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Takeaway: Failure to file a Power of Attorney in a patent application may limit a practitioner’s prosecution actions.

37 C.F.R. 1.32(b) recites requirements for filing a Power of Attorney under the 2011 America Invents Act (AIA) provisions. These requirements necessitate that the document: (1) be in writing; (2) names one or more representatives in compliance with subsection (c) of the rule (e.g., an inventor, practitioners associated with a customer number, or a listing of ten or fewer practitioners); (3) give the representative power to act on behalf of the principal; and (4) be signed by the applicant for patent or the patent owner.

A Power of Attorney is not, however, expressly required to be filed with the USPTO to conduct prosecution. For example, 37 C.F.R. 1.34 enables registered patent practitioners to file replies to Office Actions issued by the USPTO so long as they are acting in a representative capacity. Representative capacity is sufficient to file a Reply to an Office Action, an Information Disclosure Statement, a Response to Restriction Requirement, and other such actions taken in the general course of prosecution.

A person merely acting in a representative capacity without a Power of Attorney may not sign the following documents:

  • (A) a document granting access to an application, except: (i) In an application filed on or after September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if both (1) a Power of Attorney has not been appointed under 37 C.F.R. 1.32(b) and (2) the patent practitioner was named in the application transmittal papers. See 37 C.F.R. 1.14(c)and 1.33(a); or (ii) In an application filed before September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) an executed oath or declaration under pre-AIA 37 C.F.R. 1.63 has not been filed and (2) the patent practitioner was named in the application transmittal papers. See pre-AIA 37 C.F.R. 1.14(c) and pre-AIA 37 C.F.R. 1.33(a).
  • (B) a change of correspondence address;
  • (C) a terminal disclaimer (37 C.F.R. 1.321(b)(1)(iv));
  • (D) a request for an express abandonment without filing a continuing application (37 C.F.R 1.138(b)); and
  • (E) a Power of Attorney (37 C.F.R. 1.32).

Additionally, MPEP § 408 instructs examiners that those acting only in a representative capacity should not be telephoned for oral elections in Restriction Requirements or approval of examiner’s amendments. Furthermore, MPEP § 405 instructs examiners that an interview concerning an unpublished application with an attorney or agent not of record, may be limited to the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).