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      Imp...
Power of Attorney• Original applicant filing the application is  presumed to be the owner (not the  inventors), unless lat...
Power of Attorney• Two Ways to Accomplish:  1. General POA (PTO/AIA/80) +     37 CFR 3.73(c) Statement (PTO/AIA/96)  2. Tr...
Power of Attorney- PTO/AIA/80• Way #1 File:  – General Power of Attorney (PTO/AIA/80)      Signed by Applicant- e.g., Com...
Power of Attorney- PTO/AIA/80   General POA           3.73(c) Statement    PTO/AIA/80              PTO/AIA/96
Power of Attorney Example #1- PTO/AIA/80                      Reel/Frame No.Filed            Record          File        A...
Power of Attorney Example #2- PTO/AIA/80Filed         Can file with App.   File        ADSApp.                            ...
Power of Attorney- PTO/AIA/82• Way #2 File:  – Power of Attorney (PTO/AIA/82)      Part A- Transmittal for Power of Attor...
Power of Attorney- PTO/AIA/82• Transmittal (Part A)• Fill in Application  Information   – Can leave Application     Inform...
Power of Attorney- PTO/AIA/82• Power of Attorney  (Part B)• Signed by Applicant  – Company Officer      President      T...
Power of Attorney- PTO/AIA/82• Power of Attorney  (Part B)• Apparently, the  USPTO allows you to  “recycle” Part B forms  ...
Power of Attorney- PTO/AIA/82• When to Use PTO/AIA/82 Form (Way #2)  – Want to establish Power of Attorney with the    fil...
Power of Attorney Example #3- PTO/AIA/82                                       Signed                                  Cli...
Power of Attorney Example #4- PTO/AIA/82                                     Signed          Part B                   Bett...
Power of Attorney Example #5- PTO/AIA/82Filed         Can file with App.      File        ADSApp.  ADS naming             ...
Power of Attorney- Continuing Applications• Allowed to use parent POA if you supply a  copy of the parent POA  – Exception...
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, McNett & Henr...
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AIA Power of Attorney Practice Presentation Mar-20-2013

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AIA Power of Attorney Practice Presentation Mar-20-2013

  1. 1. AIA Final Rules Power of Attorney March 20, 2013
  2. 2. Power of Attorney
  3. 3. 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
  4. 4. 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)
  5. 5. 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
  6. 6. 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
  7. 7. Power of Attorney- PTO/AIA/80 General POA 3.73(c) Statement PTO/AIA/80 PTO/AIA/96
  8. 8. Power of Attorney Example #1- PTO/AIA/80 Reel/Frame No.Filed Record File ADSApp. Assignment New 3.73(c) Statement PTO/AIA/96 ADS naming General POA Applicant PTO/AIA/80
  9. 9. Power of Attorney Example #2- PTO/AIA/80Filed Can file with App. File ADSApp. Assignment General POA 3.73(c) Statement ADS naming PTO/AIA/96 PTO/AIA/80 Applicant
  10. 10. 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
  11. 11. 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.
  12. 12. Power of Attorney- PTO/AIA/82• Power of Attorney (Part B)• Signed by Applicant – Company Officer  President  Treasurer  Secretary, etc. – Inventor
  13. 13. 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
  14. 14. 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
  15. 15. Power of Attorney Example #3- PTO/AIA/82 Signed Client (Officer) Part B A Part USPTO
  16. 16. Power of Attorney Example #4- PTO/AIA/82 Signed Part B Betty Signed Betty Part B Andy Andy Part B A Part Part B USPTO
  17. 17. Power of Attorney Example #5- PTO/AIA/82Filed Can file with App. File ADSApp. ADS naming Part A Part B Applicant
  18. 18. 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
  19. 19. More Information and Questions…• Contact: Chuck Schmal Phone: (317) 713-4954 Email: cschmal@uspatent.com
  20. 20. AIA Final Rules Power of Attorney March 20, 2013©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP

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