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# 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 Power of Attorney to a Firm

102.04(a) Firm of Attorneys Changes Name

402.05 Revocation

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
1.01 Correspondence Held 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
Telephoning 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 of Administrator or
Executor

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

## 401 Patent Office Cannot Aid in Selec- tion of Attorney [R-21]

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.

If patentable subject matter appears to be dis-
closed in a pro se application and it is apparent
that the applicant is unfamiliar with the proper
preparation and prosecution of patent applica-
tions, the Examiner may suggest to the appli-
cant that it may be desirable to employ a

registered patent attorney or agent. The follow-
ing language is suggested for incorporation in
an Office action:

[1] "Since the value of a patent is largely
dependent upon the skillful preparation of
the specification and claims, applicant may
consider it desirable to employ the services of
a registered patent attorney or agent. The
Patent Office cannot aid in the selection of an
attorney or agent."

## 402 Power of Attorney [R-21]

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
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 section 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
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 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 associ-
ate 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 Application
Branch will forward the file to the Chairman
of the Committee on Enrollment.

See also section 1702.

# 402.01 Exceptions as to Registration

Rule 342. Limited recognition. Any person not reg.
istered and not entitled to be recognised under rule
341 as an attorney or agent to represent applicanta
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 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-
ognized even though the one to whom it is
given is not registered.

# 402.02 Appointment of Associate At- torney [R-21]

The principal attorney (either original or
substituted) may appoint an associate attorney.
The associate attorney may not appoint another
attorney; as provided in Rule 34, 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 section
406.

# 402.03 Appointment of Substitute At- torney [R-21]

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 a 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. Firm names do not always fully set
forth firm membership. Questions as to whether
the foregoing conditions have been met may be
referred to the Clerk, Committee on Enrollment.

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 Clerk of the Examining Group will enter
all proper substitute powers of attorney filed in
ex parte cases.

See section 402.07.

# 402.04 Power of Attorney to a Firm [R-21]

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 filled
by him, or the filing or presentation of any paper by
him, constitutes 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 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 attor-
ney 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.

# 402.04(a) Firm of Attorneys Changes Name [R-21]

Where a firm having power of attorney in a
case wishes to change its firm name, due, for ex-
ample, to the addition of a new member or the
withdrawal or death of one of the members,
application for registration of the firm under
the new name, must be made to the Committee
on Enrollment. The application must be signed
by all living members of the firm including both
those who are leaving the firm and the new
members, and must be accompanied by the pre-
scribed fee for registration of a firm.

Notation of change of firm name must addi-
tionally be filed in each application involved.
The prosecution of a case may, however, be con-
tinued in the name of the original firm, if de-
sired. A mere change of firm name may be
noted in an application regardless of whether
or not authority to substitute another attorney
was included in the original power of attorney.
It is entered by the Clerk of the Examining
Group by amending the old firm name on the

403.01

face of the file jacket. See Section 402.03. A
notice in an application of the change of firm
name should be signed in the name of the firm
as it existed immediately before the change.

# 402.05 Revocation [R-21]

Rule 36. Revocation of power of attorney or author-
ization; withdrawal of attorney or agent. A power of
attorney or authorization of agent may be revoked at
any stage in the proceedings of a ease, and an attorney
or agent may withdraw, upon application to and ap-
proval 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 associate
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. An assignment will not of itself
operate as a revocation of a power or authorization
previously given, but the assignee of the entire interest
may revoke previous powers and be represented by an
attorney or agent of his own selection.

Upon revocation of the power of attorney.
appropriate notification is sent by the Clerk of
the Examining Group.

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).

# 402.06 Attorney Withdraws [R-21]

See Rule 36 in section 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 Office of the
Solicitor where appropriate procedure will be
followed pertaining to the withdrawal.

# 402.07 Assignee Can Revoke Power of Attorney of Applicant [R-2]]

The assignee of record of the entire interest
can revoke the power of attorney of the appli-
cant 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 pat-
ent is entitled to conduct the prosecution of the appli-
cation to the exclusion of the inventor.

See Rule 36 in section 402.05.

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 [R-21]

While an application is involved in inter-
ference, no power of attorney of any kind
should be entered in such application by the
Clerk of the Group.

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

# 403 Correspondence -- With Whom Held [R-21]

Rule 35. Correspondence heid with attorney. When
an attorney or agent shall have filed his power of
attorney, or authorization, duly executed, the corre-
spondence will be held with him; notices, official
letters, and other communications in the case intended
for the applicant will be sent to the attorney or agent
at the address of which notice shall have been given
in the case, and replies to Office actions, or other ac-
tions in the case, will be received from him. Double
correspondence with an applicant and his attorney or
agent, or with two representatives, will not be under-
taken. If more than one attorney or agent be appointed,
correspondence will be held with the one last appointed
unless otherwise requested.

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 sections
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 section 714.01 (a).

# 403.01 .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 Jet-
ters are to be sent to him. This applies also
to associate attorneys.

## 404 Conflicting Parties Having Same Attorney [R-21]

See Rule 208 in section 1101.01 (k).

405 Attorney Not of Record [R-21]

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

## 406 Death of Attorney [R-21] MEMBER OF FIRM

Death of an individual attorney does not
terminate a power of attorney to his firm. See
section 402.04(a) for change of firm name due
to death of an attorney.

### SOLE ATTORNEY

If notification is received from the applicant
or assignee of the death of the sole principal at-
torney and the application is up for action by
the Examiner, correspondence is held with the
applicant or assignee who originally appointed
the deceased attorney.

If notification is received from the office of
the decreased attorney and the application is up
for action, the Examiner when preparing the
Office action should add a paragraph such as:

[1] "In view of the notification of the death
of the attorney of record, his power is ter-
minated. Applicant (or assignee if he origi-
nally appointed the deceased attorney) may
appoint a new attorney."

If notification of the death of the sole prin-
cipal attorney is received from the Attorney's
Roster or some outside source, there will be no
paper of record in the file wrapper to indicate
that the attorney is deceased. Correspondence

therefore continues to be held with the office of
the deceased attorney but a copy of the Office
action is also mailed to the person who origi-
nally appointed the attorney. In such an Office
action where the application is not ready for
allowance the Examiner should add a para-
graph similar to the following:

[2] "Notice of the death of the attorney of
record has come to the attention of this Office.
Since his power of attorney is terminated, a
copy of this action is being mailed to appli-
cant (or assignee if he originally appointed
the deceased attorney). Applicant (or as-
signee) may appoint a new attorney.

If notification of the death of the sole prin-
cipal attorney is received from the Attorney's
Roster or some other outside source and the ap-
plication is ready for allowance, the Examiner
prepares the application for allowance and
writes a letter to the office of the deceased at-
torney with a copy to the person who originally
appointed the deceased attorney stating :

[3] "Notice of the death of the attorney of
record has come to the attention of this Office.
Since his power of attorney is thus ter-
minated, and this application is now ready
for allowance, the Notice of Allowance will
be mailed to the office of the deceased attorney
in the absence of a new power of attorney.

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 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 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
principal 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
amendment should be entered as of the date
on which the amendment was filed.

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

409.01 (a)

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.

### 407 Disbarred Attorney [R-21]

See section 105.

### 408 Telephoning Attorneys [R-21]

Present Office policy places great emphasis on
telephone interviews initiated by the Examiner.
For this reason, it is not necessary for an attor-
ney to request a telephone interview. Examiners
are not required to note or acknowledge requests
for telephone calls or state reasons why such
proposed telephone interviews would not be con-
sidered effective to advance prosecution. How-
ever, it is desirable for an attorney to call the
Examiner if the attorney feels the call will
be beneficial to advance prosecution of the case.
See sections 713.01 and 713.05.

#### SPECIIC TELEPHONE INTERVIEW SITUATIONS Restriction of invention (section 812.01). Multiplicity (section 706.03(1) ).

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 in each Examining Group.

Examiners should place all long distance tele-
phone calls through the FTS (Federal Telecom-
munications System), even though collect calls
may have been authorized by the attorney.

To facilitate any telephone calls that may
become necessary, it is strongly recommended
that amendments include the complete telephone
number, with area code and extension, of the
person with whom the interview should be held,
preferably near the signature.

In new applications, the telephone number
may appear on the letter of transmittal or in
the power of attorney, oath or declaration, next
to the attorney's name and address.

### 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-
ventor, as specified in the following paragraphs.

Rale 14. 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 [R-21]

Unless a power of attorney is coupled with an
interest (i.e., an attorney is assignee or part-
assignee), the death of the inventor (or one of
the joint inventors) terminates the power of at-
torney and a new power from the heirs, admin-
istrators, executors or assigns is necessary (but
see section 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
[R-21]

#### 35 U.S.C. 117 Death or incapacity of inventor

Legal representatives of deceased inventors and of
those under legal incapacity may make application for
patent upon compliance with the requirements and ou
the same terms and conditions applicable to the inven-
tor.

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 bis 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

409.01 (b)

# MANUAL OF PATENT EXAMINING PROCEDURE

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 [R-21]

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 administrator 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.

In the case of foreign executors or adminis-
trators, a consular officer of the United States
may authenticate the signature of the foreign
officer attesting to the papers submitted as proof
of authority. Unusual situations may be referred
to the Office of the Solicitor.

## 409.01 (c) After Administrator or Executor Has Been Dis- charged [R-21]

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 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 [R-21]

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 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 prose-
cution 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 [R-21]

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 admin-
istrator does not intervene.

409.03

This practice is applicable to an application
which has been placed in condition for allow-
ance or passed to issue prior to notification of
the death of the inventor. See section 409.01.

# 409.02 Insanity or Other Legal In- capacity [R-21]

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

Section 409.01 (b) is also applicable in case of
insanity or other legal incapacity of an
inventor.

# 409.03 Unavailability of Inventor [R-22]

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 resched after diligent effort, the
application may be made by the other inventor on
behalf of himself and the omitted inventor. Such appli-
cation must be accompanied by proof of the pertinent
facts and must state the last known address of the
omitted inventor. The Patent Office shall forward 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 appli-
cation shall be published in the Official Gazette. The
omitted inventor may subsequently join in the applica-
tion on filing an oath or declaration 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 filed 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 Offre 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 or declaration of the
character required by rule 85. A patent may be granted
to the inventor upon a showing satisfactory to the
Commissioner.

35 U.S.C. 116. Joint inventors

When an invention is made by two or more persons
jointly, they shall apply for patent jointly and each
sign the application and make the required oath, ex-
cept as otherwise provided in this title.

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.
The Commissioner, on proof of the pertinent facts and
after such notice to the omitted inventor as he pre-
scribes, may grant a patent to the inventor making the
application, subject to the same rights which the
omitted inventor would have had if he had been joined.
The omitted inventor may subsequently join in the
application.

Whenever a person is joined in an application for
patent as joint inventor through error, or a joint in-
rentor is not included in an application through error,
and such error arose without any deceptive intention
on his part, the Commissioner may permit the applica-
tion to be amended accordingly, under such terms as
he prescribes.

35 U.S.C. 118. Filing by other than inventor

Whenever an inventor refuses to execute an applica-
tion for patent, or cannot be found or reached after
diligent effort, a person to whom the inventor has as-
signed or agreed in writing to assign the invention or
who otherwise shows sufficient proprietary interest in
the matter justifying such action, may make applica-
tion for patent on behalf of and as agent for the in-
ventor on 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 the
Commissioner may grant a patent to such inventor
upon such notice to him as the Commissioner deems
sufficient, and on compliance with such regulations
as he prescribes.

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 IT.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. Rule 47
should not be considered an alternative to Rule
42, since the language "cannot be found or
reached after diligent effort" has no reasonable
application to a deceased inventor. ( In re Appli-
cation Papers filed September 10, 1954, 703 O.G.
434: See Rule 42 and section 409.01.) How-
ever, Rule 37 does apply to situations where a
legal representative of a deceased inventor can-

not be found or reached after diligent effort,
or where such known legal representative re-
fuses to make application. Also, in hardship
situations where time or circumstances do not
permit appointment of a legal representative,
Rule 47 may apply (In re Schwarz and Paul,
147 USPQ 394).

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
or declaration. Where inability to find or reach
an inventor "after diligent effort" is the reason
for filing under Rule 47, the affidavit or declara-
tion should include the exact circumstances
which are relied upon to establish that a dili-
gent 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 by papers establish-
ing an assignment or written agreement to
assign, or by other satisfactory evidence of
proprietary interest.

Rule 65 (b) requires that in Rule 47 applica-
tions the joint applicant in applications under
Rule 47 (a) or the person having a proprietary
interest in applications under Rule 47(b), state
his relationship to the inventor and, upon
information and belief, the facts which the in-
ventor is required by Rule 65 to make oath or
declaration to. In applications under Rule
47 (b) and 35 U.S.C. 118, in addition, the
petition must request grant of the patent to
the inventor. Also, where a corporation is the
"person" making application under Rule 47 (b).
an officer thereof should normally make the nec-
essary oath or declaration and sign the applica-
tion.

If papers deposited under Rule 47 are found
to be acceptable, a memorandum or letter to that
effect is entered in the file, the application is
given a serial number, and notice is normally
sent to the non-signing "inventor designee" at
his last known address. Where the "inventor
designee" has promptly joined in the applica-
tion by submitting an appropriate Rule 65 oath
or declaration referring to attached duplicate
papers, there is no need to notify him of the
application. The Examiner will act on the Rule
47 application in the usual manner except that
papers filed by an inventor who did not orig-
inally join in the application and papers relat-
ing to its Rule 47 status will be forwarded with
the file to the Solicitor's Office for consideration.

The Office of the Solicitor will determine, in

such event, whether the papers meet the require-
ments of Rule 65, including the requirement
implicit in that rule, that the oath or declara-
tion be made on the basis of actual knowledge
of the application papers on file. This knowl-
edge may be demonstrated by reference
in the oath or declaration to an attached copy
of the application. In re Bernard, 748 O.G. 282;
123 USPQ 387.

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 inventor has the
rights of a joint applicant. In re Application of
Hough, et al., 703 O.G. 200.

When the Examiner determines that a Rule
47 case is allowable, he should forward the file
with a brief memorandum of that determina-
tion to the Solicitor's Office. The Rule 47 aspect
of the case will then be reviewed. If it appears
that the originally nonsigning inventor has
joined in the application, or has received notice
and not replied in any way, the file is generally
returned to the Examiner for allowance without
further Rule 47 correspondence. On the other
hand, if the "inventor designee" has shown some
interest in the case short of proper joinder, he
may be notified of imminent allowance and
given a further opportunity to take any action
he deems appropriate. Where there has been no
proper joinder, by submission of an appropriate
Rule 65 oath or declaration referring to at-
tached duplicate application papers, a patent
on a Rule 47(b) application must be granted to
the inventor, notwithstanding any recorded as-
signment by the inventor. Hence, it is generally
advisable for an assignee to effect the inventor's
proper joinder as soon as practicable. In many
instances where the employee-inventor is tem-
porarily unavailable, his joinder papers may
best be submitted before a Rule 47 application
is formally accepted and a filing date receipt is
mailed. Such joinder papers should be filed with
a brief explanatory letter, requesting that they
be correlated with the earlier Rule 47 applica-
tion papers filed on or about a given date. The
submission of joinder papers is not prejudicial
to an earlier filing date under Rule 47, assuming
acceptance of an application under that rule
would otherwise be warranted, The fact that the
application was made under Rule 47 will be
indicated in the heading of the patent.

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