Getting signed docs from inventors - combined dec/poa/assignment

[bleedingpen]

In a nightmare situation trying to get signed docs from inventors.  In this case, the inventors have signed the DEC and the assignment, but not the POA.  Or they have signed the assignment but not the DEC and POA. 

I have seen combined DECS and POAS.  Do you think it would be OK to combine the DECS, POAS, and assignments into one document? The assignment just references a nominal amount of consideration (much like most assignments), so I wouldn't be divulging any information that the client may otherwise want secret.

[MLM]

We combine the decs and DPOAs but keep the assignments separate, since those are recorded separately from things that end up in the file wrapper.

[Robert K S]

Ditto MLM.  The only problem with combined Decs/POAs is that they usually get registered in the system as Decs. and then when it's time to use a customer number upload spreadsheet to associate the application with a customer number, the system thinks there's no POA filed in the case and the association automatically fails, and then it's a bureaucratic mess to get it corrected.

[Jonathan]

For clients where the inventors are required to assign their rights to an employer, isn't it more optimal to have a company officer, or whomever the rights is assigned to, sign the POA? That is, the company is the client, not the inventor(s). Doing otherwise kind of implies that the inventors have some rights over the invention that they actually don't have.

[Isaac]

Ditto MLM.  The only problem with combined Decs/POAs is that they usually get registered in the system as Decs. and then when it's time to use a customer number upload spreadsheet to associate the application with a customer number, the system thinks there's no POA filed in the case and the association automatically fails, and then it's a bureaucratic mess to get it corrected.

It's just as likely that the combination would get filed as an assignment leading the PTO to believe that you had failed to file a declaration.   

Even with separate declarations and assignments, the PTO occasionally switches the signature pages and then dings the applicant for having an improperly signed  declaration.   Normally this particular problem is not that difficult to get straightened out.

[khazzah]

For clients where the inventors are required to assign their rights to an employer, isn't it more optimal to have a company officer, or whomever the rights is assigned to, sign the POA? That is, the company is the client, not the inventor(s). Doing otherwise kind of implies that the inventors have some rights over the invention that they actually don't have.

Interesting. I've always thought the conventional practice -- having inventors sign the POA embedded in the Dec, and then prosecuting under the inventor's POA -- was weird, and kinda backward.

I have seen Right of Assignee to Take Action along with a new POA -- but only for applications that the client acquired, or for child cases (where the old POA has an outdated attorney list). I've never seen a client who routinely files Right of Assignee plus new POA in newly filed applications. [Doesn't mean it's not common, only that my world is small.]

So Jonathan, you're suggesting that we can skip the Inventor->Attorney POA, and go straight to Assignee->Attorney POA? Why doesn't every one do this? It seems to make more sense. Or is there some reason why it's legally/procedurally necessary to do Inventor POA then Assignee POA?

One thought that occurs to me is that Right of Assignee plus new POA requires a recorded assignment. So maybe the delay of recordation and/or assignment is why we use inventor POA instead?

Do you *have* to have a POA at filing -- ie, either day of filing or in response to missing parts? It's weird that you can wait until Missing Parts to file the POA. Does that suggest the POA is somehow retroactive?

I've always wondered about this stuff. Never had a forum to wonder aloud before.

Doing otherwise kind of implies that the inventors have some rights over the invention that they actually don't have.

Don't agree with that. At least, I'd say the implication doesn't have any legal significance. If the inventors signed away their rights, then that's dispositive.

[Jonathan]

OK, haven't done it awhile but I believe the way I have seen it done is to have the inventors sign a declaration, sign the assignment, include a 3.73(b) statement (signed by the practitioner) and include a copy of a general POA that is signed by an officer of the company giving the practitioner the right to act on the company's behalf.

The 3.73b statement (PTO/SB/96) can be used with an un-recorded assignment.

[comodonejp]

As far as I know as a newbie, there is no combined POA DEC form on the USPTO website: http://www.uspto.gov/forms/index.jsp

The reason is I guess to avoid confusion in the office as you have discussed (i.e., they overlooks one of the document if it is combined.)

Current form SB01 is declaration only and SB80/81 is POA only.

I usually obtain POA from the assignee only and submit SB96 (STATEMENT UNDER 37 CFR 3.73(b)), as the right to obtain a patent is always assigned before filling in my case.
I also feel a little bit uncomfortable that what support my action to file the application without POA from the inventor.
I guess the declaration prepared by me and signed by the inventor support the inventor's intention to file the patent application and implied consent that I will file the application.

If there is any better explanation or necessity to obtain POA from both of the inventor and assignee, please let me know.

[bleedingpen]

OK, haven't done it awhile but I believe the way I have seen it done is to have the inventors sign a declaration, sign the assignment, include a 3.73(b) statement (signed by the practitioner) and include a copy of a general POA that is signed by an officer of the company giving the practitioner the right to act on the company's behalf.

The 3.73b statement (PTO/SB/96) can be used with an un-recorded assignment.

You can do it this way, though I have more often seen Karen's example where the inventors sign the POA and then the 3.73 assignee signs other documents necessary during prosecution. 

[bleedingpen]

As far as I know as a newbie, there is no combined POA DEC form on the USPTO website: http://www.uspto.gov/forms/index.jsp

You can make your own form that combines both the DEC and the POA.

If you want to take a look at such a form, I suggest pulling up a published IBM application and seeing the form that they use.

[still_learnin]

I usually obtain POA from the assignee only and submit SB96 (STATEMENT UNDER 37 CFR 3.73(b)), as the right to obtain a patent is always assigned before filling in my case.
I also feel a little bit uncomfortable that what support my action to file the application without POA from the inventor.
I guess the declaration prepared by me and signed by the inventor support the inventor's intention to file the patent application and implied consent that I will file the application.

Power of Attorney must come from the entity that has rights in the application, right? In your scenario, that's the assignee.

But if the above statement is correct, what happens in this situation: Inventor signs Dec/POA and assignment on the same day. The inventor-signed POA is the only one ever filed in the application. Is the POA effective or ineffective?

And why is it ok to file without a POA at all -- which commonly happens when the app is filed without any inventor sigantures?

[MLM]

Power of Attorney must come from the entity that has rights in the application, right? In your scenario, that's the assignee.

But if the above statement is correct, what happens in this situation: Inventor signs Dec/POA and assignment on the same day. The inventor-signed POA is the only one ever filed in the application. Is the POA effective or ineffective?

And why is it ok to file without a POA at all -- which commonly happens when the app is filed without any inventor sigantures?

The application is filed by or on behalf of the inventor, not the assignee. So it makes sense to me that the inventor/original applicant executes a POA. It is a "durable" POA so it shifts with the inventor's rights when he/she assigns.

Also, there is 37 CFR 1.34 to cover the situation where there is no POA. This is useful if a case is transfered from another firm and a response is due pronto, before a new POA can be executed. http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_34.htm

[comodonejp]

MLM is right. According to MPEP, the practitioner is presumed authorized. So by filling the application, it is presumed that the practitioner is authorized to represent the inventor, as far are the practitioner follows the requirements.
Even if there is no POA in the file, the office actions come to the corresponding address that is usually the practitioner's address. Especially when the customer number is liked to the practitioner's registration number, the proof of authority may not be required. But I am not sure. Does anybody know it?

But since we will need to obtain the declaration from the inventor anyway, it is safer and prudent to obtain the POA from the inventor as well.

When after the assignment is recorded, the title of the application is transfered to the assignee. Even if now POI is filed, the USPTO will send the OA to the existing correspondance address.
Without the assignee's authorization, the practitioner won't do work for them. So the practitioner is acting in a representative capacity until new POA is filed.

Am I right?
 
§ 1.34 Acting in a representative capacity.

When a patent practitioner 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 on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.

[comodonejp]

As far as I know as a newbie, there is no combined POA DEC form on the USPTO website: http://www.uspto.gov/forms/index.jsp

You can make your own form that combines both the DEC and the POA.

If you want to take a look at such a form, I suggest pulling up a published IBM application and seeing the form that they use.

Thank you for your suggestion. I have English version. But I don't have non-English version. So I started using separate forms these days. PDA fillable form is easier to use.

[still_learnin]

MLM is right. According to MPEP, the practitioner is presumed authorized. So by filling the application, it is presumed that the practitioner is authorized to represent the inventor, as far are the practitioner follows the requirements.

OK. So that answers my first question ie, (why it's ok to file original app with no POA at all). Good to have this piece of the puzzle.

Even if there is no POA in the file, the office actions come to the corresponding address that is usually the practitioner's address. Especially when the customer number is liked to the practitioner's registration number, the proof of authority may not be required. But I am not sure. Does anybody know it?

Correspondence address is a completely separate issue from POA. It's not unheard for client to be corr. address but firm to be on the POA.

I've never heard that the presence of an attorney on the Customer Number is a presumption that the attorney has POA. POA links to Customer Number, and CN names the attorneys. But I don't see why CN without any POA has any effect at all. [You did specify "no POA in the file."]

But since we will need to obtain the declaration from the inventor anyway, it is safer and prudent to obtain the POA from the inventor as well. When after the assignment is recorded, the title of the application is transfered to the assignee. Even if now POI is filed, the USPTO will send the OA to the existing correspondance address.

As noted above, who receives the OA is irrelevant to the question of POA.

Without the assignee's authorization, the practitioner won't do work for them.

Don't understand "won't do work for assignee." You're saying that papers filed in the case by the attorney on the POA can't possibly be on behalf of the assignee, since the assignee hasn't authorized that attorney to do so?

So the practitioner is acting in a representative capacity until new POA is filed.

Representative of *who* ? Inventor or assignee?