AIA Final Rules Power of Attorney March 20, 2013

Power of Attorney

Why file a Power of Attorney? Allows the firm access to applications before publication Important for status checks at the USPTO Helps out attorneys with interviews Terminal disclaimers

Statement Under 3.73(b) is now 3.73(c) Power of Attorney Original applicant filing the application is presumed to be the owner (not the inventors), unless later assigned. 37 CFR 3.73(a) ADS names the “Applicant” then they are presumed to be the owner and the patent will issue to them Statement Under 3.73(b) is now 3.73(c)

Two Ways to Accomplish: Power of Attorney Two Ways to Accomplish: General POA (PTO/AIA/80) + 37 CFR 3.73(c) Statement (PTO/AIA/96) Transmittal For Power of Attorney (PTO/AIA/82) - Part A- Transmittal Identifying the Application - Part B- Power of Attorney

Power of Attorney- PTO/AIA/80 Way #1 File: General Power of Attorney (PTO/AIA/80) Signed by Applicant- e.g., Company Officer 37 CFR 3.73(c) Statement (PTO/AIA/96) Signed by either: Attorney/Practitioner Identified on AIA/80 Applicant- e.g., Company Officer Assignment Record ahead of filing Power of Attorney; OR Attach copy of Assignment & Record Same Day

Power of Attorney- PTO/AIA/80 3.73(c) Statement PTO/AIA/96 General POA PTO/AIA/80 Record Assignment

Power of Attorney Example #1- PTO/AIA/80 Reel/Frame No. Filed Record File 3.73(c) Statement PTO/AIA/96 Assignment ADS App. New General POA PTO/AIA/80 ADS naming Applicant

Power of Attorney Example #2- PTO/AIA/80 Record Assignment Separately Can file with App. File Filed 3.73(c) Statement PTO/AIA/96 Assignment ADS App. General POA PTO/AIA/80 ADS naming Applicant

Power of Attorney- PTO/AIA/82 Way #2 File: Power of Attorney (PTO/AIA/82) Part A- Transmittal for Power of Attorney Signed by Attorney/Practitioner, OR Signed by Applicant (e.g., Company Officer) Part B- Power of Attorney by Applicant Assignment- Still Need to Record to Establish Assignee as the Applicant

Power of Attorney- PTO/AIA/82 Transmittal (Part A) Fill in Application Information Can leave Application Information blank if filed with application Signed by: Applicant, Patent Attorney, or Patent Agent.

Power of Attorney- PTO/AIA/82 Power of Attorney (Part B) Signed by Applicant Company Officer President Treasurer Secretary, etc. Inventor

Power of Attorney- PTO/AIA/82 Power of Attorney (Part B) Apparently, the USPTO allows you to “recycle” Part B forms and use them for other applications Just need to update Part A for each application

Power of Attorney- PTO/AIA/82 When to Use PTO/AIA/82 Form (Way #2) Want to establish Power of Attorney with the filing of the application- assignments might take a while to get signed. Multiple inventors or assignees not wanting to assign to the same company Issues Need to have the correct box checked Still need to record the assignments

Power of Attorney Example #3- PTO/AIA/82 Part B Part A Signed Client (Officer) USPTO

Power of Attorney Example #4- PTO/AIA/82 Part B Betty Part A Signed Part B Part B Andy Betty Part B Signed Andy USPTO

Power of Attorney Example #5- PTO/AIA/82 Record Assignment Separately Can file with App. File Filed Part B Part A ADS App. ADS naming Applicant

Power of Attorney- Continuing Applications Allowed to use parent POA if you supply a copy of the parent POA Exception: POA by inventor and CON/DIV names an inventor not in the parent 37 CFR 1.32(d) p. 32 Lose POA if you add a new inventor without POA from new inventor 37 CFR 1.32(e) p. 32

More Information and Questions… Contact: Chuck Schmal Phone: (317) 713-4954 Email: cschmal@uspatent.com

©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP AIA Final Rules Power of Attorney March 20, 2013 ©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP