Power of Attorney

If you are in-house patent attorney/agent prosecuting cases for your employer-client, do you still need to file a power of attorney? I’m finding that a good percentage of cases have a registered patent professional listed as the correspondence address within the Application Data Sheet, and that individual is being allowed by the USPTO to prosecute the case no behalf of its client.  However, no power-of-attorney is on file with the USPTO.

My question above is focused on in-house counsel.  I’ll note that I’m also finding that this practice is quite common even in cases where outside counsel represents the patent applicant (~10% of applications).

Examples:

  • Application No. 16/381,289 — Barnes & Thornburg prosecuted this patent application to issuance on behalf of the applicant (Hill-Rom). The file does not show any power of attorney or assignment document filing.
  • Application No. 14/986,530 — Infinera’s in-house counsel prosecuted this application. No power of attorney on record.
  • Application No. 16/381,279 — Iandiorio Teska & Coleman prosecuted this patent application on behalf of the applicant (National Lumber).  No power of attorney on record.
  • Application No. 16/340,010 — Budzyn IP firm has been prosecuting this application on behalf of the owner (Armstrong Flooring).  No power of attorney is on record in the case.

(Note – these were just the first few cases that I randomly pulled-up).

25 thoughts on “Power of Attorney

  1. 8

    If you are in-house patent attorney/agent prosecuting cases for your employer-client, do you still need to file a power of attorney?

    An interesting question, but one about which I hope no actual in-house counsel will offer anecdotal answers. Please remember that under 37 C.F.R. § 11.106 a registered practitioner “shall not reveal information relating to the representation of a client unless the client gives informed consent, [or] the disclosure is impliedly authorized in order to carry out the representation… .” Discussions of standard practice in your in-house department are “information relating to the representation of a client.”

    There is no “already public information” exception to that duty. Just because Prof. Crouch can find the answer on PAIR does not mean that you are allowed to answer it, unless your company has given informed consent to the disclosure. Regardless of whether your company is or is not observing best practices, one should not discuss it in public unless some officer of your company has signed off on the discussion.

    1. 8.1

      Raising the question of what that means for in-house that is also an officer.

      Side note, in-house I know have broad authority to benchmark. Therefore, can answer AIPLA surveys, discuss practices with other in-house, etc.

    2. 8.2

      That’s a good point, Greg.

      Which, of course, is yet another valid reason for conversing with the use of pseudonyms and anonymity.

  2. 7

    As in an house patent agent I always file a power of attorney for the cases I prosecute. Our outside counsel often file the power of attorneys after the cases are filed, sometimes much later. As noted above the power of attorney is rarely necessary, but always a good idea.

  3. 6

    Do your (existing / potential) clients ever refuse / decline to sign POAs (or at least until the point where the PTO requires them)?

    If so, do you then refuse / decline to accept the engagement?

    1. 6.1

      I have never had a client refuse or decline to sign a PoA. I probably would decline the engagement if they did. Huge red flag for me.

    2. 6.2

      I found the disparity in data here to be very surprising, as we have a hundred percent coverage as a matter of protocol. This struck me as pretty much a standard “do you have all your “i’s” dotted and “t’s” crossed type of thing.

  4. 5

    Dennis, note that the PTO stores up to three email addresses per Customer Number (CN). And the PTO will email eNotifications of new documents in the file for an application/patent whose correspondence address or power of attorney address is associated with that CN, when the registered practitioner sets the correspondence mode for that CN to email. Except that the PTO will only send maintenance fee reminders in paperv via postal mail, and only to the maintenance fee address for the CN associated with the corresponding address of a patent. The PTO stores three addresses for each application: correspondence address; Power of attorney address; and maintenance fee correspondence address. These facts, and the ability and limitations on that ability, of practitioners to associate CNs and addresses with CNs and to get the PTO to recognize Powers of attorney and correspondence addresses, affects the business rules we employ in filing applications and filing powers of attorney.

  5. 4

    10 years in house. No POAs filed. Occasionally need a applicant/assignee authorization for a terminal disclaimer, but it’s never been clear to me why I couldn’t sign that myself, too.

    1. 4.1

      “it’s never been clear to me why I couldn’t sign that myself, too.” At a base level, because 1.321(c)(2) says so. At a policy level, because only those people authorized by law to bind an artificial legal entity are entitled to give up substantive rights.

      1. 4.1.1

        But I am also “the applicant” since the applicant is the entity. I know the PTO would say ‘no’ but not sure it is outside the rules.

        1. 4.1.1.1

          AR – You are not authorized to contractually bind a legal entity unless you are an officer or a manager. If your corporate by-laws so authorize you then you are de jure an officer of the corporation.

          1. 4.1.1.1.1

            Exactly Rick. You get it.

    2. 4.2

      AD,

      That sounds really scary. Does your employer carry malpractice insurance?

      1. 4.2.1

        I wonder if in-house departments did this? Carry malpractice insurance? can anybody comment?

        1. 4.2.1.1

          May not be universal policy. I know some don’t carry insurance for in-house: the remedy is you get fired if you are incompetent/negligent.

  6. 3

    When I was in-house (Fortune 50) we filed a POA in every case.

  7. 2

    The PTO claims that about 170,000 Powers of Attorney are filed per year

    link to federalregister.gov

    while there are 320,000 new original applications, 160,000 provisionals, and 110,000 continuations.

    link to federalregister.gov

    Thank you Dennis, for resolving that the mismatch is due to colossal bad judgment on behalf of the patent bar (how do you withdraw from a case if you don’t have a Power of Attorney?) rather than undercounting by the PTO. The PTO is evading the law every which way from Sunday link to ssrn.com — I guess they decided to skip one.

    1. 2.1

      David makes a great point in his parenthetical. Early in my career I had a few cases where no PoA was filed. In some, the client stopped paying and we needed to withdraw. But if there is no PoA on file, the PTO will not accept a withdrawal. We were stuck as attorney of record unless and until a new PoA was filed. We now ALWAYS require a PoA.

    2. 2.2

      David, thank you for pointing out one of the reasons for filing a power of attorney in an application – being able to formally withdraw from the case. There are some other such unusual circumstances. Some may need a power of attorney from the assignee company of the inventors not just from the employee-inventor.
      So I wonder if your number of only 170,000 powers of attorney filed per year [versus 320,000 new original applications] is only counting separately filed powers of attorney and not counting all the powers of attorney that are combined into, as a part of, the employee inventor assignment forms that many corporations use?

  8. 1

    Note – I don’t believe that the MPEP or CFR expressly require the filing of a power of attorney. Is that correct?

    1. 1.1

      A registered patent attorney can do most things without a POA. There are only a handful of things, for example, filing a terminal disclaimer, where the PTO requires a POA from a registered patent attorney. But my practice is to get the client to sign one and file it in every case, so we don’t have to wait should a POA become necessary somewhere during prosecution. With the advent of the form of the POA where the client can sign a single time then the document can be used over and over again with the attorney’s signature on a transmittal sheet, there’s really little reason not to do that.

    2. 1.2

      Correct, see 37 cfr § 1.34. Practitioners may file in a representative capacity.

      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.

    3. 1.3

      You do not need a power of attorney until you pay the issue fee, or file a disclaimer, and maybe so other stuff. Your signature on most other papers certifies that you are authorized by the applicant.

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