.

As described in MPEP Section 403, so-called "Customer Number Practice" allows applicants to use either the same or different customer number(s) for the correspondence address, the fee address and/or a list of practitioners who are authorized to represent the applicant before the USPTO. The association of a list of practitioners with a Customer Number permits 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. The addition and/or deletion of a practitioner can then be made by simply changing the list of practitioners associated with the Customer Number, rather than filing of additional papers in each patent application. Although applicants will continue to be able to list individual practitioners in a power of attorney, any such list will be limited to just ten names in order to eliminate the undue processing burden on the Office.

According to the comments, "A Customer Number does not need to have only patent practitioners in a single law firm associated with it. Instead, a Customer Number can be used to list all of the patent practitioners associated with a given client and who are working together to represent the client. As a result, requiring the use of a Customer Number if more than ten attorneys are to be appointed power of attorney would not require an applicant to make the choice suggested by the comment. Furthermore, to allow any of the patent practitioners access to private PAIR, Customer Number practice must be used. All patent practitioners associated with a Customer Number do not need to be at the same address. A Customer Number can be used like a client number, with all the patent practitioners who represent the client being associated with a single Customer Number." However, only one customer number may be used for any power of attorney.

The Office does not encourage combined declarations and power of attorney. However, where a power of attorney is included as part of a declaration, and the power of attorney does not comply with these rule changes, the declaration would not be considered defective so long as the requirements of 37 CFR ยง1.63 are met. If such a combined format is used, it is recommended that the following language be inserted into the oath or declaration so that the patent practitioner will be able to take instructions from the actual client.

The undersigned hereby authorizes the U.S. attorney or agent named herein to accept and follow instructions from ________ as to any action to be taken in the United States Patent and Trademark Office regarding this application without direct communication between the U.S. attorney or agent and the undersigned. In the event of a change in the persons from whom instructions may be taken, the U.S. attorney or agent named herein will be so notified by the undersigned.

Associate power of attorney practice is being eliminated because it is deemed unnecessary in view of Customer Number practice. For those situations where an attorney who is not of record needs to take action, they can file an "Authorization to Act in a Representative Capacity" such as sample form PTO/SB/84. For example, should an examiner object to a practitioner who is not of record (without a copy of the application file) conducting an interview, the practitioner may present a fax copy of the letter signed by an attorney of record, authorizing the practitioner to conduct the interview.

Finally, the Office is moving toward uniform processing of incoming papers, with incoming papers being scanned upon receipt, electronically routed within the Office, and an appropriate reply being transmitted to applicant or his representative. With this uniform procedure, the Office will not return or retain assignment documents that have been submitted for recordation. As a result, the Office is not permitting the submission of originals of assignment documents, and, instead, is requiring that a copy or an extract of an original document be submitted. The term ''an extract of the original document'' is being added to reflect the current practice of submitting redacted copies of assignment documents, where part of an assignment document discusses matters other than assignment of interests related to a patent.

For more information on managing your intellectual property resources, contact the author of this "APLF Update," Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA and via the new "I/P Updates Blog" at http://billheinze.blogspot.com (RSS/Atom feeds).

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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