Applicant Revocation - Application Filed Before September 16, 2012
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
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402.05(b) Applicant Revocation - Application Filed Before September 16, 2012 [R-10.2019]
37 C.F.R. 1.36 (pre-AIA) Revocation of power of attorney; withdrawal of patent attorney or agent.
- (a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by an applicant for patent (§ 1.41(b) ) or an assignee of the entire interest of the applicant, or the owner of the entire interest of a patent. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all of the assignees of the entire interest of the applicant or, in a reexamination proceeding, fewer than all the owners of the entire interest of a patent) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2) ), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33 ) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee of the entire interest of the applicant may revoke previous powers of attorney and give another power of attorney of the assignee’s own selection as provided in § 1.32(b).
See MPEP § 402.07 for revocation of a power attorney by the assignee. Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012. See also MPEP § 402.02(b).
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable. See MPEP § 402.04 for information pertaining to acting in a representative capacity.
When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney. Similarly, if the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee. In addition, if a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second. The power of attorney to the practitioners associated with the first Customer Number is automatically revoked in this situation. In all of these situations, the most recently filed power of attorney will control.
A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.