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# 8 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
Appointment of Substitute Attorney

402.04
To a Firm

402.04
a) Firm of Attorneys Changes Name

402.05
Revocation

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

402.06
Attorney Withdraws

402.07
Assignee Can Revoke Power of Attorney of
Applicant

402.08
Application in Interference

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, Insanity, or Unavailability of Inventor

409.01
Death of Inventor

409.01 (a)
Prosecution by Administrator or Executor

409.01 (b)
Proof of Authority

409.01 (c)
After Administrator is Discharged

409.01 (d)
Exception in Some Foreign Countries

409.01 (e)
Applicant of Assigned Application Dies

409.01 (f)
Intervention of Administrator not Com-
pulsory

409.02
Insanity or Other Legal Incapacity

409.03
Unavailability of Inventor

410
Handling of Papers Received after Application
is Filed

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

Rule 31. 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.

## 402 Power of Attorney

Rule 34. Power of attorney or authorization. Be-
fore 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
attorney or authorization, from the person or persons
entitled to prosecute the application or from the prin-
cipal attorney or agent in the case of an associate
attorney or agent, must be filed in that particular
application or proceeding.

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 Appli-
cation Branch will forward the file to the Chair-
man of the Committee on Enrollment. (Notice of
March 29, 1949.

See also 1702. If power of attorney is filed after
application is filed, see 410.

## 402.01 Exceptions as to Registration

Rule .342. Limited recognition. Any person not
registered and not entitled to be recognized under
rule 341 as an attorney or agent to represent appli-
cants generally may, upon a showing of circumstances
which render it necessary or justifiable, be recognized
by the Commissioner to prosecute as attorney or agent
a specified application or applications, but this limited
recognition shall not extend further than the applica-
tion or applications specified.

Sometimes in a joint application one of the
coinventors gives to the other the power of
attorney in the case. Such power will be recog-

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nized even though the one to whom it is given
is not registered.

# 402.02 Appointment of Associate At- torney

The principal attorney (either original or
substituted) may appoint an associate attorney.
The associate attorney cannot appoint another
attorney; this being indicated by the portion
of Rule 34 which states that the power of at-
torney or authorization must be "from the prin-
cipal attorney or agent in the case of an asso-
ciate attorney or agent." See also 406.

## 402.03 Appointment of Substitute At- torney

Except as indicated below, no appointment of
a substitute attorney will be accepted unless it is
signed or concurred in by the applicant or the as-
signee of the entire interest. This will not apply
to cases where the name and membership of a firm
are changed and a substitute power from the old
firm is filed. In all cases where the substitute power
is accepted, the name of the replaced attorney or
firm will be canceled from the file.

To insure uniformity of handling all substitute
powers and changes of firm name which are headed
"Substitute" powers should be forwarded immedi-
ately to the Docket Branch for acceptance, acknowl-
edgment and entry when properly signed or for
return when not in compliance with this Notice.
(Notice of July 13, 1953, Revised.) See 402.07.

## 402.04 Power of Attorney to a Firm

Rule 846. 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 appli-
cation itself and affidavits required of applicants).
The signature of an attorney or agent to a paper filed
by him, or the filing or presentation of any paper by
him, constitutes a certificate that the paper has been
read; that its filling 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 employed 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
presentation 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 requires (1) the signature of the
firm, or (2) the signature of an individual member
of the firm, or (3) the signature of an individual
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.)

# 402.04 (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.)

A notice of the change of firm name should
be signed in the name of the firm as constituted
immediately before the change.

A notice of change of firm name, not headed
"Substitute Power of Attorney", is entered by
the docket clerk of the division by amending
the old firm name on the face of the file wrap-
per. See 402.03 and 410.

# 402.05 Revocation

Extract from Rule 36. 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.

Upon revocation of the power of the princi-
pal attorney, appropriate notification is sent
by the Docket Branch. Note: The Examiner
notifies associate attorney of his revocation, see
402.05 (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).

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## E 402.05 (a) Examiner Must Notify As- sociate of Revocation

An associate attorney whose power has been re-
voked 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 principal at-
torney of his revocation, see 402.05.

### 402.06 Attorney Withdraws

See Extract from Rule 36 in 402.05.

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.)

### 402.07 Assignee Can Revoke Power of Attorney of Applicant

The assignee of the entire interest can revoke
the power of attorney of the applicant unless an
"irrevocable" right to prosecute the case had
been given.

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.

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

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

# 402.08 Application in Interference

While an application is involved in interference,
no power of attorney of any kind should be entered

in such application by the Docket Clerk of the
Division. (Memorandum of March 31, 1950, Re-
vised.)

If a power of attorney or revocation is re-
ceived for an application while in interference,
it should be forwarded to the Docket Branch
because all parties to the interference must be
notified. See 410.

# 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- sociate Attorney

Where the attorneys bear relation of princi-
pal attorney and associate attorney, the
correspondence 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, correspond-
ence will be conducted with the local attorney.

If, after one attorney is appointed, a second
attorney is later appointed without 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.

# 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

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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 thus termi-
nating his power, a copy of this action is being
mailed directly to the applicant. Applicant may
appoint a new attorney. (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
filled 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, subject to future ratification.

It should be observed that the death of the prin-
cipal attorney results in the lapse of power of any
associate attorney appointed by him. Accordingly,
an amendment signed by such associate attorney
and filed after the death of the principal attorney
cannot be entered and should be treated as directed
hereinabove in the case of an attorney whose power
is not of record.

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 representa-
tives in Washington and it sometimes expedites

business to interview them concerning an appli-
cation. When the Examiner believes the prog-
ress of the application would be advanced there-
by, he may call the attorney in the case by tele-
phone and ask him to come to the Office. List-
ings of Washington representatives of out-of-
town attorneys are kept by the Clerk in charge
of the Attorney's Roster.

### 409 Death, Insanity, or Unavailability of Inventor

If the inventor is dead, insane or otherwise
legally incapacitated, refuses to execute an ap-
plication, or cannot be found, an application
may be made by someone other than the inven-
tor, as specified in the following paragraphs.

Rule 44. Proof of authority. In the cases mentioned
in rules 42 and 43, proof of the power or authority of
the legal representative must be recorded in the Pat-
ent Office or filed in the application before the grant
of a patent.

### 409.01 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 terminates the power
of attorney and a new power from the heirs,
administrators, executors or assigns is necessary
(but see 409.01 (f)) and also a ratification of
any amendment filed after the death of the in-
ventor by the first-appointed attorney. 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 Mattullah, 1912
C. D. 490; 179 O. G. 853. See following para-
graphs.

### 409.01 (a) Prosecution by Adminis- trator or Executor

Rule 42. When the inventor is dead. In case of the
death of the inventor, the legal representative (execu-
tor, administrator, etc.) 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 legal
representative upon proper intervention by him.

Application may be made by the heirs of the
inventor, as such, if accompanied by a certifi-
cate 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 admin-
istrator.

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409.01 (f)

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#### 409.01 (b) Proof of Authority of Ad- ministrator or Executor

Whenever, because of the death of an inventor,
the right of applying for and obtaining a patent for
an invention devolves upon an executor or adminis-
trator, or whenever an executor or administrator
desires to intervene prior to the granting of a
patent, proof of the authority of such executor or
administrator should in all cases be made of record
in the Patent Office by filing in the application or
recording in the assignment records a certificate 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. The authority of other legal
representatives of the inventor must be similarly
established.

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

All applications filed by an executor or administra-
tor are initially referred to the Assignment Branch
to ascertain whether proper authority has been re-
corded or "filed in the application" (Rule 44) and
for suitable endorsement on the file. If the author-
ity is insufficient, correspondence is conducted by the
Assignment Branch. When a reply is received to
such correspondence and also in cases where the
executor or administrator intervenes (after filing),
the case should be sent immediately to the Assign-
ment Branch.

In any case in which the Chief of the Assignment
Branch reports that the authority of the executor
or administrator of record in the case is insufficient,
the Examiner will require the filing in the applica-
tion or the recording in the Assignment Branch of
a certificate of such appointment or a certified copy
of letters testamentary or of letters of administra-
tion in such case before finally passing the case to
issue. (Extract from Order No. 1838, Revised.)

In the case of foreign executors or adminis-
trators, it is suggested that the following form
(from 300 O. G. 205), or the equivalent, be
executed before a consular officer of the United
States and filed in the application, thus elim-
inating the necessity of filing any other proofs :
"I, ____ Consul of the United States of
America, at ____ , duly commissioned and quali-
fied, do hereby certify that there have been ex-
hibited to me papers issued by ____ the author-
ized authorities in this jurisdiction which show

that
is the person authorized to act as
executor or administrator of the estate of
deceased, late of

"In testimony whereof, I hereunto set my
hand and seal this __ day of ______ , 19 __.

U. S. Consul"
Unusual situations may be referred to the
Office of the Solicitor.

# 409.01 (c) After Administrator or Executor 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 (d) 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 persons
must be proved by an appropriate certificate.

# 409.01 (e) 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 (f) 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.)

The practice set forth in the foregoing order
is applicable to an application which has been
placed in condition for allowance or passed to

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issue prior to notification of the death of the in-
ventor. See 409.01.

# 409.02 Insanity or Other Legal In- capacity

Rule 43. When the inventor is insane or legally in-
capacitated. In case an inventor is insane or other-
wise legally incapacitated, the legal representative
(guardian, conservator, etc.) of such inventor may
sign the application papers and make the necessary
oath, and apply for and obtain the patent.

The provisions of Order No. 1838, Revised
(see 409.01 (b)) are applicable in case of in-
sanity or other legal incapacity of an inventor.

# 409.03 Unavailability of Inventor

Rule 47. Filing by other than inventor. (a) If a
joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent
effort, the application may be made by the other in-
ventor on behalf of himself and the omitted inventor.
Such application must be accompanied by proof of the
pertinent facts and must state the last known address
of the omitted inventor. The Patent Office shall for-
ward notice of the filing of the application to the
omitted inventor at said address. Should such notice
be returned to the Office undelivered, or should the
address of the omitted inventor be unknown, notice of
the filing of the application shall be published in the
Official Gazette. The omitted inventor may subse-
quently join in the application on filing an oath of
the character required by rule 65. A patent may be
granted to the inventor making the application, upon a
showing satisfactory to the Commissioner, subject to
the same rights which the omitted inventor would
have had if he had been joined.

(b) Whenever an inventor refuses to execute an
application for patent, or cannot be found or reached
after diligent effort, a person to whom the inventor
has assigned or agreed in writing to assign the inven-
tion or who otherwise shows sufficient proprietary in-
terest in the matter justifying such action may make
application for patent on behalf of and as agent for
the inventor. Such application must be accompanied
by proof of the pertinent facts and a showing that
such action is necessary to preserve the rights of the
parties or to prevent irreparable damage, and must
state the last known address of the inventor. The
assignment, written agreement to assign or other evi-
dence of proprietary interest, or a verified copy thereof,
must be filled in the Patent Office at the time of filing
the application. The Office shall forward notice of
the filing of the application to the inventor at the
address stated in the application. Should such notice
be returned to the Office undelivered, or should the

address of the inventor be unknown, notice of the
filing of the application shall be published in the Off-
cial Gazette. The inventor may subsequently join in
the application on filing an oath of the character
required by rule 65. A patent may be granted to
the inventor upon a showing satisfactory to the
Commissioner.

Rule 47 permits filing of an application by
someone other than the inventor in certain
cases and permits filing by only part of a group
of joint inventors in certain cases.

When an application is filed under the cir-
cumstances mentioned, it is treated as in the
nature of a petition to the Commissioner to
accept the application for filing. The papers,
when filed, are forwarded to the Solicitor who
will, on behalf of the Commissioner, make the
decision as to whether or not the application
is to be accepted for filing. If it is not to be
accepted, the necessary action is taken through
the Solicitor's office. If it is accepted, a note
will be placed in the file by the Solicitor that
the application has been accepted for filing.

The Examiner will receive the application
with this matter already determined and will
act on it in the usual manner. At some stage
during the proceedings the parties may file
properly or completely executed papers. If
this is done the papers are entered in the file
as executed papers and the application pro-
ceeds to allowance or otherwise. If no com-
pletely executed papers have been filed by the
time the case is ready for allowance, the Exam-
iner will, when he determines that the case is
otherwise ready for allowance, forward the file
to the office of the Solicitor. A separate deter-
mination is to be made as to whether the patent
will be issued or not. If it is determined to
permit the patent to issue, the file will be re-
turned to the Examiner with instructions to
that effect. If it is determined not to issue
the patent the action relating to the matter
will be handled by the Solicitor's office.

The proof of the pertinent facts referred to
in this rule must of course be verified and must
conclusively show that diligent effort has been
made on the part of the party or parties mak-
ing the application for patent to secure the sig-
nature of or to locate the omitted inventor.

Not only must such a showing of diligent
effort be made at the time of filing the applica-
tion under Rule 47 but such reasonable diligent
effort must be continued throughout the prose-
cution of the case by the party or parties mak-
ing application in order that a final showing
can be made in the case satisfactory to the Com-

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missioner before the grant of the patent is
justified.

## 410 Handling of Papers Received After Application Is Filed

The following should be sent to the Docket
Branch for acceptance, acknowledgment and
entry when properly signed or for return:
Principal power of attorney. (See 402.)
Substitute power of attorney. (See 402.03.)
Change in firm name if headed "Substitute."
(See 402.03.)

Revocation of principal power of attorney.
(See 402.05.)
Withdrawal of attorney. (See 402.06.)

All powers of attorney or revocation of pow-
ers of attorney in applications involved in inter-
ference. (See 402.08.)

The Docket Clerk of the Division will enter
the following provided the application is not
involved in interference:

Change in firm name that is not headed "Sub-
stitute." (See 402.03.)

Associate power of attorney. (See 402.02.)

Revocation of associate power of attorney.
(See 402.05 (a).)

The Assignment Branch will consider and
enter all papers pertaining to the intervention
by an Executor, Administrator, Guardian, Con-
servator or other such legal representative of
the inventor if proof of authority is recorded
and not merely "filed" in the application. See
409.01 (b) and 409.02.

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