Query: When a law firm is hired to prosecute patents, should the in-house patent counsel be included in the list of patent attorneys with power of attorney over pending patent applications?
My informal conversations suggest to me that most major patent applicants want in-house patent professionals listed as having power of attorney in their pending cases. Smaller companies – even when they employ an in-house registered patent professional – are much less likely to be listed on the power-of-attorney roll.
When associated with a customer number, the power of attorney allows in-house counsel to access unpublished application materials through the USPTO’s electronic “Private PAIR” system. In addition, the in-house counsel would then have the right and authority to discuss the case directly with patent examiners and file papers with the Office.
On the other hand, some in-house counsel want to avoid complicating prosecution control and keep all filing duties in the hands of the law firm experts. This allocation of duties can also help to shift blame to a law firm when problems arise or when information fails to reach decision makers. When in-house counsel holds power of attorney, I could conceive of a law firm potentially avoiding a malpractice claim by showing that the in-house counsel failed in its role as “backup.”