400

OCR transcription for search; preserved printed pages are authoritative

# Chapter 400 Representative of Inventor or Owner

401
Patent Office Cannot Aid in Selection of Attorney

402
Power of Attorney

402.01
Exceptions as to Registration

402.02
Appointment of Associate Attorney

402.03
"Substitute" Will Be Considered Associate

402.04
Filed After Application is Filed

402.05
To a Firm

402.05 (a)
Firm of Attorneys Changes Name

402.06
Revocation

402.06 (a)
Examiner Must Notify Associate of Revo-
cation

402.07
Attorney Withdraws

402.08
Assignee Can Revoke Power of Attorney of
Applicant

403
Correspondence-With Whom Held

403.01
With Associate Attorney

403.02
Two Attorneys for Same Applications

404
Conflicting Parties Having Same Attorney

405
Attorney Not of Record

406
Death of Attorney

407
Disbarred Attorney

408
Representatives of Out-of-Town Attorneys

409
Death of Inventor

409.01
Prosecution by Administrator or Executor

409.01 (a)
Proof of Authority to Be of Record

409.01 (b)
After Administrator has been Discharged

409.01 (c)
Exception in Some Foreign Countries

409.01 (d)
If Applicant of Assigned Application Dies

409.01 (e)
Intervention of Executor Not Compulsory

## 401 Patent Office Cannot Aid in Selec- tion of Attorney

Rule 81. Applicants May Be Represented By an
Attorney or Agent. An applicant for patent may file
and prosecute his own case, or he may be represented
by an attorney or agent authorized to practice before
the Patent Office in patent cases. The Patent Office
cannot aid in the selection of an attorney or agent.
[Old Rule 17]

## 402 Power of Attorney

Rule 34. Power of attorney or authorization. Before
any attorney or agent, original or associate, will be
allowed to inspect papers or take action of any kind in
any application or proceeding, a written power of attor-
ney or authorization, from the person or persons entitled
to prosecute the application or from the principal attor-
ney or agent in the case of an associate attorney or
agent, must be filed in that particular application or
proceeding.

[Old Rule 18]

Usually a power of attorney is made a part
of the petition, see 601.02 In order that this
power may be valid, the attorney or agent
appointed must be registered.

When an application for patent is filed accom-
panied by a power of attorney or authorization of
agent to a person not registered to practice before
the United States Patent Office, the Application
Branch will send the official filing receipt directly
to the applicant, together with an explanatory let-
ter. A copy of the letter will be sent to the person
named in the power of authorization and a copy
placed in the file without being given a paper num-
ber. The name of the unregistered person will not
be placed on the face of the file, and the examiner
will communicate only with the applicant directly
unless and until the applicant appoints a recognized
practitioner. An associate power of attorney or
authorization from the unregistered person will not
be recognized or accepted. If a request for special
recognition accompanies the application, the Ap-
plication Branch will forward the file to the Chair-
man of the Committee on Enrollment. (Notice of
March 29, 1949)

A power appointing new or associate attorneys in
an application subject to a "Secrecy Order" should be
submitted to Division 70, for consideration of the
propriety of the disclosure indicated by the power,
before the power is entered in the application. (Ex-
tract from Notice of Aug. 22, 1949)

## 402.01 Exceptions as to Registration

Rule 342 Limited recognition. Any person not reg-
istered and not entitled to be recognized under rule 341
as an attorney or agent to represent applicants gener-
ally may, upon a showing of circumstances which ren-
der it necessary or justifiable, be recognized by the
Commissioner to prosecute as attorney or agent a spe-
cified application or applications, but this limited recog.
nition shall not extend further than the application
or applications specified.

[Old Rule 17g]

Sometimes in a joint application one of the co-
inventors gives to the other the power of attor-
ney in the case. Such power will be recognized
even though the one to whom it is given is not
registered. If the legend "unregistered" is ap-
plied on the file jacket, it should be ignored by
the Examiner.

<!-- PageFooter="Rev. 1 Nov. 1950" -->

change & firm mane - just cheap name

POWER
AT

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

## 402.02 Appointment of Associate At- torney

The principal attorney may appoint an asso-
ciate attorney. The associate attorney cannot
appoint another attorney; this being indicated
by the portion of Rule 34 which states that the
power of attorney or authorization must be
"from the principal attorney or agent in the
case of an associate attorney or agent".

## 402.03 "Substitute" Will Be Consid- ered Associate

When the attorney appointed by an applicant ap-
points a "substitute" attorney, such "substitute" at-
torney shall be considered the associate of the prin-
cipal attorney. The name of the principal attorney
will be left. on the file and his responsibility to the
applicant shall not be considered as having been
discharged. (Extract from Notice of July 19, 1948)
But see 402.05 (a).

## 402.04 Power of Attorney Filed After Application Is Filed

All principal Powers of Attorney signed by the
applicant or the assignee should be sent to the
Docket Branch for entry and the Docket Branch
will send out notice of entry.

The Docket Clerk of the Division will enter only:
(1) associate powers of attorney; (2) substitute
powers of attorney, and (3) notices of change of
firm names. Such a notice should be signed in the
name of the firm as constituted immediately before
the change. No power of attorney should be entered
in an application by the Docket Clerk of the Division
while the application is involved in interference.

The Examining Divisions are requested to particu-
larly watch for powers of attorney entitled "substi-
tute power" which are signed by applicant. These
should be forwarded to the Docket Branch.

A power appointing new or associate attorneys in
an application subject to a Secrecy Order should be
submitted to Division 70, for consideration of the
propriety of the disclosure indicated by the power,
before the power is entered in the application.

Withdrawals of principal attorneys also go to the
Docket Branch for entry. (Memorandum of March
31, 1950, revised.)

## 402.05 Power of Attorney to a Firm

Rule 346 Signature and certificate of attorney.

Every paper filed by an attorney or agent representing
an applicant or party to a proceeding in the Patent
Office must bear the signature of such attorney or agent,
except papers which are required to be signed by the
applicant or party in person (such as the application
itself and affidavits required of applicants). The sig-
nature of an attorney or agent to a paper filed by him,
or the filing or presentation of any paper by him, con-
stitutes a certificate that the paper has been read; that
its filing is authorized ; that to the best of his knowledge,
information, and belief there is a good ground to support
it; and that it is not interposed for delay. When an
applicant or party is represented by a registered firm,
such papers must carry the signature of the firm, or
the signature of an individual member of the firm
or an individual registered attorney or agent em-
ployed by the firm and duly authorized to sign on
behalf of the firm in addition to the firm name, and
the certification constituted by the signing or presen-
tation of the paper shall be a certification by and on
behalf of the firm and by the individual.

Note that, in the case of a power of attorney to
a firm, Rule 346, as amended, requires (1) the signa-
ture of the firm, or (2) the signature of an individual
member of the firm, or (3) the signature of an indi-
vidual registered attorney or agent employed by
the firm and duly authorized to sign on behalf of the
firm. Under (2) and (3), above, the name of the
firm must appear but may be either written or
typed. The name of the firm may be used on the
drawing as in the past. (Notice of March 7, 1949,
revised.)

# 402.05 (a) Firm of Attorneys Changes Name

Where a firm having power of attorney in a case
changes its firm name, due, for example, to the
addition of a new member or the withdrawal or
death of one of the members the prosecution of the
case may be continued in the name of the original
firm, if desired. (Notice of Sept. 4, 1894, revised.)

Where the name and membership of a firm
are changed, and a substitute power of attorney
from the old firm to the new firm is filed, the
old firm name should be cancelled from the file.

Where a notice of change of firm name, as
distinguished from a substitute power of attor-
ney, is filed, the new firm name is entered by
amending the old firm name on the face of the
file wrapper. See 402.04.

<!-- PageFooter="Rev. 2, Dec. 1951" -->

<!-- PageBreak -->

<!-- PageHeader="REPRESENTATIVE OF INVENTOR OR OWNER" -->
<!-- PageHeader="403.02" -->

# 402.06 Revocation

Extract from Rule 86. Revocation of power of attor-
ney or authorization ; withdrawal of attorney or agent.
A power of attorney or authorization of agent may
be revoked at any stage in the proceedings of a case,
and an attorney or agent may withdraw, upon appli-
cation to and approval by the Commissioner ; and when
it is so revoked, or the attorney or agent so withdrawn,
the Office will communicate directly with the appli-
cant, or with such other attorney or agent as he may
appoint. An attorney or agent will be notified of the
revocation of his power of attorney or authorization and
the applicant will be notified of the withdrawal of the
attorney or agent.

[Old Rule 20]

Upon revocation of the power of the principal
attorney, appropriate notification is sent by the
Docket Branch. Note: The Examiner notifies
associate attorney of his revocation, see 402.06
(a).

Revocation of the power of the principal at-
torney revokes powers granted by him to other
attorneys.

Revocation of the power of attorney becomes
effective on the date that the revocation is RE-
CEIVED in the Office (in contradistinction to
the date of ACCEPTANCE).

## 402.06 (a) Examiner Must Notify As- sociate of Revocation

An associate attorney whose powers have been
revoked shall be formally notified of such revocation
by the Examiner unless the case is in interference.
In the latter event, the Docket Branch notifies the
attorney, the reason being that all parties to the
interference must be notified. Such notice addressed
to the associate attorney will take the form of the
usual letter from the examiner on blank (POL-90)
and will be in the following language:

You are hereby informed that the associate
power of attorney to
in the
above-entitled case was revoked

by

Examiner.

This letter will not be counted as an action on the
application in which it is entered. (Order No. 2024,
Revised).

Note: Docket Branch always notifies prin-
cipal attorney of his revocation, see 402.06.

### 402.07 Attorney Withdraws

See Extract from Rule 36 in 402.06.

In the event that a notice of withdrawal is filed
by the attorney or attorneys of record, the file will

be forwarded to the Docket Branch where appro-
priate procedure will be followed pertaining to the
withdrawal. (Notice of May 15, 1934, Revised).

# 402.08 Assignee Can Revoke Power of Attorney of Applicant

The assignee of the entire interest can revoke
the power of attorney of the applicant under
the provisions of Rule 32.

Rule 32. Prosecution by assignee. The assignee of
record of the entire interest in an application for patent
is entitled to conduct the prosecution of the application
to the exclusion of the inventor.

[Old Rule 5]

Extract from Rule 36. An assignment will not of
itself operate as a revocation of a power or authoriza-
tion previously given, but the assignee of the entire
interest may revoke provious powers and be represented
by an attorney or agent of his own selection.

[Old Rule 20]

A power of attorney by the assignee of the
whole interest, if the assignment is recorded in
the Office, revokes all powers given by applicant.

# 403 Correspondence-With Whom Held

Rule 35 states that when an attorney has been
duly appointed to prosecute an application cor-
respondence will be held with the attorney.
Double correspondence with an applicant and
his attorney, or with two representatives, will
not be undertaken. See 403.01 and 403.02.

# 403.01 Correspondence Held With As- sociatę Attorney

Where the attorneys bear relation of principal
attorney and associate attorney, the correspond-
ence will be had with the associate attorney
unless the principal attorney directs otherwise.
Ex parte Eggan, 1911 C. D. 213; 172 O. G. 1091.

# 403.02 Two Attorneys for Same Appli- cations

If applicant simultaneously appoints two
principal attorneys he should indicate with
which correspondence is to be conducted. If one
is a local (D. C.) attorney and applicant fails
to indicate either attorney, correspondence will
be conducted with the local attorney.

If after one attorney is appointed a second
attorney is later appointed by applicant, with-
out revocation of the power of the first attorney,
the name of the second attorney is entered on
the face of the file (Ex parte Eggan, 1911 C. D.
213; 172 O. G. 1091), with notation that the
Office letters are to be sent to him.

Rev. 1 Nov. 1950

Revocation

\* WITHDRAWAL

IS HANDLED

of
ASSOCIATE
by
OWN DIVISION

ATTY

ACCORD

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

# 404 Conflicting Parties Having Same Attorney

See Rule 208 in 1101.01 (k).

## 405 Attorney Not of Record

When an amendment is filed, signed by an
attorney whose power is not of record, see
714.01 (c).

## 406 Death of Attorney

The Committee on Enrollment sends out notices
of deaths of attorneys and agents who are on the
Roster. When the name of such a deceased attorney
still appears as the sole attorney of record at the
time of taking the next Office action, the Examiner
will, as a precautionary measure, mail the carbon
copy of the action (labeled COPY) directly to the
applicant, the other copy being mailed to the office
address of the deceased attorney with the following
statement: The Patent Office having received notice
of the death of the attorney of record, a copy of this
action is being mailed directly to the applicant.
(Notice of December 12, 1949, revised.)

When, after the death of the attorney of record,
an amendment is filed by an attorney whose power
is not of record, the amendment should be placed
in the file and the applicant and the attorney who
filed the amendment should be notified that it can-
not be entered unless it is promptly ratified by the
applicant or by an attorney whose power has been
made of record at the time of such ratification.

An amendment signed by an assistant in the
office of the attorney, the latter having died, may
be admitted, subjected to future ratification.

If the ratification is promptly filed, the amend-
ment should be entered as of the date on which the
amendment was filed. (Notice of May 3, 1948, Re-
vised.)

In carrying out these instructions, Primary Exam-
iners should not set a definite time within which
ratification must be filed, but the word "promptly"
as used above should be used in the notification.
The question of promptness or undue delay in ratifi-
cation should be left for determination when the
ratification is filed and the question of entry of the
amendment arises. In forming a judgment as to
whether any particular ratification has been filed
promptly, consideration should be given to the place
of residence of the applicant and other pertinent
circumstances. (Memorandum of June 28, 1948.)

## 407 Disbarred Attorney

See 105.

### 408 Representatives of Out-of-Town Attorneys

Many attorneys have offices or representatives
in Washington and it sometimes expedites busi-

ness to interview them concerning an applica-
tion. When the Examiner believes the progress
of the application would be advanced thereby,
he may call the attorney in the case by telephone
and ask him to come to the Office. Listings of
Washington representatives of out-of-town at-
torneys are kept by the Clerk in charge of the
Attorney's Roster.

### 409 Death of Inventor

Unless it is coupled with an interest (i. e.,
the attorney is also an assignee or part-
assignee), the death of the inventor termi-
nates the power of attorney. Hence, an
amendment signed by the attorney after the
death of the inventor should be ratified by the
heirs, administrators, executors or assigns.
Such an amendment may, however, save the case
from abandonment. Therefore ratification is
called for together with proof of authority of
the one ratifying the action. See In re Matul-
lath, 1912 C. D. 490; 179 O. G. 853. See follow-
ing paragraphs.

### 409.01 Prosecution by Administrator or Executor

Rule 42 When the inventor is dead. In case of the
death of the inventor, the executor or administrator of
the deceased inventor may sign the application papers
and make the necessary oath, and apply for and obtain
the patent. Where the inventor dies during the time
intervening between the filing of his application and
the granting of a patent thereon, the letters patent may
be issued to the executor or administrator upon proper
intervention by him.

[Old Rule 25, par. 1]

Application may be made by the heirs of the
inventor, as such, if accompanied by a certificate
from the court that they are all the heirs and
that the estate was under the sum required by
state law for the appointment of an adminis-
trator.

Rule 48 When the inventor is insane. In case an
inventor becomes insane, the legally appointed guardi-
an, conservator, or representative of the insane inven-
tor may sign the application papers and make the nec-
essary oath, and apply for and obtain the patent.

[Old Rule 25, par. 2]

### 409.01 (a) Proof of Authority To Be of Record

Rule 44 Proof of authority. In the cases mentioned
in Rules 42 and 43, proof of the power or authority of
the executor or administrator, or of the guardian, con-
servator, or representative, must be recorded in the
Patent Office before the grant of a patent.

Whenever, because of the death of an inventor,
the right of applying for and obtaining a patent for

<!-- PageFooter="Rev. 1 Nov. 1950" -->

(

(

:

(

<!-- PageBreak -->

<!-- PageHeader="REPRESENTATIVE OF INVENTOR OR OWNER" -->
<!-- PageHeader="409.01 (e)" -->

an invention devolves upon an executor or admin-
istrator, or whenever an executor or administrator
desires to intervene prior to the granting of a patent,
proof of the authority of such executor or adminis-
trator should in all cases be made of record in the
assignment records of this office by recording a cer-
tificate of the clerk of a competent court or of the
register of wills that his appointment is still in full
force and effect. Such certificate shall be signed by
an officer and authenticated by the seal of the court
by which the same was issued.

Should such certificate of appointment be found
to be insufficient for any reason, there may be re-
quired to be recorded a certified and properly au-
thenticated copy of the letters testamentary or of the
letters of administration, in order that the scope of
authority of the persons who seek to intervene may
be a matter of record in this Office.

In order to insure the proper issuance of patents
and in the interest of uniformity of practice, all
applications filed by an executor or administrator
or in which an executor or administrator has inter-
vened or in which the death of the inventor has been
suggested, are referred to the Assignment Branch to
ascertain whether proper authority is of record, and
for suitable endorsement on the file before finally
passing the case to issue.

In any case in which the Chief of the Assignment
Branch reports that the authority of the executor or
administrator of records in the case is insufficient,
the examiner will require the recording in the As-
signment Branch of a certificate of such appoint-
ment or a certified copy of letters testamentary or of
letters of administration in such case before finally
passing the case to issue. (Extract from Order No.
1838)

409.01 (b)
After Administrator or Ex-
ecutor Has Been Dis-
charged

When an Administrator or Executor has per-
formed his functions and has been discharged

and it is desired to make an application for an
invention of the deceased, it is necessary for the
Administrator or Executor to take out new let-
ters of administration in order that he may file
a new application of the deceased inventor.

# 409.01 (c) Exception in Some For- eign Countries

The terms "Executor" and "Administrator"
do not find an exact counterpart in all foreign
countries and the procedure is governed by the
necessity of construing those terms to fit the cir-
cumstances of the case. Hence the person or
persons having authority corresponding to that
of Executor or Administrator are permitted to
make application as, for example, the heirs in
Germany. The authority of such person or
persons must be proved by certificate of a diplo-
matic or consular officer of the United States.

# 409.01 (d) If Applicant of Assigned Application Dies

Where an applicant, carrying on the prosecu-
tion of an application after assignment, dies,
his administrator may carry on the prosecution
on filing letters of administration unless and
until the assignee intervenes.

# 409.01 (e) Intervention of Executor Not Compulsory

When an inventor dies after filing an application
the executor or administrator should intervene, but
the allowance of the application will not be with-
held nor the application withdrawn from the issue
if the executor or administrator does not intervene.
(Order No. 2076)

<!-- PageFooter="Rev. 1 Nov. 1950" -->