Who Has the Power? Granting Power of Attorney in AIA Applications

Author: Stephanie M. Sanders
Editor:  Adriana L. Burgy

For applications having an actual filing date on or after September 16, 2012, a party applying for a patent has the option of naming the inventor or joint inventors of the invention as the applicant or naming the assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the application as the applicant. To File or Not to File as an Applicant-Assignee: That is the Question, a post on the Finnegan AIA Blog, provides insight into the strategy behind determining which entity to list as the applicant. 

The identity of the applicant has implications on a number of actions and procedures that will occur during prosecution. For example, 37 CFR § 1.32, which applies to applications filed on or after September 16, 2012, notes that “A power of attorney must: . . . (4) Be signed by the applicant for patent (§ 1.42) or the patent owner . . . ” As such, the party named as the applicant when an application is filed is the party who must sign a Power of Attorney. If the applicant changes during prosecution, then a new Power of Attorney must be executed and filed with the U.S. Patent and Trademark Office for the appointed practitioners to remain of record.

The following flow-chart is useful in determining the party that can effectively sign a Power of Attorney based on when the application was filed and which entity was named as the applicant.

Click image to enlarge

You can access Patents Forms on the USPTO website here.

 

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