UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48783sroberts on DSK5SPTVN1PROD with RULESdivisional application directed theOffice to recognize the practitionersassociated with a customer number ashaving power of attorney). Specificallyrequiring a copy of the power ofattorney in the continuing applicationin all situations (even where a change inpower did not occur in the priorapplication) will make the record clearwith respect to who has power ofattorney.The Office does not recommend thatpractitioners use a combineddeclaration and power of attorneydocument, and no longer provides acombined declaration and power ofattorney form on its Internet Web site.The power of attorney should be fromthe assignee where one exists.Otherwise, the assignee may be payingthe bill, while the inventor is providingthe power of attorney, thereby possiblyraising an issue as to who is thepractitioner’s client. Additionally,relationships between an assignee andthe inventors may deteriorate. It is notuncommon in these situations forinventors to stop cooperating and insome cases file powers of attorney in anattempt to control prosecution of theapplication.Section 1.32(e) is added to providethat if the power of attorney was grantedby the originally named inventive entityand an added inventor pursuant to§ 1.48 does not provide a power ofattorney consistent with the power ofattorney granted by the originallynamed inventive entity, the addition ofthe inventor results in the loss of thatpower of attorney upon grant of the§ 1.48 request. This provision does notpreclude a practitioner from actingpursuant to § 1.34, if applicable.Section 1.33: Section 1.33(a) isamended to specify that if an applicantprovides more than one correspondenceaddress (in a single paper or in differentpapers), the Office will select one of thespecified addresses for use as thecorrespondence address and, if given,may select the correspondence addressassociated with a Customer Numberover a typed correspondence address.This change pertains to the problem thatarises when applicants provide multiplecorrespondence addresses in a singlepaper (e.g., providing both a typedcorrespondence address and a CustomerNumber in a single paper) or multiplepapers (e.g., an oath or declaration, atransmittal letter, and a preliminaryamendment that each includes adifferent correspondence address), andthe Office inadvertently does not selectthe correspondence address actuallydesired by applicant. The Office maythen need to re-mail papers to thedesired address. This change does notaffect the hierarchy provided in§ 1.76(d) for inconsistencies between anapplication data sheet and otherdocuments. This change is designed toencourage applicants to review theirsubmissions carefully to ensure that theOffice receives clear instructionsregarding the correspondence address.Section 1.33(a) also provides that thecorrespondence address may bechanged by the parties set forth in§ 1.33(b)(1) (a patent practitioner ofrecord) or § 1.33(b)(3) (the applicantunder § 1.42)). Section 1.33(a) alsoprovides that prior to the appointmentof any power of attorney under § 1.32(b),the correspondence address may also bechanged by any patent practitionernamed in the application transmittalpapers who acts in a representativecapacity under the provisions of § 1.34.Section 1.33(a) no longer discusses thefiling of an oath or declaration under§ 1.63 as the Office is revising the rulesto allow applicants to postpone filingthe inventor’s oath or declaration untilthe application is otherwise incondition for allowance.Sections 1.33(b)(1) and (2) areamended to provide that amendmentsand other papers, except for writtenassertions pursuant to § 1.27(c)(2)(iii) or(c)(2)(iv), filed in the application mustbe signed by: (1) A patent practitionerof record; (2) a patent practitioner not ofrecord who acts in a representativecapacity under the provisions of § 1.34;or (3) the applicant (§ 1.42). Section1.33(b)(3) also provides that unlessotherwise specified (e.g., terminaldisclaimers and § 3.73(c) statements), allpapers submitted on behalf of a juristicentity must be signed by a patentpractitioner, as § 1.31 provides that ajuristic entity may prosecute a patentapplication only through a patentpractitioner.Section 1.33(f) is added to replaceformer § 1.63(d)(4) with respect to thecorrespondence address. Whereapplication papers (e.g., the inventor’soath or declaration) from a priorapplication are used in a continuingapplication and the correspondenceaddress was changed during theprosecution of the prior application, anapplication data sheet or separate paperidentifying the correspondence addressto be used for the continuingapplication must be submitted.Otherwise, the Office may not recognizethe change of correspondence addresseffected during the prosecution of theprior application. Historically, someapplicants would file continuingapplications with copies of papers fromthe prior application that includecorrespondence addresses to former lawfirms or correspondence addresses thatVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00009 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6are no longer current. This change willfacilitate the processing of patentapplications by the Office by making iteasier to determine the correctcorrespondence address and reduce thenumber of instances where the Officemails correspondence to an incorrectaddress.Section 1.33(g) is added to providethat a practitioner acting in arepresentative capacity whosecorrespondence address is thecorrespondence address of record in anapplication may change thecorrespondence address after the patenthas issued, provided that the change ofcorrespondence address is accompaniedby a statement that notice has beengiven to the patentee or owner. Section1.33(g) provides a means forpractitioners acting in a representativecapacity in an application to effect achange in correspondence address afterthe patent has granted but would notprovide authority to a practitioneracting under § 1.34 to change thecorrespondence address in anapplication. See § 1.33(a).Practitioners that file and prosecutean application in a representativecapacity, pursuant to § 1.34, usuallyprovide their business address as thecorrespondence address of record. Oncethe patent issues, practitioners haveattempted to withdraw as attorney oragent by filing a petition, and alsoattempt to change the correspondenceaddress to direct correspondence to thepatentee’s or owner’s address. Suchattempts have not been successful as therules did not permit the correspondenceaddress to be changed by a practitioneracting in a representative capacity, norwould the Office grant withdrawalwhere a practitioner is not of record. SeeChange in Procedure for Requests toWithdraw from Representation In aPatent Application, 1329 Off. Gaz. Pat.Office 99 (Apr. 8, 2008). There havebeen instances where practitionersacting in a representative capacity haveindicated that they have repeatedlyrequested that the client change thecorrespondence address, but the clienthas refused to submit the change ofcorrespondence address to the Office.Section 1.33(g) will permit practitionersto change the correspondence addressafter a patent has issued wherepractitioners have provided notice tothe patentees or owners.Section 1.36: Section 1.36(a) isamended to change ‘‘by an applicant forpatent (§ 1.41(b)) or an assignee of theentire interest of the applicant, or theowner of the entire interest of a patent’’to ‘‘by the applicant or patent owner.’’An assignee conducting prosecution ofa national patent application does so as