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
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 Application

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 or Executor is Dis-
charged

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 Attor-
ney 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 can-
not 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 per-
sons entitled to prosecute the application or from the
principal attorney or agent in the case of an associate
attorney or agent, must be filed in that particular ap-
plication 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 ac-
companied by a power of attorney or authori-
zation 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 letter. A copy of the let-
ter will be sent to the person named in the
power of authorization and a copy placed in
the file without being given a paper number.
The name of the unregistered person will not
be placed on the face of the file, and the ex-
aminer will communicate only with the appli-
cant directly unless and until the applicant
appoints a recognized practitioner. An asso-
ciate power of attorney or authorization from
the unregistered person will not be recognized
or accepted. If a request for special recogni-
tion accompanies the application, the Appli-
cation Branch will forward the file to the
Chairman of the Committee on Enrollment.
(Basis: 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 reg-
istered and not entitled to be recognized under rule
341 as an attorney or agent to represent applicants
generally may, upon a showing of circumstances which
render it necessary or justifiable, he recognized by the
Commissioner to prosecute as attorney or agent a spec-
ified application or applications, but this limited recog-
nition shall not extend further than the application 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 rec-

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402.02

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ognized 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 attor-
ney. 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." See also 406.

# 402.03 Appointment of Substitute At- torney

In order to simplify the procedure relative
to new powers of attorney filed in connection
with the formation, dissolution or reorganiza-
tion of firms, a power of attorney signed by
the attorney or firm originally empowered to
act appointing a substitute attorney or firm,
will be accepted provided that the original
power of attorney authorizes & substitution
and provided further that the substitute attor-
ney or firm includes at least one person who
was empowered to act under the original power
of attorney.

Except as indicated above, no appointment
of a substitute attorney will be accepted unless
it is signed or concurred in by the applicant or
the assignee of the entire interest. In all cases
where the substitute power of attorney is ac-
cepted, the name of the replaced attorney or
firm will be cancelled from the file.

The Docket Clerk of the examining division
will enter all proper substitute powers of at-
torney filed in ex parte cases which are signed
by the principal attorney or firm. Other sub-
stitute powers of attorney should be for-
warded immediately to the Docket Branch for
acknowledgment, acceptance and entry when
property signed or for return when not in
compliance with this Notice. (Basis: Notice
of April 23, 1957.)
See 402.07.

# 402.04 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 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 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 pres-
entation 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 attor-
ney to a firm, Rule 346 requires (1) the sig.
nature of the firm, or (2) the signature of
an individual member of the firm, or (3)
the signature of an individual registered at-
torney or agent employed by the firm and
duly authorized to sign on behalf of the firm.
Under (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. (Basis: Notice of
March 7, 1949.)

# 402.04(a) Firm of Attorneys Changes Name

Where a firm having power of attorney in
a case changes its firm name, due, for exam-
ple, 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.
(Basis: Notice of Sept. 4, 1894.)

A mere change of firm name will be accepted
regardless of whether or not authority to sub-
stitute another attorney was included in the
original power of attorney. It 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. A notice of the
change of firm name should be signed in the
name of the firm as constituted immediately
before the change.

Notation of change of firm name must be
filed in each application involved. It is not
sufficient merely to notify the Clerk, Committee
on Enrollment.

# 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-

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403.01

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, except an amociate
attorney or agent whose address is the same as that of
the principal 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
attorney revokes powers granted by him to
other attorneys.

Revocation of the power of attorney be-
comes effective on the date that the revocation
is RECEIVED in the Office (in contradis-
tinction to the date of ACCEPTANCE).

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

An associate attorney whose power has been
revoked shall be formally notified of such
revocation by the Examiner unless the case
is in interference or on appeal. If the case
is in interference, 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 ex-
aminer 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 402.05.

# 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 appropriate procedure will be
followed pertaining to the withdrawal. (Ba-
sis: Notice of May 15, 1934.)

# 402.07. Assignee Can Revoke Power of Attorney of Applicant

The amignee of the entire interest can re-
woke the power of attorney of the applicant
unless an "irrevocable" right to prosecute the
case had been given.

Rule 22. Prosecution by assignee. The assignee of
record of the entire interest in an application for pat-
ent is entitled to conduct the prosecution of the appli-
cation 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 inter-
ference, no power of attorney of any kind
should be entered in such application by the
Docket Clerk of the Group. (Basis: Memo-
randum of March 31, 1950.)

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 appli-
cation correspondence will be held with the
attorney. Double correspondence with an ap-
plicant and his attorney, or with two repre-
sentatives, will not be undertaken. See 403.01,
403.02 and 714.01(d).

In a joint application with no attorney, the
applicant whose name first appears in the
papers receives the correspondence, unless
other instructions are given. All applicants
must sign the responses. See 714.01 (a).

# 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.

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# 405.02 | Two Attorneys for Same Appis- 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 let-
ters are to be sent to him. This applies also
to associate attorneys.

## 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

#### MEMBER OF FIRM

Death of an individual attorney does not
terminate a power of attorney to his firm. See
5 J.P.O.S. 337, 338. See 402.04(a) for
change of firm name due to death of an
attorney.

#### SOLE ATTORNEY

When an attorney listed as deceased by the
Committee on Enrollment 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 Of-
fice having received notice of the death of the
attorney of record thus terminating his power,
a copy of this action is being mailed directly
to the applicant. Applicant may appoint a
new attorney. (Basis: Notice of December 12,
1949.)

When, after the death of the attorney of
record, an amendment is filed »" 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 cannot 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 assi ant 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
principal attorney results in the lapse of power
of any associate attorney appointed by him.
Accordingly, an amendment signed by such
associate attorney and filled 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
amendment should be entered as of the date
on which the amendment was filed. (Basis:
Notice of May 3, 1948.)

In carrying out these instructions, Primary
Examiners 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 prompt-
ness or undue delay in ratification should be
left for determination when the ratification is
filed and the question of entry of the amend-
ment 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. (Basis: Memo-
randum of June 28, 1948.)

# 407 Disbarred Attorney

# See 105.

## 408 Telephoning Attorneys

Attorneys have been encouraged to go on
record as requesting a telephone call from the
Examiner in the event that a forthcoming Of-
fice action will be "other than allowance". If
the Examiner is of the opinion that it would be
useless to discuss the case by telephone prior to
making the contemplated final action, he
should not call the attorney by phone but
should proceed to make the action and should
state therein that the request for a telephone
call has been noted but has not been complied
with for the reason that it appeared to the Ex-
aminer that, the requested telephone interview
would not be effective to advance the prosecu-
tion of the case. This will apply not only to
situations in which the Examiner feels that the
application contains nothing patentable, but
also to those in which the issues are of such a na-

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ture that it would not be practicable to resolve
them in a telephone conversation. If there are
minor changes which would probably be ac-
ceptable and which would place the application
in condition for allowance, the attorney should
be so notified by telephone and this practice
may be followed whether or not there has been
a specific request for such notification.

SPECIFIC TELEPHONE INTERVIEW'S
Restriction of invention (812.01).
Multiplicity (706.03(1)).

Many attorneys have offices or representa-
tives in Washington and it sometimes expe-

dites business to interview them concerning an
application. 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 attorneys are kept in the offices of the
various Directors of Operations.

## 409 Death, Insanity, or Unavailability of Inventor

If the inventor is dead, insane or otherwise
legally incapacitated, refuses to execute an
application, or cannot be found, an application
may be made by someone other than the in-

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4.0(b)

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wentor, as specified in the following para-
grapha.

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 Eled 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 (or one of
joint inventor) terminates the power of attor-
ney and a new power from the heirs, adminis-
trators, executors or assigns is necessary (but
see 409.01(f)) and also a ratification of any
amendment filed after the death of the inventor
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.

One who has reason to believe that he will
be appointed legal representative of a deceased
inventor may apply for a patent as legal rep-
resentative in accordance with Rule 42. Such
application will be considered as having been
made on the date of receipt of all its required
parts, or of the part which renders it com-
plete, (Rules 51 and 53) provided proof of
applicant's authority as legal representative
is subsequently filed. The filing date corre-
sponding to said date of receipt will be can-
celed if another person is appointed legal rep-
resentative. In the latter case, the application
will be given an application date no earlier
than the date on which the properly appointed
legal representative actually executed the
papers. The foregoing applies to the legal
representative of a deceased sole or deceased
joint inventor.

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 ad-
ministrator.

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

Whenever because of the death of an in-
ventor, the right of applying for and obtain-
ing a patent for an invention devolves upon
an executor or administrator, 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 filling in the application or
recording in the assignment records a certifi-
cate of the clerk of a competent court or 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 repre-
sentatives of the inventor must be similarly
established.

Should such certificate of appointment be
found to be insufficient for any reason, there
may be required to be filed or recorded a cer-
tified and properly authenticated copy of the
letters testamentary or of the letters of ad-
ministration, in order that the scope of author-
ity of the persons who seek to intervene may
be a matter of record in this Office.

All applications filed by an executor or
administrator are initially referred to the
Assignment Branch to ascertain' whether
proper authority has been recorded or "filed
in the application" (Rule 44) and for suitable
endorsement on the file. If the authority 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 Assignment Branch.

In any case in which the Chief of the As-
signment Branch reports that the authority of
the executor or admiinstrator of record in the
case is insufficient, the Examiner will require
the filing in the application or the recording
in the Assignment Branch of a certificate of
such appointment or a certified copy of letters
testamentary or of letters of administration in
such case before finally passing the case to
issue. (Basis: Order No. 1838.)

In the case of foreign executors or adminis-
trators, it was formerly the practice to have
the following form executed by a consular
officer of the United States and filed in the

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· 400.01 (€)

application, thus eliminating the necessity of
filing any other proofs:
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 Luzes is the person authorized to act as
executor or administrator of the estate of
decessed, lete of
"In testimony whereof, I hereunto set my
hand and seal this __ day of ____ , 19 __.

U.S. Consul"

Use of such forms has been discontinued by
the Department of State. The consular officer
may, as heretofore, authenticate the signature
of the foreign officer attesting to the papers
submitted as proof of authority. Unusual sit-
uations 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
performed his functions and has been dis-
charged and it is desired to make an applica-
tion for an invention of the deceased, it is
necessary for the Administrator or Executor
to take out new letters 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 circumstances of the case. Hence the per-
son or persons having authority corresponding
to that of Executor or Administrator are per-
mitted 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 prose-
cution of an application after assignment, dies,
his administrator may carry on the prosecu-
tion 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 appli-
cation the executor or administrator should
intervene, but the allowance of the application
will not be withheld nor the application with-
drawn from the issue if the executor or ad-
ministrator does not intervene. (Basis: 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 issue prior to notification of the death of
the inventor. See 409.01.

# 409.02 Insanity or Other Legal In- capacity

Rule 13. 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 insan-
ity 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

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409.03

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 Alling
the application. The Office shall forward notice of
the filling 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
filling of the application shall be published in the Om-
cial Gazette. The inventor may subsequently join in
the application on filing an oath of the character re-
quired by rule 65. A patent may be granted to the
inventor upon a showing satisfactory to the Commis-
sioner.

Rule 47(a) and 35 U.S.C. 116 permit a joint
inventor to file an application "on behalf of"
himself and a joint inventor who "cannot be
found or reached after diligent effort" or who
refuses to sign application papers. Rule 47(b)
and 35 U.S.C. 118 allow a person with a dem-
onstrated proprietary interest to make appli-
cation "on behalf of and as agent for" the in-
ventor under the same circumstances. Neither
section of Rule 47, however, is intended as an
alternative to Rule 42 since the language "can-
not be found or reached after diligent effort"
has no reasonable application to a deceased in-
ventor. In re Application Papers filed Sep-
tember 10, 1954, 703 O.G. 434. See Rule 42
and 409.01.

Application papers submitted under Rule 47
are forwarded by the Application Branch to
the Office of the Solicitor for determination
whether the papers are proper and complete
and whether the verified showing justifies ac-
ceptance under either paragraph of the rule.
Where a refusal of the inventor to sign the
application papers is alleged, the circumstances
of this refusal must be specified in the affidavit.
Where inability to find or reach an inventor
"after diligent effort" is the reason for filing
under Rule 47, the affidavit should include the
exact circumstances which are relied upon to
establish that a diligent effort was made.
Where the application is made under Rule
47(b) and 35 U.S.C. 118, the papers must also
show the necessity for so filing and must be
accompanied at filing by papers establishing
an assignment or written agreement to assign,
or by other satisfactory evidence of proprie-
tary interest.

Rule 65(b) requires that in Rule 47 applica-
tions the joint applicant in applications under

Rule 47(s) or the person having a proprietary
interest in applications under Rule 47(b), state
his relationship to the inventor and, upon in-
formation and belief, the facts which the in-
ventor is required by Rule 65 to make oath to.
In applications under Rule 47(b) and 35
U.S.C. 118, in addition, the petition must re-
quest grant of the patent to the inventor.

If an application under Rule 47 is accepted,
a statement to this effect is entered in the file,
a notice sent to the "inventor designee" at his
last known address, and the application given
a serial number. The Examiner will act on the
Rule 47 application in the usual manner except
that papers filed by an inventor who did not
originally join in the application and papers
relating to its Rule 47 status will be forwarded
to the Solicitor's Office for consideration.

The Office of the Solicitor will determine, in
such event, whether the papers meet the re-
quirements of Rule 65 including the require-
ment, implicit in that rule, that the oath be
made on the basis of actual knowledge of the
application papers on file. This knowledge
may be demonstrated by reference in the oath
to an attached copy of the application.

The "inventor designee" may protest his des-
ignation as an inventor and offer evidence to
support his position. The Office in such case.
although it will allow the "inventor designee"
to make his position of record in the file of the
application and will grant him access to the
application, will not institute inter partes pro-
ceedings in the Rule 47 application. The
rights of said inventor are protected by the
fact that that in an application filed under
Rule 47(b) and 35 U.S.C. 118 the patent must
issue to the inventor and in an application filed
under Rule 47(a) and 35 U.S.C. 118 the in-
ventor has the rights of a joint applicant. In
re Application of Hough et al., 703 O.G. 200.

The Office of the Solicitor, after indication
by the Examiner that the case is allowable
(unless completely executed papers have mean-
while been filed) will notify the inventor des-
ignee and set a period of time, usually thirty
days, in which he may take any action he con-
siders appropriate. At the same time the rec-
ord will be finally reviewed to determine
whether it shows an adequate effort has been
made to obtain his signature. If the applica-
tion meets the requirements of Rule 47, the
Examiner at the expiration of the period set,
will be so notified by memorandum and the
application may be passed to issue. The fact
that the application was made under Rule 47
will be indicated in the heading of the patent.

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4100!
MANUAL OF PATENT EXAMINING PROCEDURE

# 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 signed by ap-
plicant or assignee. (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 in-
terference. (See 402.08.)

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

Associate power of attorney. (See 402.02.)
Substitute power of attorney signed by orig-
inal attorney. (See 402.08.)

Change in firm name. (See 402.03.)

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,
Conservator or other such legal representative
of the inventor if proof of authority is re-
corded and not merely "filed" in the applica-
tion. See 409.01 (b) and 409.02.