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  1. 1. USE OF GENERAL POWERS Samson Helfgott KMZ Rosenman New York, NY IP Practice in Japan Committee AIPLA Mid-Winter Institute January, 2005
  2. 2. Existing Situation <ul><li>Use of combined Declaration and Power of Attorney form signed by all inventors. </li></ul><ul><li>In the form are listed all attorneys by name within the law firm. </li></ul><ul><li>Use of Associate Powers of Attorney for adding additional attorneys </li></ul><ul><li>Where inventors worked for a corporation all inventors signed Assignment form to corporation. </li></ul>
  3. 3. Rule Changes (May 2004) <ul><li>Can only list up to 10 attorneys in a Power of Attorney. </li></ul><ul><li>Can list Customer Number in Power of Attorney instead of names to include all attorneys associated with this Customer Number. </li></ul><ul><li>No more use of Associate Power of Attorney. Must either add names of new attorneys to list associated with Customer Number or must get a new Power of Attorney naming him. </li></ul><ul><li>An attorney not listed in Customer Number list or not listed in a Power of Attorney can still sign documents in a “representative capacity” but can not: change the correspondence address, expressly abandon an application or sign a terminal disclaimer. </li></ul>
  4. 4. Use of General Powers <ul><li>An assignee can give a General Power of Attorney to a lawyer or firm and list their Customer Number. </li></ul><ul><li>Each time you file a new case you submit a copy of the General Power of Attorney. </li></ul><ul><li>You also submit a Statement under 37 CFR 3.73(b) concerning ownership. This can be signed by a lawyer if authorized to do so by the assignee. </li></ul><ul><li>The inventor only signs a Declaration for Patent Application form (without Power of Attorney). </li></ul>
  5. 5. Operating Under New Rules (for corporate filing) <ul><li>For each new application, we need: </li></ul><ul><ul><li>Declaration for Patent Application form executed by all inventors. </li></ul></ul><ul><ul><li>Assignment of patent Application form executed by all inventors. </li></ul></ul><ul><li>For each new application, we would then file: </li></ul><ul><ul><li>Declaration for Patent Application form executed by all inventors. </li></ul></ul><ul><ul><li>Assignment of Patent Application form executed by all inventors. </li></ul></ul><ul><ul><li>A copy of the General Power of Attorney executed by assignee. </li></ul></ul><ul><ul><li>A Statement Under 37 CFR 3.73(b) prepared and signed by attorney. </li></ul></ul>
  6. 6. Benefit of New Changes <ul><li>Use of Customer Number - </li></ul><ul><ul><li>Can add and delete attorneys’ names from one list and will apply to all cases on which customer number is used. </li></ul></ul><ul><li>Use of Declaration without Power and Assignee signs Power </li></ul><ul><ul><li>Resolves ethical issue of who does US attorney really represents. When inventor signs Power, is attorney really representing inventor? or assignee? What if a conflict arises? </li></ul></ul><ul><li>Use of General Power </li></ul><ul><ul><li>Easier to handle work from a corporation. </li></ul></ul>
  7. 7. Additional Notes <ul><li>Old combined Declaration and Power of Attorney form signed by inventor is still accepted. However, you should still use Customer Number on this form. </li></ul><ul><li>Only available Japanese translation is of old combined Declaration and Power of Attorney form. USPTO has not yet translated the Declaration form alone. </li></ul><ul><li>Note that original Assignment documents may no longer be submitted. Only copies (or digitized images) can be filed. </li></ul>
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  12. 12. Contact Information for Samson Helfgott Director of Patents KMZ Rosenman 575 Madison Ave. New York, N.Y., 10022 (212) 940-8683 [email_address] Disclaimer: This presentation does not constitute any specific legal or business advice.