AIA Final Rules Power of Attorney March 20, 2013.

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

General POA PTO/AIA/80

3.73(c) StatementPTO/AIA/96

RecordAssignment

Power of Attorney Example #1- PTO/AIA/80

App.

Filed

Assignment

Record File

3.73(c) StatementPTO/AIA/96

Reel/Frame No.

ADSADS

ADS namingApplicant

New General POA PTO/AIA/80

Power of Attorney Example #2- PTO/AIA/80

App.

Filed

Assignment

File

3.73(c) StatementPTO/AIA/96

ADSADS

ADS namingApplicant

General POA PTO/AIA/80

Can file with App.

Record AssignmentSeparately

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

Part B

Client(Officer)

Signed

Part A

USPTO

Power of Attorney Example #4- PTO/AIA/82

Andy

Betty

Signed

Part B

Betty

Part B

AndyPart B

Signed

Part B

Part A

USPTO

Power of Attorney Example #5- PTO/AIA/82

App.

Filed File

ADSADS

ADS namingApplicant

Can file with App.

Record AssignmentSeparately

Part BPart A

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) 713-4954Email: [email protected]

AIA Final Rules

Power of Attorney

March 20, 2013

©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP