Signatures and Power of Attorney

1. Signatures and Power of Attorney Terry J. Dey Technical Writer-Editor Office of Patent Legal Administration

2. 2 Types of Permitted Signatures37 CFR § 1.4(d) • Handwritten (personally signed) signatures are provided for in § 1.4(d)(1). • S-signatures are provided for in § 1.4(d)(2): An S-Signature is a permitted type of signature between forward slash marksthat is not handwritten (§ 1.4(d)(1)). Note: Samples of acceptable signatures are posted on the Office’s web site:www.uspto.gov/web/offices/pac/dapp/opla/preognotice/sigexamples_alt_text.pdf

3. S-Signatures – 5 Requirements37 CFR § 1.4(d)(2) • The S-signature must consist only of letters (including Kanji, etc.), or Arabic numbers, or both, and appropriate spaces, commas, periods, apostrophes, or hyphens for punctuation. • The person signing must insert his or her own signature between the forward slash marks, § 1.4(d)(2)(i). • Only the signer can insert his or her own signature: • a secretary, paralegal, etc., is not permitted to sign/ insert another person’s signature, e.g., a practitioner’s or inventor’s signature, and • a practitioner is not permitted to sign/insert an inventor’s signature or another practitioner’s signature.

4. S-Signature – 5 Requirements (cont.)37 CFR § 1.4(d)(2) • The name of the person signing must be printed or typed immediately adjacent (i.e., below, above, or beside) to the S-signature, and be reasonably specific, so the identity of the signer can be readily recognized. The name of the person signing may be inserted by someone other than the person signing, but the person signing must personally insert the S-Signature.A secretary, paralegal, etc., may type the name of the person signing at any time (e.g., before or after the person signing inserts his or her own signature). • A registered practitioner may S-sign but his or her registration number is required, either as part of the S-signature, or immediately below or adjacent to the signature. For example: /John Attorney Reg. #99999/ John Attorney

5. Examples Where S-Signatures Can Be Used • S-Signatures may be used for correspondence being filed in the Office for patent applications, patents and reexamination proceedings. • A practitioner creates a document and S-signature signs it on his/her PC. The practitioner can then: • Facsimile transmit the document directly from the PC to the Office; • File the document via EFS-Web; or • Print the document and then facsimile transmit, mail, or hand-carry the document to the Office • An affidavit under § 1.132 is S-signed by the party making the affidavit, the S-signed affidavit is then: • Electronically sent to the practitioner, e.g., via an e-mail. The practitioner can then facsimile transmit, mail or hand-carry the S-signature signed document to the Office, in addition to filing via EFS-Web. • S-Signatures may not be used for papers submitted to the Office of Enrollment & Discipline § 1.4(e).

6. Name Requirement forS-Signatures • There is no requirement that the signer’s actual, full or legal name be used. • It is strongly suggested that the full name be used for both; • The typed or printed name below the signature must be reasonably specific enough so that the identity of the signer can be readily recognized (§ 1.4(d)(2)(iii)(B)). • Titles may be included as part of the signature. • Changes in S-signature (different papers or different applications) are not recommended. § 1.4(h) • Example: An s-signature that includes the attorney docket number for that application would not be a consistent signature.

7. Questionable Signatures • Ratification, confirmation or evidence of authenticity of a signature may be required where the Office has: • Reasonable doubt as to its authenticity, • Where the signature and typed or printed name do not clearly identify the person signing. • The failure to follow the S-signature format and content requirements will usually be treated as a bona fide attempt, but will cause the paper to be treated as unsigned with differing results, e.g.: • Amendments would receive a new 1-month time period • § 1.63 declarations would receive a two month time period and a surcharge may be imposed.

8. Certification Requirements 37 CFR § 1.4(d)(4) Certification Requirement • For another’s signature: A person submitting a document signed by another under § 1.4(d)(2): • is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted that signature, and • should retain evidence of authenticity of the signature. • For your own signature: The person inserting a signature under § 1.4(d)(2) in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. Violations of the signature certifications may result in the imposition of sanctions under §§ 10.18(c) and (d).

9. Power of Attorney 37 CFR §1.32(b) 37 CFR § 1.32(b) sets forth power of attorney requirements: • Must be in writing, • Name one or more representatives in compliance with § 1.32(c), • Give the representative power to act on behalf of the principal, and • Be signed by the applicant for patent (§ 1.41(b)) or the assignee of the entire interest of the applicant.

10. Power of Attorney 37 CFR §1.32(b) A power of attorney must name as representative either: • one or more joint inventors; • up to ten registered patent attorneys or registered patent agents; or • those registered patent practitioners associated with a Customer Number.

11. Power of Attorney; 37 CFR 1.32(c) If a power of attorney names more than ten patent practitioners • Power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in application or patent to which the power of attorney is directed. • If no separate paper, no power of attorney will be entered. • The separate paper can be signed by one of the attorneys or agents of record, by a patent attorney or agent acting in a representative capacity, the assignee, acting pursuant to 37 CFR § 3.73(b), or by all of the applicants. • The separate paper cannot request that a Customer Number be used instead, only the applicant or assignee can give power of attorney to a Customer Number.

12. Acting in a Representative Capacity § 1.34 A registered patent attorney or patent agent not of record but acting in a representative capacity must specify his/her: • Registration number • Name • Signature

13. Acting in a Representative Capacity § 1.34 A person acting in a representative capacity may not sign: • A power of attorney, • A document granting access to an application unless - an executed declaration has been filed or - the practitioner was named in the papers accompanying the application papers, • A change in correspondence address except where an executed oath/declaration has not been filed and the practitioner filed the application, • A terminal disclaimer, or • A request for an express abandonment without filing a continuing application

14. Recommendation: Separate the POA from the Declaration/Oath • Do not use a combined declaration/power of attorney (POA) form: • Use a separate declaration form and a separate power of attorney form. • Use of a combined form could be a problem if: • A continuation is filed, and it includes a copy of the original declaration/POA but the POA was changed in the parent application (MPEP 201.06(c)II, VII); • The assignee is the real client, not the inventor. • The POA should be from whomever is controlling the attorney (the real client). • Who is paying the fees, including the attorney fees? • Who is consulted when decisions have to be made?

15. Recommendation: Separate the POA from the Declaration/Oath (cont.) Note the following rules, and canons from Part 10 of 37 CFR: § 10.56: Canon 4: A practitioner should preserve the confidences and secrets of a client. § 10.57: --------- “Confidence” and “Secret” defined, and guidelines given for related actions. § 10.61: Canon 5: A practitioner should exercise independent professional judgment on behalf of a client. § 10.68: --------- Avoiding influence by others than the client. § 10.76: Canon 6: A practitioner should represent a client competently. § 10.83: Canon 7: A practitioner should represent a client zealously within the bounds of the law.

16. POAs Signed by the Assignee An assignee of the entire interest must establish its right to take action as provided in 37 CFR § 3.73(b). • Forms PTO/SB/81 (POA or Revocation of POA) contain check boxes to identify the person signing. For the assignee, the forms read “Statement under 37 CFR 3.73(b) (Form PTO/SB/96) submitted herewith or filed on___.” • Form PTO/SB/80 (“Power of Attorney to Prosecute Applications Before the USPTO”) is a general POA and does not include application information. File the PTO/SB/96 or equivalent together with this form to identify the specific application. • The title of the person signing should be identified on the POA. Where the signer does not have apparent authority (e.g., an officer of the assignee), a statement that the signer is empowered to act must be contained in the submission.

17. POAs Signed by the Assignee (cont.) Statement under 37 CFR §3.73(b): • The information required by the rule does not have to be set forth in a separate document (i.e., PTO/SB/96), but use of the Office’s form is recommended. • When using the PTO/SB/81, the best practice is to have both the POA and the §3.73(b) statement signed by the same person since the POA forms do not contain a “title” box or the “empowered to act” language needed when the person signing does not have apparent authority. • If §3.73(b) statement already of record for the assignee taking action, no need for a second one with POA.

18. The Assignee Should Give the POA via a General Power What is the recommended approach for an assignee to give a POA in a large number of applications? • Execute a single PTO/SB/80 form. • It is general POA, and it will be effective for any/all of assignee’s applications in which it is filed. • Use PTO/SB/96 form (Statement under 37 CFR § 3.73(b)) to establish assignee ownership and the right of the assignee to take action in a specific application. • Indicate the reel and frame where the chain of title documents have been recorded in the Office; or • Append a copy of title document(s) and check the box to state that documentary evidence has been, or is currently being, submitted (separately) for recordation to the Assignment Division.

19. The Assignee Should Give the POA via a General Power (cont.) What is the recommended approach for an assignee to give a POA in a large number of applications? (cont.) • Give specific authority to an appointed practitioner to act on behalf of the assignee. Practitioner must be given authority to bind the assignee entity. This can be accomplished in a separate document signed by the assignee (client) that is retained in the practitioner’s files. Then, a PTO/SB/96 can be completed and signed by the practitioner for each specific application, rather than having the assignee sign a PTO/SB/96 for each application.

20. The Assignee Should Give the POA via a General Power (cont.) • File a copy of the executed PTO/SB/80 (a general POA) together with the executed PTO/SB/96 (to identify a specific application) using a cover letter identifying both. NOTE: Copies of the chain of title document(s) must be separately submitted for recordation in the Assignment Division per 37 CFR § 3.11 before, or concurrently, with the filing of the PTO/SB/96. Filing before is preferred, if possible, to avoid inadvertent forwarding of the copy to the Assignment Division for recordation. • Alternatively, if it is not burdensome for the assignee to execute a POA for each application, execute and file PTO/SB/81 (a specific POA) together with the executed PTO/SB/96, using a cover letter identifying both.

21. Recommendation: Use a Customer Number When Possible • Use a CN to identify practitioners who are to be given power of attorney. • Customer Number practice allows the list of practitioners to be easily changed. • Power of Attorney cannot be given to both a CN and a list of practitioners. Establish a new CN if a unique set of practitioners is to be given POA. • To change to a different CN, however, a separate POA must be filed in each application.

22. Recommendation: Use a Customer Number When Possible (cont.) • Ensure that the same CN is used for the Correspondence Address, so that the practitioners all have access to Private PAIR for the applications for which they hold POA. • Very easy to change the correspondence address in multiple applications: • Just change the address data associated with the CN, and it will apply to all applications. • The change can be made by any attorney of record (with a POA).

23. Examples of Power of Attorney: • Power of Attorney by the Inventor(Examples A1-A4) • Power of Attorney by the Assignee (Examples B1-B3)

24. Example A1 Inventors Bob Smith, Mary Jones and Tom Williams are named inventors in the application. ThreePTO/SB/81 forms are filed. • The forms that are signed by Bob Smith and Mary Jones appoint the practitioners associated with Customer No. 12345, and direct correspondence to the address associated with Customer No. 12345. • The form signed by Tom Williams appoints the practitioners associated with Customer No. 98765 and directs correspondence to the address associated with Customer No. 98765. Bob Smith Tom Williams Customer No. 98765 Customer No.12345 Mary Jones

25. Example A1 (cont.) The two POAs signed by inventors Bob Smith and Mary Jones appoint the practitioners associated with Customer No. 12345. Form PTO/SB/81 The POA signed by inventor Tom Williams appoints practitioners associated with Customer No. 98765. Form PTO/SB/81 * This power of attorney is not proper and should not be accepted. POA by less than all of the inventors requires a petition. See MPEP 402.10.

26. Example A2 Inventors A and B are named inventors in the application. TwoPTO/SB/81 forms are filed, one signed by A and one signed by B. Both forms appoint the practitioners associated with Customer No. 76543, but direct correspondence to the address associated with Customer No. 54321. Form PTO/SB/81 *The power of attorney is proper and should be accepted.

27. Example A3 Inventor A is the sole inventor in the application. Two years ago, the inventor executed an original oath or declaration and appointed attorney X by power of attorney. The inventor died several months ago, therefore the power of attorney to attorney X has terminated. The legal representative of Inventor A has decided to intervene and continue prosecution of the application with new attorney Y. The legal rep. may execute a declaration form PTO/SB/02LR along with form PTO/SB/81 appointing new attorney Y. Form PTO/SB/81 *The power of attorney is proper and should be accepted.

28. Example A4 Inventors A and B are named inventors in the application. Both inventors execute a declaration, but do not appoint an attorney. Inventor A dies. • Inventor B files proof that Inventor A is dead, in accordance with MPEP 409.01(f). • No legal representative of deceased Inventor A has intervened in the application. • Form PTO/SB/81 is filed in the application and is signed by Inventor B. *The power of attorney is proper and should be accepted.

29. Example B1 XYZ Corporation is the assignee of the entire interest of an application that names A and B as inventors. Bob Smith, President of XYZ Corporation, signs a general power of attorney (PTO/SB/80) appointing the practitioners associated with Customer No. 12345 and directing correspondence to the address associated with Customer No. 12345. The PTO/SB/80 is filed with a properly-completed PTO/SB/96 (3.73(b) form) signed by Ted Mason (Registration No. 24555), one of the practitioners associated with Customer No. 12345.On the PTO/SB/96, Boxes “1” and “A” are checked, and the Reel and Frame are identified. Form PTO/SB/96

30. Example B1 (cont.) The box next to the words “As required by 37 CFR 3.73(b)(1)(i), the documentary evidence…”is not checked onlyif all reels and frames are provided. Form PTO/SB/96 The USPTO official views the information recorded at the Reel and Frame, and both inventors are listed as assignors to XYZ Corporation. *The power of attorney is proper and should be accepted.

31. Example B2 XYZ Corporation is the assignee of the entire interest of an application that names A and B as inventors. Bob Smith, President of XYZ Corporation, signs a general power of attorney (PTO/SB/80) appointing the practitioners associated with Customer No. 12345 and directing correspondence to the address associated with Customer No. 12345. The PTO/SB/80 is filed with the PTO/SB/96 (3.73(b) form) signed by Ted Mason, one of the practitioners associated with Customer No. 12345. Form PTO/SB/96

32. Example B2 (cont.) On the PTO/SB/96, • Boxes “1” and “A” are checked, • a copy of the assignment document was included, but • the box next to the words “As required by 37 CFR 3.73(b)(1)(i), the documentary evidence…” is not checked. • A copy of the assignment document was not recorded in the Assignment Division. Box not checked Form PTO/SB/96 *The power of attorney is not proper and should not be accepted. Applicant must record the assignment documents and assert that the assignment documents were, or concurrently are being, submitted for recordation.

33. Example B3 XYZ Corporation is the assignee of the entire interest of an application that names A and B as inventors. Bob Smith, President of XYZ Corporation, signs a specific power of attorney PTO/SB/81 appointing the practitioners associated with Customer No. 12345 and directing correspondence to the address associated with Customer No. 12345. A PTO/SB/96 (3.73(b) form) is filed with the PTO/SB/80 and is signed by Bob Smith, President of XYZ Corporation.

34. Example B3 (cont.) On the PTO/SB/96, • none of the boxes are checked, • no Reel and Frame is identified, and • no copy of the assignment documents is filed with the forms. Form PTO/SB/96 *The power of attorney is not proper and should not be accepted. The form must be properly filled out and comply with 37 CFR 3.73(b).

35. Request to Withdraw from Representation in a Patent Application • Office no longer requires at least 30 days between approval of the withdrawal and the later of the expiration date of a time period which can be obtained by a petition and fee for extension of time for reply for a practitioner to withdraw. • Office will not grant a request to withdraw in a patent. • Office will not approve request to withdraw from practitioners who acted in a representative capacity (§ 1.34).

36. Request to Withdraw from Representation in a Patent Application • Office now requires the practitioner(s) to certify that he, she or they have: • Given reasonable notice to the client, prior to the expiration of the response period, that practitioner(s) intend to withdraw from employment; • Delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and • Notified the client of any responses that may be due and the time frame within which the client must respond.

37. Request to Withdraw from Representation in a Patent Application • The Office will no longer accept address changes to a new practitioner, absent a new power of attorney when processing a request to withdraw. • Correspondence address will be changed to assignee of the entire interest who has properly become of record pursuant to 37 CFR 3.71 or the first named inventor. Note: PTO/SB/83

38. Patent Practice Tips Mark Polutta Senior Legal Advisor Office of Patent Legal Administration

39. Topics • Examining Patent Applications • Avoid most common mistakes during prosecution • Patents’ Initiatives and Projects • Helpful hints (Appendix)

40. Examining an Application

41. Avoid Mistakes Throughout Prosecution • Tips and Suggestions • Preparing the Application • Filing the Application • Avoiding Publication Pitfalls • Examination Processing Tips • Post Allowance Tips • Best Practice Tips (see Appendix)

42. Preparing the Application • Avoid submitting an application in the European problem/solution format. • Format the application according to US rules and procedures. See MPEP § 608 • Avoid including multiple dependent claims that depend from other multiple dependent claims • Craft claims according to US practice, see MPEP § 608.01(n) • Avoid including “Use” claims • Craft claims according to US practice, see MPEP § 608.01(k)

43. Pre-Examination Tips Forms • Do use USPTO forms without altering the language. • Do not use a combined declaration and power of attorney form. • USPTO forms can be found at: http://www.uspto.gov/web/forms/index.html

44. Pre-examination Tips Application Data Sheets Do use an Application Data Sheet (ADS), although an ADS is not required. Customers using an ADScan expect two advantages when applying for a patent:  1.Improved accuracy of filing receipts. 2.Accurately recorded application data.

45. Pre-examination Tips Application Data Sheets (Cont’d) • Use of a supplemental ADS is possible even though no original ADS was submitted on filing. • The following information can be supplied on an ADS: • Application Information • Applicant Information • Correspondence Information • Representative Information • Domestic Priority Information • Foreign Priority Information • Assignment Information

46. Pre-examination Tips Preliminary Amendments In New Applications • Avoid submitting Preliminary Amendments on filing • A substitute specification will be required if a preliminary amendment present on filing makes changes to the specification, except for: • Changes to title, abstract, claims or addition of benefit claim information to the specification • See the notice “Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application,” 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), available at: http://www.uspto.gov/web/offices/com/sol/og/2005/week45/patrevs.htm

47. Pre-Examination Tips Preliminary Amendments in Continuations and Divisionals • Avoid submitting Preliminary Amendments on filing a Continuation or Divisional • Avoid Preliminary Amendments that cancel all the claims and add new ones

48. Filing the Application Select a method of filing the application 1. Accelerated Examination 2. EFS-Web 3. Traditional Mail Route

49. Filing the Application Accelerated Examination Common Failings • Failure to provide the text search logic. A mere listing of terms will not suffice. • Failure to search the claimed invention. The petition for accelerated examination may be dismissed if the search is not commensurate in scope with the claims. • Failure to show support in the specification and/or drawings for each limitation of each claim.

50. Filing the Application Accelerated Examination Common Failings (Cont) • Failure to show support in the specification and/or drawings for each limitation of each claim for every document whose benefit is claimed. • Failure to specifically identify the limitations in each claim that are disclosed in each reference.