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   Power of Attorney - 37 CFR 1.34
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TataBoxInhibitor
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Power of Attorney - 37 CFR 1.34
« on: Mar 13th, 2007, 5:59am »
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I have a new client who really enjoys receiving correspondence from the USPTO and then immediately faxing or mailing me the correspondence.   However, I am unable to discuss matters with the Examiner if I do not have a power of attorney.   I am under the impression that if you have power of attorney, the correspondence adddress is the firms.  So you can see the situation.
 
I am curious as to the purpose of 37 CFR 1.34:  When a registered patent attorney or patent agent acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark
 
Office that under the provisions of this subchapter
and the law, he or she is authorized to represent the particular party in whose behalf he or she acts. In filing such a paper, the registered patent attorney or patent agent must specify his or her registration number and name with his or her signature. Further proof of authority to act in a representative capacity may be required.
 
I would think that my previous responses would have indicated my representation, which are of course, on record, however, I was still unable to discuss the matter yesterday.
 
Thank you in advance for any responses.
 
 
 
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Isaac
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Re: Power of Attorney - 37 CFR 1.34
« Reply #1 on: Mar 13th, 2007, 8:16am »
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on Mar 13th, 2007, 5:59am, TataBoxInhibitor wrote:
I am curious as to the purpose of 37 CFR 1.34:  When a registered patent attorney or patent agent acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter

 
Your experience is not that unusual.
 
Any registered practitioner can do most stuff without power of attorney in a given case.   You don't need a power of attorney to file a written response to an office action.  However for some things, there are explicit guidelines suggesting otherwise.   For example to use the telephone restriction procedure, it is required that the practitioner in question be of record.   For interviews, there is additional guidance in 713.05 concerning interviews without "authorization to act in a representative capacity."
 
Quote:
Further proof of authority to act in a representative capacity may be required.

 
I think this statement pretty much allows the PTO discretion on what they want to ask for.
 
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Isaac
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Re: Power of Attorney - 37 CFR 1.34
« Reply #2 on: Mar 13th, 2007, 8:41am »
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Thanks for the response.  I found it interested when just a few weeks ago the same Examiner called me regarding the same client(different application), and asked permission to perform a Formal Examiner's Amendment for allowance.  
 
Look at 1302.04:
 
The amendment or cancellation of claims by formal examiner's amendment is permitted when passing an application to issue where these changes have been authorized by applicant (or his/her attorney or agent) in a telephone or personal interview. The examiner's amendment should indicate that the changes were authorized, the date and type (personal or telephone) of interview, and with whom it was held.
 
 
Regards,
 
 
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JimIvey
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Re: Power of Attorney - 37 CFR 1.34
« Reply #3 on: Mar 13th, 2007, 1:49pm »
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I had a similar situation and the examiner just wanted to know where to send correspondence since it seemed ambiguous to him.  He suggested a Power of Attorney in which the correspondence makes it explicit that the correspondence is going to the client.
 
I'm not all that comfortable with that arrangement.  What if the client sends (or thinks she sends) the Office Action to you and never follows up, resulting in abandonment?  How many practitioners would be willing to accept that sort of liability risk?  
 
Personally, I would suggest making a paper (or e-paper) record of each receipt and the reminder to the client that failure to acknowledge receipt should be interpreted as an affirmitive statement that the sent document(s) was/ere not received.
 
I don't think I'll be accepting that sort of arrangement any more.
 
Regards.
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James D. Ivey
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