UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48805sroberts on DSK5SPTVN1PROD with RULESotherwise show sufficient proprietaryinterest in the matter may supply apower of attorney along with a petitionunder § 1.46(b)(2), which power wouldbe effective once the petition is granted.If an assignee, obligated assignee, orperson who otherwise show sufficientproprietary interest in the matter isapplying for a patent as provided in§ 1.46, the inventor is not the applicantand the Office would not accept a powerof attorney from the inventor.Comment 34: One comment suggestedthat where the original declarationprovides a power of attorney by theinventors, the power of attorney shouldautomatically ‘‘transfer’’ as being apower of attorney by the assignee wherethe inventors have or are obligated toassign their portion to the assignee. Thecomment also stated that the power ofattorney should continue in anapplication when ownership istransferred. Where a ‘‘new’’ assignee/applicant does not wish the originalattorney to have power of attorney, the‘‘new’’ assignee/applicant should thenprepare and file the appropriaterevocation and new power of attorneyand correspondence forms.Response: Under this final rule, anassignee may file an application on itsown behalf as the applicant and shouldprovide the initial power of attorney.The transfer of ownership of anapplication is external to the Office andwould not affect any existing power ofattorney in the application file. See§ 1.36(a). It is the Office’s experiencethat where ownership of an applicationis changed, the new assignee takes overthe prosecution and provides a newpower of attorney.Comment 35: Two comments statedthat, with respect to proposed § 1.32(d),if the power of attorney in the earlierapplication is from an assignee and acontinuing application is filed that addsnew inventors, a new power of attorneyshould not be required where the newlyadded inventors have also assigned, orare under an obligation to assign, to thesame assignee and the assignment isrecorded at the Office.Response: Section 1.32(d) providesthat a power of attorney will have effectin a continuing application if a copy ofthe power is supplied in the continuingapplication, unless the power ofattorney was granted by the inventorsand the continuing application namesan inventor who was not named in theprior application. Therefore, if thepower of attorney in the earlierapplication is from the assignee (asdiscussed in the comment), a newpower of attorney is not required.Comment 36: One comment statedthat proposed § 1.32(d) should bebroadened to include powers of attorneyfiled in provisional applications so thata power of attorney filed in aprovisional application would haveeffect in a nonprovisional applicationthat claims the benefit of the provisionalapplication under 35 U.S.C. 119(e) ifsubmitted in the nonprovisionalapplication.Response: It is the Office’s experiencethat powers of attorney are not usuallysupplied in provisional applications,particularly as there is no prosecutionand they become abandoned after a yearas a matter of law. Accordingly, there islittle need to provide for the carryoverof powers of attorney from a provisionalapplication to a nonprovisionalapplication.Comment 37: One comment assertedthat the power of attorney rules are‘‘form over substance’’ and should berelaxed. The Office should leave it tothe attorneys and law firms to obtain therequisite paperwork granting thempower of attorney, which is to beretained in the attorney’s/law firm’srecord and if an issue arises that raisesthe question of whether or not theattorney acted appropriately, the Officeshould request a copy of the requisitepower of attorney form and actaccordingly.Response: Filing of a power ofattorney in an application file is notmandatory in that an attorney can act ina representative capacity pursuant to§ 1.34, although there are somelimitations, such as signing a terminaldisclaimer, change of correspondenceaddress, or an express abandonmentwithout filing a continuation, MPEP§ 402. Given the significantconsequences to such actions, the Officebelieves that such actions should onlybe undertaken pursuant to a power ofattorney that is of record in theapplication file.Comment 38: One comment suggestedthat the Office should take the positionthat when an applicant-assigneeexecutes a power of attorney, theattorney of record automatically has theright to act on behalf of the applicantassignee,including executing astatement under § 3.73(b). A contrarycomment stated that proposed§ 3.73(b)(2)(iii) should not beimplemented since it gives significantlymore authority to patent practitionersthan an assignee may otherwiseexplicitly authorize. The commentstated that only individuals who areauthorized to act on behalf of theassignee should be able to sign astatement under § 3.73(b).Response: The Office disagrees withthe position that the Office should nottreat a patent practitioner of record asVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00031 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6being authorized to act on behalf of theassignee. Section 3.73(d), as adopted inthis final rule, permits a patentpractitioner of record to sign a statementunder § 3.73(c) in patent matters. Aparty to a proceeding before the Officeis generally bound by the actions (oromissions) of his or her representative.See Huston v. Ladner, 973 F.2d 1564(Fed. Cir. 1992). There does not appearto be any reason to make an exceptionto this general rule for statements under§ 3.73(c). If a particular assignee hasappointed a practitioner via a power ofattorney document but does not wantthe practitioner to be able to sign a§ 3.73(c) statement, then such assigneecan inform the practitioner of such alimit on his or her authority. That,however, is a matter between theassignee and its chosen representative,and the Office is not the forum forresolving disputes between an applicantand his or her representative. See Ray v.Lehman, 55 F.3d 606 (Fed. Cir. 1995).Comment 39: One comment suggestedthat powers of attorney and statementsunder § 3.73(b) filed before September16, 2012 in patent applications,including provisional applications,should be grandfathered in andpermitted to be filed in pending andcontinuing applications.Response: The applicability datesection of the final rule identifies whichrules apply only to patent applicationsfiled on or after September 16, 2012.Section 3.73 applies only to patentapplications filed on or after September16, 2012, but it applies to any patentapplication filed on or after September16, 2012, even of that application claimsthe benefit of a provisional ornonprovisional application filed prior toSeptember 16, 2012.F. PCTComment 40: One comment statedthat the PCT rules should no longerrequire a statement that the inventor isthe applicant for the U.S. only. Adifferent carve out in PCT for U.S. lawshould be used for what remains uniqueto U.S. law, such as where the inventoris under a continuous duty to discloseknown material information.Response: The rules governingapplicants for international applications(§§ 1.421, 1.422, and 1.424) have beenamended consistent with the AIA to nolonger require that an inventor be anapplicant in the United States.Comment 41: One comment statedthat it is unclear whether proposed§ 1.48(k) only applies if an executeddeclaration submitted under PCT Rule4.17(iv) has been filed. The commentsuggested adding a second sentence toreference § 1.41(a)(4) for correction of