AIA Final Rules Power of Attorney March 20

AIA Final Rules Power of Attorney March 20, 2013

Power of Attorney

Power of Attorney • Why file a Power of Attorney? – Allows the firm access to applications before publication § Important for status checks at the USPTO – Helps out attorneys with interviews – Terminal disclaimers

Power of Attorney • Original applicant filing the application is presumed to be the owner (not the inventors), unless later assigned. 37 CFR 3. 73(a) – ADS names the “Applicant” then they are presumed to be the owner and the patent will issue to them • Statement Under 3. 73(b) is now 3. 73(c)

Power of Attorney • Two Ways to Accomplish: 1. General POA (PTO/AIA/80) + 37 CFR 3. 73(c) Statement (PTO/AIA/96) 2. Transmittal For Power of Attorney (PTO/AIA/82) - Part A- Transmittal Identifying the Application - Part B- Power of Attorney

Power of Attorney- PTO/AIA/80 • Way #1 File: – General Power of Attorney (PTO/AIA/80) § Signed by Applicant- e. g. , Company Officer – 37 CFR 3. 73(c) Statement (PTO/AIA/96) § Signed by either: - Attorney/Practitioner Identified on AIA/80 - Applicant- e. g. , Company Officer – Assignment § Record ahead of filing Power of Attorney; OR § Attach copy of Assignment & Record Same Day

Power of Attorney- PTO/AIA/80 Record Assignment General POA PTO/AIA/80 3. 73(c) Statement PTO/AIA/96

Power of Attorney Example #1 - PTO/AIA/80 Reel/Frame No. Record Filed App. ADS Assignment ADS naming Applicant New 3. 73(c) Statement PTO/AIA/96 General POA PTO/AIA/80

Power of Attorney Example #2 - PTO/AIA/80 Record Assignment Separately Filed App. Can file with App. File ADS Assignment General POA 3. 73(c) Statement ADS naming PTO/AIA/96 PTO/AIA/80 Applicant

Power of Attorney- PTO/AIA/82 • Way #2 File: – Power of Attorney (PTO/AIA/82) § Part A- Transmittal for Power of Attorney - Signed by Attorney/Practitioner, OR - Signed by Applicant (e. g. , Company Officer) § Part B- Power of Attorney by Applicant - Signed by Applicant (e. g. , Company Officer) – Assignment- Still Need to Record to Establish Assignee as the Applicant

Power of Attorney- PTO/AIA/82 • Transmittal (Part A) • Fill in Application Information – Can leave Application Information blank if filed with application • Signed by: – Applicant, – Patent Attorney, or – Patent Agent.

Power of Attorney- PTO/AIA/82 • Power of Attorney (Part B) • Signed by Applicant – Company Officer § President § Treasurer § Secretary, etc. – Inventor

Power of Attorney- PTO/AIA/82 • Power of Attorney (Part B) • Apparently, the USPTO allows you to “recycle” Part B forms and use them for other applications – Just need to update Part A for each application

Power of Attorney- PTO/AIA/82 • When to Use PTO/AIA/82 Form (Way #2) – Want to establish Power of Attorney with the filing of the application- assignments might take a while to get signed. – Multiple inventors or assignees not wanting to assign to the same company • Issues – Need to have the correct box checked – Still need to record the assignments

Power of Attorney Example #3 - PTO/AIA/82 Signed Client (Officer) Part BA Part USPTO

Power of Attorney Example #4 - PTO/AIA/82 Signed Part B Betty Part B Andy Part B A Part B Betty Signed Andy USPTO

Power of Attorney Example #5 - PTO/AIA/82 Record Assignment Separately Filed App. Can file with App. File ADS naming Applicant Part A Part B

Power of Attorney- Continuing Applications • Allowed to use parent POA if you supply a copy of the parent POA – Exception: POA by inventor and CON/DIV names an inventor not in the parent – 37 CFR 1. 32(d) p. 32 • Lose POA if you add a new inventor without POA from new inventor – 37 CFR 1. 32(e) p. 32

More Information and Questions… • Contact: Chuck Schmal Phone: (317) 713 -4954 Email: cschmal@uspatent. com

AIA Final Rules Power of Attorney March 20, 2013 © 2013 Woodard, Emhardt, Moriarty, Mc. Nett & Henry LLP