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  1. 1. Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations 29865 to-navigation position. Navigation at the before this date will continue to be attorney, or appointment of a new site of the bridge consists mainly of effective. power of attorney would not need to be tows with barges and some recreational FOR FURTHER INFORMATION CONTACT: filed in each patent application if a pleasure craft. Due to prior experience, Karin Ferriter ((703) 306–3159) (Office Customer Number Data Change Request as well as coordination with waterway of the Deputy Commissioner for Patent (PTO/SB/124) is filed. As a result, if a users, it has been determined that this Examination Policy), Mary Hannon patent attorney or patent agent is to closure will not have a significant effect ((703) 308–8910, ext. 137) (Office of the begin to represent a client, or is on these vessels. No alternate routes are Commissioner for Trademarks), or discontinuing representation of a client, available. The bridge will be able to Robert J. Spar ((703) 308–5107) (Office on a particular set of applications, and, open for emergencies. of the Deputy Commissioner for Patent if the power of attorney for that set of In accordance with 33 CFR 117.35(c), Examination Policy), directly by phone, applications was originally to the patent this work will be performed with all due or by facsimile to (703) 872–9411, or by practitioners associated with a Customer speed in order to return the bridge to mail addressed to: Mail Stop Number, then the list of patent normal operation as soon as possible. Comments—Patents, Commissioner for practitioners associated with the This deviation from the operating Patents, P.O. Box 1450, Alexandria, VA Customer Number should be changed to regulations is authorized under 33 CFR 22313–1450. reflect the addition or deletion. When 117.35. Customer Number practice is used, a SUPPLEMENTARY INFORMATION: A purpose Dated: May 13, 2004. separate document does not need to be of this final rule is to limit the number Marcus Redford, filed by applicant for each application of patent practitioners that a patent in which the list of practitioners Bridge Administrator. applicant, or an assignee of the patent associated with the Customer Number is [FR Doc. 04–11893 Filed 5–25–04; 8:45 am] applicant, can name in a power of to be changed; only one Customer BILLING CODE 4910–15–P attorney. If more than ten registered Number Data Change Request is patent attorneys or registered patent required to eliminate any patent agents are to be appointed, then the practitioners who should no longer be DEPARTMENT OF COMMERCE Office’s Customer Number practice must associated with the Customer Number. be used. This change is necessary to Alternatively, a new power of attorney Patent and Trademark Office eliminate the undue processing burden to a list of patent practitioners or to the on the Office when a power of attorney patent practitioners associated with a 37 CFR Parts 1, 3 and 5 naming more than ten patent different customer number may be filed [Docket No.: 2003–P–019] practitioners is submitted in patent in each application in which the power applications. In addition, a purpose of of attorney should be changed. RIN 0651–AB63 this final rule is to eliminate the The rules pertaining to power of associate power of attorney practice in attorney are revised to reflect Customer Revision of Power of Attorney and patent cases. An associate power of Assignment Practice Number practice, a practice wherein an attorney is not necessary for a patent applicant or an assignee of the entire AGENCY: United States Patent and practitioner to take most actions in a interest of the applicant in a patent Trademark Office, Commerce. patent application. Instead of filing an application can give power of attorney ACTION: Final rule. associate power of attorney, a patent to a list of registered patent practitioners practitioner can file an ‘‘Authorization associated with a Customer Number. SUMMARY: The United States Patent and to Act in a Representative Capacity’’ See Manual of Patent Examining Trademark Office (Office) is revising the (note the sample form posted on the Procedure (8th ed. 2001) (Rev. 1, Feb. rules of practice to allow for more Office’s Internet Web site at: http:// 2003) (MPEP), Section 403, for a efficient processing of powers of www.uspto.gov/web/forms/sb0084.pdf). description of Customer Number attorney and assignment documents Another purpose of this final rule is to practice. The rules are also revised to within the Office. For example, the eliminate an original assignment explain the requirements of a power of Office will require applicants to use the document from the list of documents attorney and to limit the number of Office’s Customer Number practice if that may be submitted for recordation. practitioners who may be given a power more than ten registered patent This is because the Office shall no of attorney without using Customer practitioners are to be made of record. longer be returning assignment Number practice. Furthermore, the In addition, the Office is eliminating documents after they have been scanned patent rules are amended to discontinue some mail stops (i.e., CPA, Provisional into the Office’s electronic assignment the ‘‘associate’’ power of attorney Patent Application) that were found not database, and any assignee that submits practice, to clarify the procedures be useful in routing correspondence the original assignment document will related to revocation of power of within the Office, and creating a new be unable to retrieve the document. attorney, and to clarify how a registered mail stop (Licensing and Review) to The Office provides for the use of a practitioner may sign a document in a assist the Office in the proper routing of Customer Number to identify either an representative capacity. national security classified and secrecy address for patent-related Documents affecting the title to a order papers. Finally, because the Office correspondence, or a set of patent patent or trademark property (e.g., is discontinuing the current Office attorneys and agents who may be assignments, or security interests) are practice of returning patent and identified with a patent application as currently recorded in the Office’s trademark assignment documents patent practitioners of record. Customer assignment database, upon submission submitted by mail for recording in the Number practice permits the of the document with the appropriate assignment database, only copies of correspondence or fee address, or the cover sheet and the fee required by 35 assignment documents may be list of practitioners of record to be easily U.S.C. 41(d)(1). In addition, Government submitted for recording in the Office’s changed in a large number of patent Interests are recorded, upon submission Assignment records. applications by filing a single request of the document, as required by DATES: Effective Date: June 25, 2004. for Customer Number data change. A Executive Order 9234 of February 18, Any associate power of attorney filed separate revocation of power of 1944 (9 FR 1959, 3 CFR 1943–1948 VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00017 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  2. 2. 29866 Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations Comp., p. 303). Since 1995, assignment routing of correspondence within the ‘‘Power of attorney’’ is defined in documents have been recorded in the Office. paragraph (a)(1) of § 1.32 as a written Office’s Assignment database without Section 1.12: Section 1.12(b) is document by which a principal stamping or otherwise marking the amended to replace ‘‘has not been designates a registered patent attorney document that was submitted for published under 35 U.S.C. 122(b) are or a registered patent agent (collectively recordation. The automated system that not available to the public’’ with ‘‘is ‘‘patent practitioner’’) to act on his or receives documents for recordation open to the public pursuant to § 1.11 or her behalf. assigns the reel and frame number to the for which copies or access may be ‘‘Principal’’ is defined in paragraph document and places the recordation supplied pursuant to § 1.14, are (a)(2) of § 1.32 as either the applicant for stampings on the images that are stored available to the public’’ in order to patent (§ 1.41(b)) or the assignee of the in the automated system. The Office is clarify the assignment records that are entire interest of the applicant, and the increasing the integrity of its internal available to the public. Section 1.12(b) entity who executes a power of attorney patent application record maintenance is further amended to provide that designating one or more agents to act on by adopting a new electronic data copies of any such assignment records his or her behalf. An appointment by processing system for the storage and and related information that are not fewer than all of the applicants, or maintenance of all the records available to the public shall be assignees of the entire interest of the associated with patent applications. The obtainable only upon written authority applicants requires a petition under new system includes the process of of the applicant or applicant’s assignee, § 1.183 to waive the requirement of scanning all incoming papers to create patent attorney, or patent agent or upon § 1.32(b)(4) that the applicant, or the an image file of the papers associated a showing that the person seeking such assignee of the entire interest of the with patent applications. Papers that are information is a bona fide prospective or applicant sign the power of attorney. scanned are stored, and then destroyed actual purchaser, mortgagee, or licensee The term ‘‘patentee’’ has not been according to a record retention of such application, unless it shall be included in this definition because use schedule. Consistent with this new necessary to the proper conduct of of the term ‘‘patentee’’ would make the practice, the Office will discontinue the business before the Office or as rule unnecessarily complicated. practice of returning assignment provided in part 1. Although the term ‘‘patentee’’ often is a documents that were mailed to the As revised, § 1.12(b) more clearly reference to the assignee, the patentee Office, and will require assignment provides, for example, for an could also be the inventors, or if an documents to be submitted on 81⁄2 by application that is relied upon under 35 inventor is deceased or legally 11-inch paper (21.6 by 27.9 cm) (‘‘letter U.S.C. 120 in an application that has incapacitated, the inventors and the size’’) or DIN size A4 (21.0 by 29.7 cm). issued as a patent, any assignment legal representative of such an inventor. records relating to the parent To assist applicants in identifying the application could be considered to An inventor who could not be reached application or patent to which a Notice relate to the patent. Before the or refused to join in the filing of a patent of Recordation relates, the Notice has amendment to § 1.12(b), the text of the application would not be an applicant been revised to reflect the title of the rule suggested that the assignment as set forth in § 1.41(b), but would still invention and docket number stored in records for the parent application were be a patentee, but once a patent has the Office’s electronic records, if the not available to the public. This was not issued, the signature of the nonsigning notice of recordation is for a single the intended construction, and was inventor should still not be required on property (application or patent). Any inconsistent with MPEP § 301.01. As any power of attorney. Accordingly, the docket number included on the revised § 1.12(b) provides that the term ‘‘patentee’’ does not necessarily Assignment Cover sheet will only be assignment records for the parent reference the same group of individuals used in the Office’s electronic financial application of a patent, or an as the term ‘‘applicant’’ and has not records for purposes of processing the application that has published under 35 been used in the rules so that the recordation fee, but will not be entered U.S.C. 122(b), are open to public applicant, not necessarily the patentee, into other electronic records for the inspection. could change the power of attorney, for patent or patent application. Section 1.31: Section 1.31 is amended example, in an application that has to revise the title to refer to ‘‘registered issued as a patent. Discussion of Specific Rules patent attorney or patent agent’’ and to ‘‘Revocation’’ is defined in paragraph The Office is amending sections of introduce the term ‘‘power of attorney.’’ (a)(3) of § 1.32 as the cancellation by the 1.1, 1.12, 1.31, 1.33, 1.34, 1.36, 1.53, Section 1.31 is also revised to add principal of the authority previously 1.363, 3.1, 3.21, 3.24, 3.25, 3.27, 3.31, ‘‘United States’’ before ‘‘Patent and given to a registered patent attorney or 3.34, 3.41, 3.81, and 5.1 of title 37 of the Trademark Office’’ in the definition of registered patent agent to act on his or Code of Federal Regulations (CFR), and ‘‘Office’’ to properly reflect the current her behalf. adding new § 1.32 to title 37 CFR. name of the Office in the rule. See 35 ‘‘Customer Number’’ is defined in Section 1.1: Section 1.1(a)(4)(i) is U.S.C. 1(a). paragraph (a)(4) of § 1.32 to be a number amended to add ‘‘submitted by mail’’ Section 1.32: New § 1.32 sets forth that may be used to: (i) Designate the and to delete ‘‘or under § 3.81 of this definitions related to power of attorney. correspondence address of a patent chapter’’ to require that assignments Section 1.32 does not apply to power of application or patent such that the submitted by mail contemporaneously attorney in an international application correspondence address for the patent with a request to issue a patent to an (§ 1.455). The terms ‘‘power of application or patent would be the assignee be sent to Mail Stop attorney,’’ ‘‘principal,’’ ‘‘revocation,’’ address associated with the Customer Assignment Recordation Services and ‘‘Customer Number’’ are defined, Number; (ii) designate the fee address instead of Mail Stop Issue Fee in order and the requirements for a power of (§ 1.363) of a patent by a Customer to more efficiently direct assignment attorney are set forth. The term ‘‘patent Number such that the fee address for the documents. Section 1.1 is also amended practitioner’’ is not separately defined, patent would be the address associated to remove paragraph (f). The Office has but is a collective reference to a with the Customer Number; and (iii) determined that Mail Stop Provisional registered patent attorney or registered specify, in a power of attorney, that each Patent Application is not useful in the patent agent. of the patent practitioners associated VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00018 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  3. 3. Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations 29867 with a Customer Number have a power paper filed pursuant to § 1.32(c)(3). If address, and the declaration gives a of attorney. more than ten patent practitioners are different address (i.e., the address Section 1.32(b) sets forth the listed on a power of attorney, and no associated with a Customer Number) as requirements for a power of attorney, separate paper under § 1.32(c)(3) is the correspondence address, the Office other than a power of attorney in an filed, then no patent practitioners will will use the typed correspondence international application (see § 1.455 for be made of record. If a separate paper address as included on the ADS. In the the power of attorney in an international is not provided and a patent practitioner experience of the Office, the ADS is the application and note that Customer later attempts to sign a batch update most recently created document and Number practice cannot be used in an request to request that the address tends to have the most current address. international application). To comply associated with the Customer Number After the correspondence address has with § 1.32(b), the power of attorney, in be used for the correspondence address been entered according to the above an application other than an and/or the fee address for the patent procedure, it will only be changed international application, must: (1) Be applications listed on the spreadsheet pursuant to § 1.33(a)(1). in writing; (2) name one or more (see Notice of Elimination of Batch A Customer Number merely provided representatives in compliance with (c) Update Practice to Change Power of in correspondence without an of this section; (3) give the Attorney, 1272 Off. Gaz. Patent Office instruction to use the Customer Number representative power to act on behalf of Notices 24 (July 1, 2003)), the request for the correspondence address or for the principal; and (4) be signed by the will be rejected because the patent any other purposes, e.g., a Customer applicant for patent (§ 1.41(b)) or the practitioner is not of record. Applicant Number that is adjacent the heading of assignee of the entire interest of the may then submit a newly executed the paper, is not a specific direction to applicant. Furthermore, pursuant to power of attorney complying with use the Customer Number for any § 1.32(c), a power of attorney may only § 1.32, or submit a copy of the purpose. name as representative: (1) One or more previously filed power of attorney Section 1.33(b)(1) is revised to change joint inventors (§ 1.45); (2) those accompanied by a separate paper the reference from § 1.34(b) to new registered patent practitioners indicating which ten practitioners are to § 1.32(b). associated with a Customer Number; or be made of record pursuant to Section 1.33(b)(2) is revised to change (3) ten or fewer registered patent § 1.32(c)(3). § 1.34(a) to § 1.34 to be consistent with attorneys or registered patent agents (see Customer Number practice allows the the revision to § 1.34. § 10.6 of this subchapter)(patent Office to enter a single five or six digit Section 1.33(c) revised to change the practitioners). Except as provided in number into the Office computer system cross-reference to § 1.32(b) instead of § 1.32(c)(1) or (c)(2), the Office will not instead of a large number of patent § 1.34(b) and to change the reference to recognize more than ten patent practitioners and is a more appropriate § 1.34(a) to § 1.34 to be consistent with practitioners as being of record in an use of Office resources than continuing the revision to § 1.34. application or patent. If a power of to permit applicants to give a power of Section 1.34: Section 1.34 is revised attorney names more than ten patent attorney to an unlimited number of to change the title to ‘‘Acting in a practitioners, such power of attorney practitioners. See MPEP § 403. Representative Capacity.’’ The must be accompanied by a separate Section 1.33: Section 1.33(a) is paragraph designation for paragraph (a) paper indicating which ten patent revised to reflect Customer Number and ’’, pursuant to § 1.31,’’ are deleted. practitioners named in the power of practice. If applicant provides, in a In addition, ‘‘the registered patent attorney are to be recognized by the single document, both a complete typed attorney or patent agent should specify Office as being of record in application address and a Customer Number and his or her registration number with his or patent to which the power of attorney requests that both be used for the or her signature’’ is changed to ‘‘the is directed. correspondence address, the address registered patent attorney or patent New § 1.32(c)(3) sets a limit on the associated with the Customer Number agent must specify his or her name and number of patent practitioners who can will be used. Section 1.33(a) is revised the registration number with his or her be given a power of attorney without to include the following sentence: ‘‘If signature.’’ When a registered patent using Customer Number practice more than one correspondence address attorney or patent agent acts in a because it is extremely burdensome for is specified in a single document, the representative capacity, it should be the Office to manually enter a long list Office will establish one as the clear who is signing the paper. Because of patent practitioners, particularly correspondence address and will use signatures are not always legible and where the same list of patent the address associated with a Customer because sometimes the wrong practitioners is to be entered for a large Number, if given, over a typed registration number is given, it is number of applications, and to update correspondence address.’’ Applicants necessary for the registered patent that listing. Applicants desiring to will often specify the correspondence attorney or agent to include his or her appoint a large number of patent address in more than one paper that is name so that the identity of the person practitioners may continue to do so, but filed with an application, and the who is acting in a representative Customer Number practice will be address given in the different places capacity may be identified. required in order to have more than ten sometimes conflicts. Where the Paragraph (b) of § 1.34 is deleted. patent practitioners recognized by the applicant specifically directs the Office With Customer Number practice, the Office as being of record and reflected to use a correspondence address in more associate power of attorney practice set in Office computer systems. See than one paper, priority will be forth in § 1.34(b) is no longer necessary § 1.32(c)(2). accorded to the correspondence address because once power of attorney is given If more than ten patent practitioners specified in the following order: (1) to the patent practitioners associated have been named in a combined Application data sheet (ADS); (2) with a Customer Number, the list of declaration and power of attorney (e.g., application transmittal; (3) oath or patent practitioners of record may easily from an earlier filed application (see declaration (unless power of attorney is be changed. Additionally, for a patent § 1.63(d)(1)(iv))), then the Office of more current); and (4) power of practitioner to have the most Initial Patent Examination will enter the attorney. Accordingly, if the ADS information with which to represent his practitioners indicated on the separate includes a typed correspondence client, the patent practitioner needs to VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00019 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  4. 4. 29868 Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations have access to the private Patent § 1.34 may conduct an interview with ‘‘Notice Regarding Change in Power of Application Information Retrieval an examiner. See MPEP § 713.05. A Attorney.’’ A power of attorney to the (private PAIR) system on the Office’s patent practitioner who is acting in a patent practitioners associated with a Internet Web site (http:// representative capacity can also file Customer Number that is filed PAIR.uspto.gov), and a patent amendments and other papers subsequent to another power of attorney practitioner can only have direct access (§ 1.33(b)(2)). A patent practitioner who will be treated as a revocation of the to private PAIR if he or she is associated is acting in a representative capacity previously granted power of attorney. with the Customer Number, and if the pursuant to § 1.34 may not, however, The Office can only recognize one Customer Number is used for the change the correspondence address Customer Number at a time for power of correspondence address of the (§ 1.33(a)(2)) (except where an executed attorney purposes. When the power of application. Private PAIR provides oath or declaration has not been filed, attorney is to the patent practitioners patent practitioners with access to the and the patent practitioner filed the associated with a Customer Number, the Office’s computer systems that track the application)), expressly abandon the power of attorney is considered to be patent file history, and, if the application without filing a continuing revoked when the power of attorney to application is maintained in the Image application (§ 1.138(b)), or sign a the practitioners associated with the File Wrapper (IFW) system, access to terminal disclaimer (§ 1.321(b)(1)(iv)). A Customer Number is revoked. The the images of the documents in the file patent practitioner who is signing on revoked power of attorney may be history. Furthermore, private PAIR behalf of the assignee of the entire replaced with either a new power of provides pro se applicants and patent interest may (i.e., not signing in a attorney to a new Customer Number or practitioners with information about representative capacity or as a patent a power of attorney to a new list of recently mailed correspondence from practitioner of record), however, sign patent practitioners. A power of the Office for a particular Customer these same documents upon compliance attorney is not considered revoked Number. Furthermore, private PAIR with § 3.73(b), if the practitioner is when the list of patent practitioners provides an explanation of any patent authorized to act on behalf of the associated with a Customer Number is term extension or patent term assignee. changed (as by filing a Request for adjustment calculations for the patent A patent attorney or agent who has Customer Number Data Change (PTO/ application. A patent practitioner who been given a power of attorney cannot SB/124)). When the power of attorney is does not have access to private PAIR is change the power of attorney from the revoked, a single notice is mailed to the disadvantaged in representing a client set of patent practitioners appointed by correspondence address in effect before compared to a practitioner who has the applicant or assignee of the entire the power of attorney was revoked. An access to private PAIR. See the interest of the applicant to a Customer associate registered patent attorney or discussion with respect to comment 9 Number (or change from one Customer patent agent is not separately informed below. Number to another). To appoint a new of a revocation. As a result, § 1.36(a) has A government entity or assignee may power of attorney, the applicant or been revised to no longer suggest that have multiple law firms or sets of assignee of the entire interest of the such an associate practitioner would be attorneys working on their patent applicant must be involved and must separately notified of the revocation of applications. Such an entity should sign the power of attorney. Where a power of attorney. consider having multiple Customer large number of patent applications of a When power of attorney is given to Numbers, with a separate Customer single assignee are involved, the the registered patent practitioners Number for each set of patent attorneys, assignee may wish to consider giving associated with a Customer Number, for and having at least one in-house patent the patent practitioners a power of example with PTO/SB/81, the list of practitioner listed on each listing of attorney that is not specific to an patent practitioners associated with the patent practitioners associated with a application, similar to the General Customer Number is changed by Customer Number so that the Power of Attorney used in Patent changing the data associated with the government entity or assignee has Cooperation Treaty (PCT) practice, and Customer Number (using, for example access to private PAIR for all of their having one of the patent practitioners PTO/SB/124 (2 pages 124A & 124B), patent applications. with general power of attorney take Request for Customer Number Data An applicant or assignee of the entire action by submitting a copy of the Change). No notice is given to the patent interest of the applicant who gives a power of attorney and a statement in practitioners who are added or removed power of attorney to a limited number compliance with § 3.73(b). Form PTO/ from the Customer Number. of patent practitioners has expressed a SB/80 is available for this purpose and Section 1.36(b) provides that when desire to be represented by only those is posted on the Office’s Internet Web the power of attorney for an application patent practitioners. As § 1.34 is revised, site at www.uspto.gov, under forms. is given to the practitioners associated if Customer Number practice is not Section 1.36: Section 1.36 is revised with a Customer Number, all of the used, an applicant or assignee of the to include new paragraphs (a) and (b) so patent practitioners associated with the entire interest of the applicant will be that revocation of power of attorney and Customer Number will not be permitted required to sign a new power of attorney withdrawal as attorney or agent of to withdraw if an application with the in order for an associate practitioner to record are addressed in separate power of attorney has an Office action be ‘‘of record’’ in addition to the paragraphs. In addition, ‘‘or to which a reply is due and insufficient specifically identified principal patent authorization of agent’’ is deleted time remains in the time period for practitioner. Of course, a registered because the term ‘‘power of attorney’’ reply for applicant to prepare a reply. patent practitioner may still act in a has been defined to include an See MPEP § 402.06. representative capacity pursuant to authorization of an agent. The cross- Section 1.53: Section 1.53 is amended § 1.34 (by providing his or her name and reference to § 1.31 is changed to by removing paragraph (d)(9) and a registration number with his or her § 1.32(b). redesignating paragraph (d)(10) as signature), and the rule changes do not Section 1.36(a) addresses revocation paragraph (d)(9). The Office has change this flexibility. A patent of a power of attorney. A registered determined that Mail Stop CPA is not practitioner who is acting in a patent attorney or patent agent is useful in the routing of correspondence representative capacity pursuant to notified of any revocation with a within the Office. VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00020 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  5. 5. Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations 29869 Section 1.363: Section 1.363 is Section 3.24: Section 3.24 is revised reduced to 81⁄2 by 11-inch or DIN size amended by adding paragraph (c), to include two paragraphs, namely, A4 paper for submission to the Office which states ‘‘A fee address must be an paragraphs (a) and (b). (e.g., by photocopying onto letter-size address associated with a Customer New paragraph (a) of § 3.24 addresses paper). Sheets of paper that are either Number.’’ At the time of issue fee documents and cover sheets for 81⁄2 by 11 inches (21.6 by 27.9 cm) or payment, applicants may designate a fee electronic submissions (e.g., patent DIN size A4 (21.0 by 29.7 cm) are address for maintenance fee purposes assignment documents filed via the required for scanning purposes. (hereafter, fee address) by submitting a Electronic Filing System (EFS) or the Section 3.25: Section 3.25 is amended ‘‘Fee Address’’ Indication form (PTO/ Electronic Patent Assignment System to delete paragraph (a)(1) and renumber SB/47) as an attachment to the Fee(s) (EPAS)), and requires all documents paragraphs (a)(2) through (4) as (a)(1) Transmittal (PTOL–85B). If no Customer submitted electronically to be submitted through (3), respectively. Paragraph Number was previously acquired from as digitized images in Tagged Image File (a)(1) is deleted to prohibit applicants the Office for the address being Format (TIFF). In addition, when from submitting the original assignment designated as the fee address, a Request printed to a paper size of 81⁄2 by 11 document (because applicants should for Customer Number form (PTO/SB/ inches (21.6 by 27.9 cm)(‘‘letter size’’) or retain the original of the assignment 125) should also be attached to the DIN size A4 (21.0 by 29.7 cm), the document). Paragraph (a)(1) of § 3.25, as Fee(s) Transmittal (PTOL–85B). If a fee document must be legible and a one- renumbered, is further revised to insert address is established in an allowed inch (2.5 cm) margin must be present on ‘‘original’’ before ‘‘document’’ in order application or patent, the Office will all sides. to clarify that only a copy of an original New paragraph (b) of § 3.24 addresses assignment document may be submitted send all maintenance fee documents and cover sheets for paper for recording. correspondence (such as maintenance and facsimile submissions. Section Section 3.25(c) is revised to add fee reminder notices) to the fee address; § 3.24(b) provides that for paper paragraph (1) to state that electronic and the Office will send all other submissions (e.g., documents that are submissions (e.g., ETAS for trademark correspondence, to the correspondence mailed to the Office), the original assignment documents) must be address of record. See Customer document may no longer be submitted. attached as a digitized image in Tagged Number Required in Order to Establish Section 3.24(b) provides that ‘‘[e]ither a Image File Format (TIFF), to move the a Fee Address, 1261 Off. Gaz. Pat. Office copy of the original document or an existing requirements for paper 19 (August 6, 2002). extract of the original document’’ must submissions into paragraph (2), and to Section 3.1: Section 3.1 is revised to be submitted for recordation. Section specify that the document (copy) identify which trademark applications 3.24(b) also explains why original submitted for recording must have a are covered by 37 CFR part 3, and to documents should not be submitted for one-inch margin when printed on 8 1⁄2 delete ‘‘or a transfer of its entire right, recording: ‘‘The Office will not return by 11 inch (21.6 by 27.9 cm) or DIN size title and interest in a’’ so that the recorded documents, so original A4 (21.0 cm by 29.7 cm) paper. Legal- definition of an assignment includes a documents must not be submitted for size paper is no longer permitted. See transfer of part of the right, title and recording.’’ The Office is moving to the discussion of this change above for interest in a registered mark or a mark uniform processing of incoming papers, patents (§ 3.24). for which an application to register has with incoming papers being scanned Section 3.27: Section 3.27 is revised been filed. Section 3.1 is also revised to upon receipt, electronically routed to change ‘‘to be recorded’’ to add ‘‘United States’’ before ‘‘Patent and within the Office, and an appropriate ‘‘submitted by mail for recordation’’ Trademark Office’’ in the definition of reply being transmitted to applicant or because documents and cover sheets ‘‘Office’’ to properly reflect the current his representative. With this uniform submitted for recording may be faxed or name of the Office in the rule. See 35 procedure, the Office will not return or electronically submitted to the Office U.S.C. 1(a). retain assignment documents submitted and need not be mailed. Only for recordation. As a result, the Office is documents submitted by mail need to be Section 3.21: Section 3.21 is revised not permitting the submission of addressed as set forth in the rule. to change ‘‘its date of execution, name originals of assignment documents, and Section 3.27 is also revised to delete ‘‘or of each inventor, and title of the instead is requiring that a copy or an with a request under § 3.81’’. As invention’’ to ‘‘the name of each extract of an original document be explained with respect to § 3.81, when inventor and the title of the invention.’’ submitted. The term ‘‘an extract of the an applicant requests a patent to issue Section 3.21 is also revised to change original document’’ is being added to to an assignee, the assignment ‘‘the provisional application by name of reflect the current practice of submitting document should be separately each inventor and title of the invention’’ redacted copies of assignment submitted for recordation because to ‘‘the provisional application by the documents, where part of an assignment inclusion of the assignment document name of each inventor and the title of document discusses matters other than with the request to issue the patent to the invention’’ by adding ‘‘the’’ before assignment of interests related to a the assignee slows down the recordation ‘‘name’’ and ‘‘title.’’ patent. process. The phrase ‘‘its date of execution’’ has Section 3.24 is further revised to Section 3.31: Section 3.31(a)(7) is been deleted from § 3.21 because the provide, in paragraph (b), that revised to set forth the requirements for date of execution of a declaration is no documents (copies) submitted for signature of patent and trademark cover longer required on a declaration (see recording must be on sheets of paper sheets filed electronically. These MPEP § 602.05 and because the having a size of 81⁄2 by 11 inches (21.6 requirements correspond to the application could be executed on more by 27.9 cm)(‘‘letter size’’) or DIN size A4 requirements set forth in §§ 2.33(d) and than one date, and thus there may be no (21.0 by 29.7 cm). ‘‘Legal-size’’ (81⁄2 by 2.193(c)(1)(iii) of this chapter for single date of execution). Accordingly, 14 inch or 21.64 by 33.1 cm) sheets of electronically transmitted trademark the date of execution of the application paper are no longer permissible. If the filings. is not particularly useful in original assignment document is on Trademark assignments may be identification of the patent application ‘‘legal size’’ sheets of paper, the submitted electronically with the and is deleted as unnecessary. assignment document should be Electronic Trademark Assignment VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00021 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  6. 6. 29870 Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations System (ETAS), which is available on Section 3.81: Section 3.81(a) is § 1.20(a)) and the processing fee set the Office’s Internet Web site. See http:/ revised to change ‘‘name(s)’’ to ‘‘name’’ forth in § 1.17(i) of this chapter.’’ This /etas.uspto.gov/. Patent assignments and ‘‘assignee(s)’’ to ‘‘assignee’’ because modifies the practice relating to may be electronically submitted using a under rules of statutory and regulatory issuance of a patent to an assignee by similar tool, the Electronic Patent construction, the singular includes the requiring that after payment of an issue Assignment System (EPAS), and may plural unless the context indicates fee, a request for a certificate of also be submitted using EFS. When otherwise. Furthermore, § 3.81(a) is correction must be filed in order to submitting a copy of an assignment amended to change ‘‘should be obtain issuance of the patent to an using ETAS or EPAS, the cover sheet is accompanied by the assignment and assignee. Thus, where assignment completed and signed electronically. As either a direction to record the information is submitted after payment with electronic submission of a assignment in the Office pursuant to of the issue fee, the patent document trademark application, a signature may § 3.28, or a statement under § 3.73(b)’’ to will not include the assignment be applied to an assignment cover sheet ‘‘must state that the document has been information, but the assignment by either: (1) Placing a symbol filed for recordation as set forth in information will be included in a comprised of letters, numbers, and/or § 3.11.’’ When an assignment document Certificate of Correction. Furthermore, punctuation marks between forward is submitted for recording, the preferred the practice of allowing a patent to issue slash marks in the signature block on submission is by facsimile to (703) 306– to an assignee when a § 3.73(b) the electronic submission (e.g. Jane P. 5995, or through an electronic filing statement has been filed, but an Doe); or (2) signing the cover sheet using system (e.g., ETAS for trademark assignment has not been recorded is some other form of electronic signature assignment documents or EPAS or EFS discontinued. See MPEP § 1481. Section specified by the Director. See for patent assignment documents), and 3.81(c)(1) is amended to change Trademark Manual of Examining not by mail. Accordingly, the Office has ‘‘assignee(s)’’ to ‘‘assignee’’ and Procedure (TMEP) § 804.05, Signature of revised the rules to enable patent ‘‘inventor(s)’’ to ‘‘inventor’’ because the Electronically Transmitted Applications applicants to state that the assignment singular includes the plural unless the (May 2003). documents have been filed for context indicates otherwise. See 1 Section 3.31(c)(1) is revised to recordation, rather than including the U.S.C. 1. simplify the requirements for the cover assignment documents for recordation Section 5.1: Section 5.1(a) is revised sheet to only require identification of with the request. to add Mail Stop L&R to the address so whether the document to be recorded Paragraphs (a) and (b) of § 3.81 are that the address reads as follows: All relates to a governmental interest. revised to delete the reference to a correspondence in connection with this statement under § 3.73(b). If the part, including petitions, should be Paragraph (f) is added to § 3.31, and application has been assigned, the addressed to: Mail Stop L&R, provides that a trademark cover sheet assignment document should be Commissioner for Patents, P.O. Box should include the citizenship of the submitted for recording as set forth in 1450, Alexandria, Virginia 22313–1450. parties conveying and receiving the § 3.11 for the patent to issue showing National security classified applications interest, and that if the party receiving the name of the assignee. Although and other related papers may also be the interest is a partnership or joint during prosecution a statement under hand-carried to Licensing and Review, venture, the cover sheet should set forth § 3.73(b) can be relied upon to establish Technology Center 3600, as provided in the names, legal entities, and national that an assignee is of record, pursuant § 5.1(c). citizenship (or the state or country of to § 3.73(b)(1)(i), ‘‘the documents Response to Comments: The Office organization) of all general partners or submitted to establish ownership may published a notice proposing changes to active members. This information is be required to be recorded pursuant to the rules of practice regarding power of required for purposes of examination of § 3.11 in the assignment records as a attorney and assignment practice. See the application or registration file. condition to permitting the assignee to Clarification of Power of Attorney Providing this information when the take action.’’ By the time that a patent Practice, and Revisions to Assignment assignment is recorded may avoid a issues, any assignment should have Rules, 68 FR 38258 (June 27, 2003), subsequent Office action by an been submitted for recording, and 1272 Off. Gaz. Pat. Office Notices 181 examiner. reliance upon § 3.73(b) should not be (July 29, 2003). The Office received nine Section 3.34: Section 3.34(b) is necessary. Furthermore, although written comments (from one intellectual revised to delete ‘‘the originally during prosecution of an application the property organization, seven patent recorded document or’’ to thereby Office will have an opportunity to practitioners, and one business). provide that it is ‘‘a copy of the require recordation, at issuance, Comments in support of a change are document originally submitted for prosecution has come to a close and not discussed. The other comments and recording’’ that must be submitted. As there is no other practical opportunity the Office’s response to those comments explained above, the Office is revising for the Office to require recordation follow: the procedure for handling assignment before the patent is issued. Comment 1: An editorial change to documents and will no longer be Section 3.81(b) is revised to read § 1.12(b) was recommended to change returning the document that is ‘‘[a]fter payment of the issue fee: Any the term ‘‘such records and related submitted for recording. request for issuance of an application in information’’ because the use of the Section 3.41: Section 3.41(b)(2) is the name of the assignee submitted after term was confusing. revised to include electronic and the date of payment of the issue fee, and Response: The suggestion has been facsimile submission as a means in any request that a patent be corrected to adopted and ‘‘such records and related which a statement of Government state the name of the assignee, must information’’ has been changed to interest could be submitted for state that the assignment was submitted ‘‘assignment records, digests, and recordation without incurring a fee. for recordation as set forth in § 3.11 indexes’. Section 3.41(b)(2) is also revised to before issuance of the patent, and must Comment 2: The definition of ‘‘power change the cross-reference to § 3.27 include a request for a certificate of of attorney’’ in § 1.32(a) was because § 3.27 was previously revised to correction under § 1.323 of this chapter recommended to be revised to include delete § 3.27(b). (accompanied by the fee set forth in designating a patent attorney or patent VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00022 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  7. 7. Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations 29871 agent or an individual authorized to Accordingly, applicants need to show proposed rule would require an practice before the Office in patent good and sufficient reasons why more applicant to choose between naming cases. Another comment noted that the than one practitioner is necessary to only a law firm by using the law firm’s use of ‘‘agent’’ in § 1.32 was confusing, represent applicants for the patent, and Customer Number, or to name ten and recommended revision to avoid such an explanation will need to be attorneys in order to name some patent using the term ‘‘agent’’ to include an provided in a petition under § 1.183 to practitioners in the law firm as well as attorney. waive the requirements of § 1.32(b)(4) others not in the law firm. The Response: These suggestions have for the applicant or the assignee of the commentators encouraged the Office to been adopted. The definition of power entire interest of the applicant to sign consider amending the rule to allow for of attorney and the remainder of the rule the power of attorney. appointment of both practitioners and have been revised accordingly. Instead Comment 4: One comment noted that Customer Numbers, as well as more of using ‘‘agent’’ the term in § 1.32(a)(3) revocation should also be than one Customer Number. The ‘‘representative’’ or ‘‘patent defined as including the situation where comments argued that using different practitioner’’ has been used. The term the power of attorney is revoked by a Customer Numbers for different ‘‘an individual authorized to practice new principal, and suggested that the combinations of in-house practitioners before the Office in patent cases’’ has definition be modified to address this and outside firm practitioners is not been included, however, because situation. Another comment suggested burdensome and risky. One comment such a person is considered to have that a new power of attorney act as a contended that all patent practitioners limited capacity to take action on behalf revocation of all prior powers of associated with a Customer Number of a patent applicant (see § 10.9(a) and attorney. needed to be at the same address. (b)), and is not recognized by the Office Response: The suggestion to expand Response: Applicants and assignees as an attorney or agent of record, and is the definition of revocation to include currently, as a matter of practice, do not entered into the Office’s computer revocation by a new or different have to choose between giving a power systems as having a power of attorney. principal has been adopted. In the of attorney to a list of individual Comment 3: The term ‘‘principal’’ in definition of revocation (§ 1.32(a)(3)), practitioners and a power of attorney to § 1.32(a)(2) was suggested as being too ‘‘by the principal’’ has been deleted the practitioners associated with a narrowly defined, and it was suggested after ‘‘previously given’’. As to the Customer Number. This is because the that the term be defined broadly enough comment that a new power of attorney Office’s computer systems only allow to include an appointment by fewer act as revocation of all prior powers of either a list of individual practitioners than all of the inventors. attorney, this suggestion has not been or a Customer Number to be entered, but Response: This suggestion has not adopted because automatic revocation not both, nor more than one Customer been adopted, but the language has been will only occur in certain situations. Number. The proposal to allow for entry clarified in regard to appointments by When an original power of attorney is of multiple Customer Numbers would fewer than all the applicants or filed giving power of attorney to likely result in separate registration assignees. Where all the applicants, or attorneys A, B, and C, and the same numbers being entered. The the assignees of the entire interest of all principal subsequently files another programming required to allow for more the applicants, do not give power of power of attorney, giving power of than one Customer Number would be attorney to the same patent attorney to D without revoking all prior very costly, and updating the list of practitioners, a petition under § 1.182 is powers of attorney, the subsequently patent practitioners would be currently required before the Office will filed power of attorney will be treated burdensome on the Office, so it has not permit the split power of attorney. See as a revocation of the original power of been adopted. MPEP § 402.10. The term ‘‘all the attorney. Similarly, if the applicant A Customer Number does not need to inventors’’ is specifically not used in signed the original power of attorney, have only patent practitioners in a order to provide for the situation where and an assignee of the entire interest of single law firm associated with it. an inventor is deceased or where a the applicant later takes action and files Instead, a Customer Number can be petition under § 1.47 has been granted a new power of attorney, the original used to list all of the patent practitioners (the applicant would then either be power of attorney is revoked and associated with a given client and who fewer than all of the inventors or the replaced by the power of attorney filed are working together to represent the party with proprietary interest pursuant by the assignee. In addition, if a power client. As a result, requiring the use of to § 1.47(b)). If the term ‘‘inventors’’ was of attorney is given to the practitioners a Customer Number if more than ten used, then in any application in which associated with a Customer Number, attorneys are to be appointed power of a petition under § 1.47 was granted, a and a (second) power of attorney is later attorney would not require an applicant petition under § 1.183 would also received giving power of attorney to to make the choice suggested by the always be required to permit the power patent practitioners associated with a comment. Furthermore, to allow any of of attorney to be signed by fewer than different Customer Number, the second the patent practitioners access to private all of the inventors, or by an assignee power of attorney will be processed, PAIR, Customer Number practice must who is the assignee of the entire interest with the first Customer Number being be used. of the applicant, but not the assignee of replaced with the second. The power of The comments have not explained the entire interest in the application attorney to the practitioners associated why appointment of more than ten (due to the lack of an assignment from with the first Customer Number is patent practitioners, particularly the inventor, or if deceased, the legal automatically revoked in this situation. hundreds of patent practitioners, is representative of the inventor, who did In all of these situations, the most necessary. When a long list of patent not sign the declaration). With a split recently filed power of attorney will practitioners is submitted to the Office, power of attorney, both patent control. this list must be constantly updated practitioners are required to sign any Comment 5: Several comments with a separate submission for each response to an Office action, and to opposed the requirement in § 1.32(b)(2) application. When a patent practitioner participate in any interviews in the to use Customer Number practice if leaves a law firm, he must file a patent application, which tends to delay more than ten patent practitioners are to withdrawal for each application in prosecution of the patent application. be named. They argued that the which he has a power of attorney. There VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00023 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  8. 8. 29872 Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations could be thousands of applications in purposes so that practitioners associated § 1.32(b), the declaration would not be which he was given a power of attorney, with each of the Customer Numbers can considered defective so long as the even though he never personally signed have access to private PAIR, then requirements of § 1.63 (or § 1.64) are a single communication in any of them. applicants would need to elect a single met. If a separate paper indicating If the proper action is not taken in the Customer Number for mailing purposes, which ten registered patent attorneys or application, he or she can be held and the Office would have to reprogram registered patent agents named in the responsible for the failure to take the its system so as to be able to capture power of attorney are to be recognized appropriate action because he did not only the elected Customer Number for by the Office as being of record in the timely withdraw. Given the Office’s mailing purposes. The more Customer application or patent to which the extremely liberal policy of accepting Numbers that the applicant has power of attorney is directed is correspondence from a patent associated with a given application, the provided pursuant to § 1.32(c)(3), then practitioner who is acting in a more likely that the applicant will need the registered patent practitioners listed representative capacity pursuant to to change one or more of the Customer on the separate paper will be made of § 1.34, whether someone is of record is Numbers associated with the record. On the other hand, if the power only relevant for a patent practitioner application. If only a single Customer of attorney does not comply with signing a change of correspondence Number is used (the Office permits up § 1.32(b) and the separate paper of address, an express abandonment to three different Customer Numbers to § 1.32(c)(3) is not provided, then no without filing a continuing application, be used, one for the power of attorney, patent practitioners will be made of or a disclaimer. The work required for one for the correspondence address and record. the Office to constantly update the lists one for the fee address, but the same The Office does not encourage of patent practitioners of record in Customer Number can be used), then combined declarations and power of receipt, matching and processing of the only a single Request for Customer attorney. If such a combined format is relevant paper has not been shown to be Number Data Change can effectuate any used, however, it is recommended that justified in exchange for the value changes necessary to the list of patent the following language be inserted into actually given to applicants. practitioners, or the address associated the oath or declaration so that the patent All patent practitioners associated with a Customer Number. Given that a practitioner will be able to take with a Customer Number do not need to law firm, or a sole practitioner, can have instructions from the actual client: be at the same address. A Customer multiple Customer Numbers without the The undersigned hereby authorizes the Number can be used like a client Office being required to make any U.S. attorney or agent named herein to accept number, with all the patent practitioners programming changes, it is more and follow instructions from lll as to any who represent the client being appropriate for the patent practitioners action to be taken in the United States Patent associated with a single Customer to use multiple Customer Numbers, and Trademark Office regarding this Number. with each Customer Number for a set of application without direct communication Comment 6: Another comment asked practitioners to be associated with a set between the U.S. attorney or agent and the if more than one Customer Number undersigned. In the event of a change in the of patent applications, rather than the could be used to designate the list of persons from whom instructions may be Office to incur the cost of permitting taken, the U.S. attorney or agent named patent practitioners of record so that multiple Customer Numbers to be used herein will be so notified by the undersigned. applicants could give power of attorney for the correspondence address (private to Customer Number A (all in-house PAIR access), or for the list of patent See Responsibilities of Practitioners counsel), and Customer Number B practitioners of record in an application. Representing Clients in Proceedings (several patent practitioners who are not Comment 7: Most of the comments Before the Patent and Trademark Office, in-house counsel). Alternatively, it was opposed the proposal of denying entry 1091 Off. Gaz. Patent Office 26 (May 25, suggested that § 1.32(b)(2) be revised to of a power of attorney that was not in 1988). If the client is the company that permit the naming of more than one compliance with the proposed rules, employed the inventor, then if the Customer Number. and noted that there would be company is the assignee of the entire Response: The suggestion has not significant costs to applicants as a result interest of the applicant, the assignee been adopted. As stated in response to of this policy. For example, where the should sign the power of attorney in the comment 5, in order to implement a power of attorney was given by the patent application, not the inventor who change to permit use of more than one applicant in a combined declaration and may no longer be employed by the Customer Number to identify either the power of attorney, many comments assignee (company). Because an list of patent practitioners to be made of argued that a new declaration would be inventor who is no longer being record or the correspondence address, required to provide a proper power of employed by a company is unlikely to reprogramming of multiple Office attorney, and that a new declaration be represented by a patent practitioner computer systems would be required, would be difficult to obtain because the who has filed a patent application on which is an automation project that the applicant may no longer be employed behalf of the assignee, the fact that it Office does not have resources to devote by the company. Several comments would be difficult to obtain the to at this time. Furthermore, the Office emphasized the burden to applicants in signature of the inventor on a new could not reprogram the software to changing their forms to comply with the power of attorney is not persuasive, and allow multiple Customer Numbers to be limit of ten patent practitioners of a petition under § 1.183 to waive this used for the list of patent practitioners record and requested a several-year provision of the rules is unlikely to be without also allowing multiple delay in the effective date. granted for such a reason. An inventor Customer Numbers being used for the Response: After careful consideration, may be available to sign a power of correspondence address because access the Office has decided to permit attorney, but may have a divergent to private PAIR is a function of the applicants to supply a separate paper interest from the company. Where the correspondence address being listing the patent practitioners who shall company (assignee) has not chosen to associated with a single Customer be made of record. Where a power of intervene in the application, and the Number. Thus, if the Office were to attorney is included as part of a power of attorney is given by the allow more than one Customer Number declaration pursuant to § 1.63, and the inventor (applicant), the inventor may to be given for correspondence address power of attorney does not comply with later revoke the original power of VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00024 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1
  9. 9. Federal Register / Vol. 69, No. 102 / Wednesday, May 26, 2004 / Rules and Regulations 29873 attorney to the patent practitioners attorney takes over prosecution of a of attorney practice to add new patent chosen by the assignee and appoint his/ patent application from a former practitioners would encourage her own patent attorney and change the counsel, an associate power of attorney practitioners to give an associate power correspondence address in the is useful to bridge the gap until a new of attorney rather than having a new application (or patent). Such an exercise power of attorney can be executed. In power of attorney to the practitioners of authority by an inventor (applicant) addition, an associate power of attorney associated with a Customer Number is appropriate so long as the assignee of is considered useful where a patent signed by the applicant or assignee of the entire interest of the applicant has practitioner of record who is not in the the entire interest of the applicant, even not appointed a power of attorney, but Washington, DC, area appoints another though the new power of attorney to the adds unnecessary complexity to the patent practitioner within the area to practitioners associated with a Customer prosecution of the application. assist in the prosecution for the purpose Number would enhance their ability to Where a power of attorney lists more of some procedural or petition matter, represent the applicant or assignee of than ten patent practitioners and the but does not wish to have the the entire interest of the applicant Office enters those patent practitioners practitioner made of record in all patent because of the access to private PAIR listed on a separate paper provided applications (as would happen if they gained by Customer Number practice. pursuant to § 1.32(c)(3), a patent used Customer Number practice, and Using a Customer Number effectively practitioner who is not recognized as added the practitioner to the list of as a client number, so that both in-house the patent attorney or patent agent of practitioners associated with the patent counsel and other patent record and, as a result is not entered Customer Number). Another comment practitioners are associated with the into the Office’s computer systems, is argued that the associate power of Customer Number, may only be not required to request to be withdrawn, attorney practice was desirable because appropriate for clients who file many if the practitioner ceases to represent the of the delays in obtaining a new power patent applications. If the set of applicant or assignee of the applicant. If of attorney, and that such delays would practitioners who are representing a such a patent practitioner files a request lead to the original attorney of record client on a matter is so unique that it is to withdraw, the Office will enter the receiving correspondence for too long. not efficient to establish a Customer paper in the patent application file, but Another comment suggested that the Number specifically for this set of will not process the paper, as the rules be amended to provide that an practitioners, then the power of attorney practitioner cannot be withdrawn associate attorney’s authority is not would be to a list of patent practitioners because the practitioner was not made dependent upon the continued and the correspondence address could of record and was not entered into the representation by the appointing be given as a Customer Number so that Office’s computer records. principal attorney. only those patent practitioners Comment 8: One comment, while questioning the wisdom of having any Response: Associate power of attorney associated with the Customer Number limit on the number of patent practice has been eliminated because for the correspondence address (a subset practitioners who may be given a power the practice is unnecessary in view of of those with power of attorney) would of attorney, suggested a limit of 25, and Customer Number practice. Customer have access to private PAIR. for the Office to enter in the first 25 Number practice, like an associate As to the suggestion that an associate when more than 25 are listed in a power power of attorney, allows the list of power of attorney is necessary for the of attorney. Alternatively, it was patent practitioners to be changed easily attorney to conduct an interview, e.g., in suggested in two comments that a fee be to add an attorney without execution of the situation where a non-Washington, required for the entry of more than 10 a new power of attorney from the client, DC, firm appoints a Washington, DC, patent practitioners. Another comment and therefore it is not necessary to be area patent practitioner to conduct an questioned the limit contending that able to give an associate power of interview in a patent application, it is where an application is electronically attorney if the power of attorney is to noted that the Washington, DC, patent filed, the Office does not have to enter the practitioners associated with a practitioner does not need to be of in any lists of registration numbers, Customer Number. Instead of using an record or have an associate power of because if PrintEFS were updated, the associate power of attorney, if the power attorney if the Washington, DC, application data sheet could be scanned of attorney is to the patent practitioners practitioner has in their possession a and optical character recognition (OCR) associated with a Customer Number, a copy of the application file. Even if the be used to upload the data. Request for Customer Number Data Washington, DC, practitioner does not Response: A smaller number would Change can be filed to add a practitioner have a copy of the application file, the be preferred by some, a larger by others, that would have been given an associate practitioner may conduct an interview but the Office has decided that ten best power. In order to most effectively with ‘‘proper authority from the balances the need of applicants to represent a patent applicant, a patent applicant or attorney or agent of record appoint several practitioners without practitioner needs access to the private in the form of a paper on file in the using Customer Number practice and Patent Application Information application.’’ See MPEP § 713.05. the need of the Office to avoid Retrieval (private PAIR) system. Private Should an examiner object to a unnecessary work. The suggestion to PAIR enables the practitioner to obtain practitioner who is not of record adopt a fee to accept more than a set direct access the Office’s electronic conducting the interview, the number of patent practitioners of record records for a patent application, practitioner is encouraged to bring a is noted and may be pursued in a future including in many instances images of letter signed by an attorney of record, rule making, but the extra burden the papers in the patent application. In authorizing the practitioner to conduct associated with entering additional order to obtain access to these records, the interview. For example, a sample of names was a significant factor for not however, a Customer Number must be an ‘‘Authorization to Act in a adopting the suggestions at this time. associated with the correspondence Representative Capacity’’ is posted on Comment 9: Many comments address of the application, and the the Office’s Internet Web site under disapproved of the deletion of associate registered practitioner must be ‘‘Forms’’ at http://www.uspto.gov/web/ power of attorney practice. The associated with the Customer Number. forms/sb0084.pdf. A faxed copy of the comments argued that when a new The availability of the associate power letter would be acceptable. VerDate jul<14>2003 14:24 May 25, 2004 Jkt 203001 PO 00000 Frm 00025 Fmt 4700 Sfmt 4700 E:FRFM26MYR1.SGM 26MYR1

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