MPEP 402.02(a)
Appointment in Application Filed On or After September 16, 2012

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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402.02(a)    Appointment in Application Filed On or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 402.02(b) for information pertaining to appointment of a power of attorney in an application filed before September 16, 2012.]

37 C.F.R. 1.32  Power of attorney.

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  • (b) A power of attorney must:
    • (1) Be in writing;
    • (2) Name one or more representatives in compliance with paragraph (c) of this section;
    • (3) Give the representative power to act on behalf of the principal; and
    • (4) Be signed by the applicant for patent (§ 1.42 ) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.

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  • (d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
    • (1) The power of attorney was granted by the inventor; and
    • (2) The continuing application names an inventor who was not named as an inventor in the prior application.
  • (e) 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 § 1.34, if applicable.

I.    GENERAL REQUIREMENTS FOR POWERS OF ATTORNEY

For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application.

Pursuant to 37 CFR 1.42, the word "applicant" refers to the inventor or all of the joint inventors or to the person applying for a patent as provided in 37 CFR 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.45 (joint inventor(s) on behalf of themselves and an omitted inventor) or 1.46 (assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest). As set forth in 37 CFR 1.42(b), if a person is applying for a patent as provided in 37 CFR 1.46, that person (which may be a juristic entity), and not the inventor, is the applicant. In this situation the Office would not accept a power of attorney from the inventor. An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71. See also MPEP § 325. Persons who otherwise show sufficient proprietary interest in the matter may supply a power of attorney along with a petition under 37 CFR 1.46(b)(2), which power would be effective once the petition is granted.

An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73 ). See MPEP § 325. A patent owner who was not the applicant under 37 CFR 1.46 must appoint any power of attorney in compliance with 37 CFR 3.71 and 3.73. This covers a patent owner in a reissue application who was not the applicant under 37 CFR 1.46 in the application for the original patent, as well as a patent owner in a supplemental examination or reexamination proceeding who was not the applicant under 37 CFR 1.46.

The power of attorney must be signed by someone who is authorized to act on behalf of the assignee-applicant (i.e., a person with a title that carries apparent authority, or a person who includes a statement of authorization to act.). A patent practitioner is not authorized to act on behalf of an assignee simply by existence of authority to prosecute an application.

II.    POWERS OF ATTORNEY IN CONTINUING APPLICATIONS

Pursuant to 37 CFR 1.32(d), a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless: (1) The power of attorney was granted by the inventor; and (2) the continuing application names an inventor who was not named as an inventor in the prior application. Thus 37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).

III.    POWER OF ATTORNEY FORMS FOR APPLICATIONS FILED ON OR AFTER SEPTEMBER 16, 2012

Form PTO/AIA/80 should be used by assignees who want to become the applicant (see 37 CFR 1.46(c) ). The form may also be used by assignee-applicants who were named as the applicant when the application was filed, if desired. In either situation, this form must be accompanied by a statement under 37 CFR 3.73(c) (form PTO/AIA/96 or equivalent). Where an assignee gives the practitioner specific authority to act on behalf of the assignee (e.g., authority given by organizational resolution), a practitioner may sign the PTO/AIA/80 on behalf of the assignee. Where an assignee is named as the applicant in the patent application (i.e., in a signed Application Data Sheet, form PTO/AIA/14 or equivalent), the assignee-applicant can appoint a power of attorney using the PTO/AIA/82 form. The forms are available on the USPTO website at www.uspto.gov/patent/patents-forms. These forms should only be used in applications filed on or after September 16, 2012.

Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO website.