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Author Topic: Power of Attorney and Assignment  (Read 2301 times)

lacerda70

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Power of Attorney and Assignment
« on: 02-21-09 at 02:25 pm »

Please forgive me if I ramble on:

I can't find any consensus about certain aspects of power of attorney and assignments.

First, it is unclear to me whether, as an attorney, you always need a power of attorney from the inventors to file a U.S. patent application.  Clearly you would need a power of attorney from every inventor if you are representing the inventors and the inventors hadn't assigned their entire rights and interest in the invention.  But what about the usual case where the inventors have assigned their rights to a corporate entity and you (the attorney) represent the corporate entity (and have obtained a power of attorney from them)?  35 USC 111(a)(1) states that "an application for patent shall be made or authorized to be made, by the inventor, except as otherwise provided in this title."  This sounds to me like, even if the inventors have assigned their entire rights and interest in the application to a corporate entity and you, as an attorney, have a power of attorney from the corporate entity, you would still need a power of attorney from the inventors.  However, I know it is standard practice at many firms and corporations to obtain a power of attorney only from the corporate entity to which the inventors have assigned their rights, generally with the stated purpose of avoiding confusion on the part of the inventors (since you are representing the corporate entity, not them).  Thoughts?

Second, in the case of PCT applications, the requirement to submit a power of attorney from each inventor was waived a while back (now a PCT application can be filed with just the power of attorney from the corporate applicant) - however, it seems that in view of the above and section 373 which states that "an international application designating the United States, shall not be accepted by the Patent and Trademark Office for the national stage if it was filed by anyone not qualified under chapter 11 of this title to be an applicant for the purpose of filing a national application in the United States" a power of attorney would still need to be filed from each inventor if the US national stage will be entered.  Thoughts?

Third, in the case where you represent a corporate entity in filing/prosecuting a nonprovisional application, I have heard numerous attorneys state that it isn't necessary to obtain and record an assignment from the inventor(s) to the corporate entity if the inventors were employees of the corporate entity at the time of invention since generally it will be the case in the US that the employment agreement will operate to assign the rights of anything invented by the employee (within the scope of his/her employment) to the corporate entity.  However, it seems to me that when filing a U.S. (nonprovisional) application, the USPTO assumes that you represent the inventors not the corporate entity and in order for the corporate entity (the assignee) to have the right to file and prosecute the application, they would have to be made "of record" by filing an assignment prior to (e.g. during a provisional) or at the time of filing the application along with a statement in compliance with 3.73(b) that is signed by a party authorized to act on behalf of assignee.  Thoughts?

Thanks in advance for any and all comments.
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klaviernista

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Re: Power of Attorney and Assignment
« Reply #1 on: 02-23-09 at 06:14 am »

Q1: "First, it is unclear to me whether, as an attorney, you always need a power of attorney from the inventors to file a U.S. patent application."

A1:  You do not need an official power of attorney (i.e., a signed document) to file an application or prosecute it.  You can file and prosecute an application entirely under "apparent authority."  See MPEP 402 and 37 C.F.R. 1.34.

Q2:  "But what about the usual case where the inventors have assigned their rights to a corporate entity and you (the attorney) represent the corporate entity (and have obtained a power of attorney from them)?"

Assignees can control prosecution of an application once they become of record.  See 37. C.F.R. 3.71.  Also 37 C.F.R. 1.32(a)(2) defines "power of attorney" as "a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on his or her behalf[," and
(a)(3) defines "principal" as "either an applicant for patent . . .  or an assignee of entire interest . . . ."  IMO, these two provisions allow an assignee to effectively become the "applicant" for the purposes of the application, because it allows the assignee to control prosection directly or through a third party representative, independent of the inventors.

Q3:  "in the case of PCT applications, the requirement to submit a power of attorney from each inventor was waived a while back  . . . "

A3:  I'll be honest and say that I am not sure about this one.  I think the answer lies in how the PCT is filed.  I know that generally, we will file a PCT application in the names of the inventors if an assignment of worldwide rights is not available at the time of the PCT filing, unless certain declarations can be made.  I also beleive it is possible to designate who the applicant is by country (e.g., by including a statement such as "for all countries except the U.S., the applicant for this PCT application is the corporate assignee.")  Of course, I have not done many PCT filings, so if anyone knows better please feel free to correct me. 

Q4:  "Third, in the case where you represent a corporate entity in filing/prosecuting a nonprovisional application, I have heard numerous attorneys state that it isn't necessary to obtain and record an assignment from the inventor(s) to the corporate entity if the inventors were employees of the corporate entity at the time of invention since generally it will be the case in the US that the employment agreement will operate to assign the rights of anything invented by the employee (within the scope of his/her employment) to the corporate entity."

A4:  37. C.F.R 111 allows an "application for patent" to be made "or authorized to be made" by the inventors.  In many instances, an employment agreement will specify that an employer owns any inventions developed by an employee while working for the employer (or developed on the employers behalf).  In addition, it is often the case that the employment agreement will also specify that the employee authorizes the employer to file patent applications drawn to such inventions in accordance with U.S. law.  In those circumstances, I believe that the employer could authorize outside counsel top draft an application drawn to an invention developed by the employee, and file such application in the USPTO in the name of the employee ("in accordance with U.S. law).  That said, I would never assume anything about an employment agreement. 








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This post is not legal advice.  I am not your attorney.  You rely on anything I say at your own risk. If you want to reach me directly, send me a PM through the board.  I do not check the email associated with my profile often.

lacerda70

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Re: Power of Attorney and Assignment
« Reply #2 on: 02-23-09 at 08:40 am »

Thanks very much for your reply klaviernista.  A few follow up points

"A1:  You do not need an official power of attorney (i.e., a signed document) to file an application or prosecute it.  You can file and prosecute an application entirely under "apparent authority."  See MPEP 402 and 37 C.F.R. 1.34."

I understand that, but filing an application under 'apparent authority' seems to me to be the USPTO laxing the rules about filing powers of attorney, but I think you are still required to have a power of attorney executed prior to filing/prosecuting an application (e.g. the MPEP notes that evidence of authority may still be required).  My real question here is whether having a power of attorney from a corporate client to whom the inventors have assigned their rights and interest in a given application obviates the need for obtaining powers of attorney from the inventors in view of 35 USC 111 which, as you point out, allows an "application for patent" to be made "or authorized to be made" by the inventors.  In other words, does a mere assignment from the inventors to the corporate entity (with no power of attorney from inventors) satisfy the "authorized to be made" requirement of 35 USC 111?  Or must the attorney also obtain PoA's from the inventors?

I agree that it does seem, in view of your A1 and A2, that the corporate entity in the hypothetical above could file and prosecute an application even in the absence of any power of attorney from the inventor(s) but something in the back of my head keeps making me think that 35 USC 111 requires PoAs from the attorneys. 


"A4:  37. C.F.R 111 allows an "application for patent" to be made "or authorized to be made" by the inventors.  In many instances, an employment agreement will specify that an employer owns any inventions developed by an employee while working for the employer (or developed on the employers behalf).  In addition, it is often the case that the employment agreement will also specify that the employee authorizes the employer to file patent applications drawn to such inventions in accordance with U.S. law.  In those circumstances, I believe that the employer could authorize outside counsel top draft an application drawn to an invention developed by the employee, and file such application in the USPTO in the name of the employee ("in accordance with U.S. law).  That said, I would never assume anything about an employment agreement"

Again, I agree with what you've said, but if you are an attorney representing the corporate client, nothing can be done on the application until the assignee is made 'of record' which seems to me to require that an assignment must be filed with the USPTO regardless of what the employment agreement said?
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klaviernista

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Re: Power of Attorney and Assignment
« Reply #3 on: 02-25-09 at 06:10 am »

Your follow up questions are interesting, and I do not know the answers off-hand.  As my interest is now piqued, I will ask around my office and see if I can get a definitive answer. 
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This post is not legal advice.  I am not your attorney.  You rely on anything I say at your own risk. If you want to reach me directly, send me a PM through the board.  I do not check the email associated with my profile often.
 



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