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The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.

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The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012. These new provisions went into effect on September 16, 2012 and apply to all non-PCT U.S. patent applications filed under 35 U.S.C.§ 111(a) (including continuing and PCT bypass applications) filed on or after September 16, 2012. These provisions are applicable to oaths and declarations in design, plant, and reissue applications irrespective of the fact that they are not filed under 35 U.S.C.§ 111(a).

Forms are now available for download. Our old forms are also available since for PCT national stage applications, the new inventor's oath/declaration provisions only apply to applications having an international filing date on or after September 16, 2012. Accordingly, the old inventor oath/declaration forms should be used for any such national stage applications with an international filing date prior to September 16, 2012.

You will notice that there are now several options available: A combined Declaration/Assignment document or a Declaration document that will need to be filed with a separate Assignment instrument. In both cases a separate Power of Attorney form will need to be submitted. These forms are available on our "Download" tab above. The other noticeable change is that as a result of the new requirement for an Application Data Sheet to be submitted with all new applications, the Declaration form itself contains only very basic information, and each inventor signs his or her own copy of the Declaration or Declaration/Assignment form. All of the signed forms are then submitted to the USPTO.

Regarding the Power of Attorney, if an assignee files an application as the applicant, a Power of Attorney by Applicant form should be signed by a party authorized to act on behalf of the assignee. After a company provides our firm with an executed Power of Attorney by Applicant, it will not be necessary to provide us any further Power of Attorney forms for future filings of patent applications on behalf of that assignee so long as the assignee is the applicant in those cases. Accordingly, a copy of the Power of Attorney by Applicant will be filed along with a Transmittal form, which our firm will prepare and execute, identifying a specific application for the Power of Attorney.

Similarly, if there is no assignee, or if the assignee has opted not to file the application and not to take over prosecution to the exclusion of the Inventor(s), the Inventor(s) and/or an Inventor’s Legal Representative (if an Inventor is deceased or legally incapacitated) are the applicants and should execute the Power of Attorney by Applicant . This will grant our firm Power of Attorney for one specific patent application identified in an attached Transmittal form, which we will prepare and execute. If, however, the Inventor(s) are the original applicants of an application and an assignee or assignees wishes to take over prosecution to the exclusion of the Inventor(s), a representative of the company, i.e., the assignee, should execute a Power of Attorney to Prosecute to be filed along with a Statement Under § 3.73(c) establishing ownership of the application. To establish ownership, any Assignment from the Inventor(s) must be recorded concurrently with or prior to the filing of the Power of Attorney to Prosecute. Please note that the filing of an ADS with a new application sets forth the identification of the applicant. Where an application is filed without indentifying an assignee(s) as the applicant, the USPTO identifies the inventor(s) as the applicant. Under such circumstances, if the assignee wishes to be identified as the applicant, then the assignee(s) would need to execute a Power of Attorney to Prosecute to be filed along with along with a Statement Under § 3.73(c) rather than a Power of Attorney by Applicant.

The following USPTO patent forms may be installed on your computer. Please click on the appropriate declaration or assignment form below to see instructions on how to use the form and how to download/save it to your computer. You may then open and use the forms directly from your computer.

• Power of Attorney Flowchart
• Inventor Declaration for Utility or Design Application and Assignment for Single Assignee
• Inventor Declaration for Utility or Design Application and Assignment for Multiple Assignees
• Power of Attorney by Applicant (Inventor) - Use this form when the Inventor is granting Power of Attorney
• Power of Attorney by Applicant (Assignee) - Use this form when the Assignee is granting Power of Attorney
• Power of Attorney to Prosecute Applications Before the USPTO - Use this form if the Assignee wishes to take over prosecution to the exclusion of the Inventor(s)
• Inventor Declaration for Utility or Design Application
• Inventor Declaration for Plant Application
• Supplemental Sheet for Declaration and Assignment Forms
• Japanese Declaration and Assignment with Supplemental Sheet
• Japanese Declaration and Assignment - Multiple Assignees
• Single Assignee
• Multiple Assignees

The basics of patent assignments

What is a patent assignment, what are the requirements to make it valid, and why would a business enter into a patent assignment agreement? Read on to find answers to these questions and more.

Find out more about Patents

by   Cindy DeRuyter, Esq.

Cindy DeRuyter, Esq., has been writing for LegalZoom since 2018. She earned a Juris Doctor from Mitchell Hamline Scho...

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Updated on: December 4, 2023 · 2min read

Defining Patent Assignment

Requirements to assign a patent, searching for patent assignments.

Assigning patents can be a great way for companies to generate revenue and reduce risks associated with intellectual property ownership. If you are considering entering into a patent assignment agreement, understand that it is irrevocable. Because of that, evaluate proposed terms and provisions carefully before moving forward.

Here's a high-level overview of how patent assignments work: when a patent's owner or applicant assigns it to another individual or company, the assignor agrees to relinquish their rights to enforce or benefit from it in the future.

You can assign rights for applications still pending with the United States Patent and Trademark Office (USPTO). When the USPTO approves the application, the assignee benefits from and may use and enforce the patent, not the assignor. Companies also assign rights for issued patents, which relieves the assignor of the burden of enforcing their intellectual property and provides a source of revenue.

Patent assignments can be lucrative for both parties. While assignors make money right away, assignees can create revenue streams by earning money from royalty payments. After an assignment is complete, the assignee has exclusive rights to such income.

A patent assignment agreement documents the transfer and arrangement between the parties. If you are considering entering into one, know that you need it to be written—a verbal agreement alone is insufficient.

Don't underestimate the importance of this, either. Without a valid agreement on file with the USPTO, an intended assignor remains legally responsible for the patent and an intended assignee gains none of the rights or benefits.

Here are the requirements for a valid written assignment:

• Confirm that the assignor has the full, legal right to make the assignment and that the assignee can legally assume the rights and obligations.
• Clearly identify both the assignor and assignee using legal names. If more than one company owns the patent, identify all owners.
• Identify the underlying patent by title and number and include a complete and accurate description of it.
• Describe the terms of the agreement, including financial arrangements.
• All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be reached but where enough evidence exists that documents their intentions and rights.
• File the patent assignment with the USPTO within three months after the agreement is signed, paying the then-current fee.

Though the agreement is a legal document, it does not need to be notarized. However, obtaining notarization for the signatures provides added protection, limiting the risk of a party later claiming a signature was not valid.

The USPTO maintains a patent assignment database that includes all the assignments recorded since August 1980. Using the database, you can search with the assignor's or assignee's name, the patent number, application number, publication number, or other identifying information.

Properly assigning patents protects both assignors and assignees. If you want to assign a patent, downloading a patent assignment form can help. Alternatively, you can consult an intellectual property attorney .

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Types of Powers of Attorney for Pending US Patent Applications

Below is a short overview of which forms are needed for submission of a POA for pending US patent applications, depending on the filing date of the application.

Applications filed before September 16, 2012 (pre-AIA) (Note: The filing date for a US national phase is the filing date of the International (PCT) Application):

If the inventors did not assign their application, the PTO/SB/81 form 1  is needed.

If the inventors assigned the application to assignees, either the PTO/SB/80 2  or PTO/SB/81 form is required; regardless of which form is used, a POA from the assignee must be accompanied by a statement pursuant to 3.73(b) ( PTO/SB/96 form ).  If there is more than one assignee, each assignee must execute a separate POA and 3.73(b) statement.

Applications filed on or after September 16, 2012 (AIA):

An applicant of record in a U.S. patent application may execute a POA.  The simplest way for the applicant of record to give power to a practitioner is via PTO/AIA/82A 3  and -82B 4  forms.

If a current assignee is not the applicant of record, the assignee must use the PTO/AIA/80 form , which must be accompanied by a statement pursuant to 37 C.F.R. § 3.73(c).  If there is more than one assignee, each assignee must execute a separate POA and 3.73(c) statement ( PTO/AIA/96 form ).

Check out our blog for more tips on navigating the complex patent process.

1  “Power of Attorney or Revocation of Power of Attorney With a New Power of Attorney and Change of Correspondence Address”

2  “Power of Attorney to Prosecute Applications Before the USPTO”

3  “Transmittal for Power of Attorney to One or More Registered Practitioners”

4  “Power of Attorney by Applicant”

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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).

• 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 ”

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.

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.

That’s a good point, Greg.

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

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.

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?

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.

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.

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.

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.

“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.

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.

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.

Exactly Rick. You get it.

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

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

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.

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

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.

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.

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.

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?

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

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.

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.

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.

Correct. See 37 CFR 1.34.

Comments are closed.

THE IMPORTANCE OF POWER OF ATTORNEY FOR PATENT APPLICANTS

What is a Power of Attorney? Why is a Power of Attorney required for filing a patent?

For patent application, the Power of Attorney (POA) is a legal document that allows anapplicant for a patent to grant an agent or another person the authority to act on the applicant’s behalf, e.g., to file and prosecute a patent application with the Patent Office.

Therefore, if an applicant for a patent wants a patent agent to handle the application and the formalities on theirbehalf, then the applicant is required to execute a POA to authorize the patent agent.

What are the duties of a patent agent authorized by the applicant through POA?

A patent agent acts on behalf of the applicant or the inventor i.e., acts as a coordinator between the applicant and the Patent Office. All the communication related to an application is communicated to the patent agent (on the recorded address for service) as if it is communicated to the applicant.

Role of a patent agent:

• Help inventor(s) to convert their innovation into a patentable invention which can be filed as a patent application as per the Patents Act, 1970.
• Help inventor(s) to define the scope of the claims of the invention.
• Patent search, FTO/infringement analysis, patent drafting, prosecution in the Patent Office to grant of a patent, drafting and filing an opposition, revocation of a patent, maintenance of patents and IP enforcement.

What is the time frameto file the Power of Attorney?

As per rule 135 (1) of the Patents Act, authorisation of an agent shall be filed in Form 26 or the form of POA within three months from the date of filing of the patent application, failing which no action shall be taken on such application for further processing till such deficiency is removed.

Generally, the POA shall be filed with appropriate stamp duty as per the Stamp Act.

How to revoke the Power of Attorney?

POA is valid until it is revoked. Therefore, if an applicant wishes to revoke the POA given to an agent, then it can be done by destruction of the POA document, or by a notice of revocation to the recipient of the POA.

What are the types of POA?

An applicant may provide the POA to the agent most suitable for their purpose. POAs that may be used during patent filing and prosecuting are:

• General Power of Attorney
• Specific Power of Attorney
• Substitute Power of Attorney

What is a General Power of Attorney?

If the applicant wishes the agent to handle all their matters filed with the patent office and doesn’t wish to execute a POA every time for a new matter, then they may issue a General Power of Attorney (GPoA) in the name of the agent.

In case a GPoA has already been filed in another application, a self-attested copy of the same shall be filed by the authorized Patent Agent in the current patent application.In addition, fresh stamp duty is also required to be filed with application details of thecurrent patentapplication.

What is a Specific/ Special Power of Attorney?

If the applicant wishes the agent to handle specific act(s), then they may issue a  Specific/ SpecialPower of Attorney . For example, a Specific/ Special Power of Attorney may be assigned to an agent to file a renewal fee of a patent only.

What is a Substitute Power of Attorney?

In a Substitute Power of Attorney,the person (authorized agent) who is given the Power of Attorney is delegating that power by putting another person in their place. The substitute power of attorney is used during the prosecution of a patent application when the authorised agent of the POA is unable to act on behalf of the applicant at any stage. The substitution may be for full power in the application or for a particular/specific power in the application.

The format of Form 26 to be used for filing in a patent application can be obtained from the link below:

Form-26 –  https://ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_38_1/form-26.pdf

The Importance of Power of Attorney for Patent Applicants

Author – Sanjeeta Das

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MPEP 409.01(b) Deceased or Legally Incapacitated Inventor- Application Filed Before September 16, 2012

Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

MPEP Chapter Index Chapter 400 : Representative of Applicant or Owner 409 : Death, Legal Incapacity, or Unavailability of Inventor 409.01 : Deceased or Legally Incapacitated Inventor

Previous: §409.01(a) | Next: §409.02

409.01(b)    Deceased or Legally Incapacitated Inventor- Application Filed Before September 16, 2012 [R-01.2019]

[Editor Note: See MPEP § 409.01(a) for information pertaining to a deceased or legally incapacitated inventor in an application filed on or after September 16, 2012.]

35 U.S.C. 117 Death or incapacity of inventor.

Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.

37 C.F.R. 1.42  (pre-AIA) When the inventor is dead.

In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

37 C.F.R. 1.43  (pre-AIA) When the inventor is insane or legally incapacitated.

In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.

I.    TERMINATION OF POWER OF ATTORNEY – DECEASED INVENTOR

Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. See also pre-AIA 37 CFR 1.422.

II.    PROSECUTION BY LEGAL REPRESENTATIVE, ADMINISTRATOR OR EXECUTOR

When an inventor becomes legally incapacitated prior to the filing of an application and prior to executing the oath or declaration required by pre-AIA 37 CFR 1.63 and no legal representative has been appointed, one must be appointed by a court of competent jurisdiction for the purpose of execution of the oath or declaration of the application.

One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with pre-AIA 37 CFR 1.42.

Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator. The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64 .

III.    PROOF OF AUTHORITY OF ADMINISTRATOR OR EXECUTOR

Proof of authority of the legal representative of a deceased or incapacitated inventor is not required. Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.

IV.    AFTER ADMINISTRATOR OR EXECUTOR HAS BEEN DISCHARGED

When an administrator or executor has performed his or her functions and has been discharged and it is desired to make an application for an invention of the deceased, it is necessary for the administrator or executor to take out new letters of administration in order that he or she may file a new application for an invention of the deceased inventor.

V.    EXCEPTION IN SOME FOREIGN COUNTRIES

The terms "Executor" and "Administrator" do not have exact counterparts in all foreign countries, and therefore, those terms must be construed to fit the circumstances of the case. Hence, the person or persons having authority corresponding to that of executor or administrator are permitted to make an application.

VI.    IF INVENTOR OF ASSIGNED APPLICATION DIES

When an inventor who has prosecuted an application after assignment, dies, the administrator of the deceased inventor’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes (see MPEP § 402.07 ).

VII.    INTERVENTION OF EXECUTOR NOT COMPULSORY

When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.

This practice is applicable to an application which has been placed in condition for allowance or passed to issue prior to notification of the death of the inventor. See MPEP § 409.01 .

When an application is being prosecuted by joint inventors without a joint inventor or patent practitioner having been granted a power of attorney, and a joint inventor dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead. Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene. If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and 1.64 (e.g., stating that he or she is the legal representative of the deceased inventor and his or her residence, citizenship and post office address). Once the legal representative of the deceased inventor intervenes in the pro se application, the signatures of the living joint inventors and the legal representative are required on the papers filed with the USPTO.

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India – The Importance Of Power Of Attorney For Patent Applicants.

August 4, 2021 by Conventus Law

4 August 2021  

What is a Power of Attorney? Why is a Power of Attorney required for filing a patent?  

For patent application, the Power of Attorney (POA) is a legal document that allows anapplicant for a patent to grant an agent or another person the authority to act on the applicant’s behalf, e.g., to file and prosecute a patent application with the Patent Office.  

Therefore, if an applicant for a patent wants a patent agent to handle the application and the formalities on theirbehalf, then the applicant is required to execute a POA to authorize the patent agent.  

What are the duties of a patent agent authorized by the applicant through POA?  

A patent agent acts on behalf of the applicant or the inventor i.e., acts as a coordinator between the applicant and the Patent Office. All the communication related to an application is communicated to the patent agent (on the recorded address for service) as if it is communicated to the applicant.  

Role of a patent agent:  

Help inventor(s) to convert their innovation into a patentable invention which can be filed as a patent application as per the Patents Act, 1970.

Help inventor(s) to define the scope of the claims of the invention.

Patent search, FTO/infringement analysis, patent drafting, prosecution in the Patent Office to grant of a patent, drafting and filing an opposition, revocation of a patent, maintenance of patents and IP enforcement.  

What is the time frameto file the Power of Attorney?  

As per rule 135 (1) of the Patents Act, authorisation of an agent shall be filed in Form 26 or the form of POA within  three months  from the date of filing of the patent application, failing which no action shall be taken on such application for further processing till such deficiency is removed.  

Generally, the POA shall be filed with appropriate stamp duty as per the Stamp Act.  

How to revoke the Power of Attorney?  

POA is valid until it is revoked. Therefore, if an applicant wishes to revoke the POA given to an agent, then it can be done by destruction of the POA document, or by a notice of revocation to the recipient of the POA.  

What are the types of POA?  

An applicant may provide the POA to the agent most suitable for their purpose. POAs that may be used during patent filing and prosecuting are:  

General Power of Attorney

Specific Power of Attorney

Substitute Power of Attorney  

What is a General Power of Attorney?  

If the applicant wishes the agent to handle all their matters filed with the patent office and doesn’t wish to execute a POA every time for a new matter, then they may issue a General Power of Attorney (GPoA) in the name of the agent.  

In case a GPoA has already been filed in another application, a self-attested copy of the same shall be filed by the authorized Patent Agent in the current patent application.In addition, fresh stamp duty is also required to be filed with application details of thecurrent patentapplication.  

What is a Specific/ Special Power of Attorney?  

If the applicant wishes the agent to handle specific act(s), then they may issue a  Specific/ SpecialPower of Attorney . For example, a Specific/ Special Power of Attorney may be assigned to an agent to file a renewal fee of a patent only.  

What is a Substitute Power of Attorney?  

In a Substitute Power of Attorney,the person (authorized agent) who is given the Power of Attorney is delegating that power by putting another person in their place. The substitute power of attorney is used during the prosecution of a patent application when the authorised agent of the POA is unable to act on behalf of the applicant at any stage. The substitution may be for full power in the application or for a particular/specific power in the application.  

The format of Form 26 to be used for filing in a patent application can be obtained from the link below:  

Form-26 –  https://ipindia.gov.in/writereaddata/Portal/IPO

FormUpload/1_38_1/form-26.pdf  

The Importance of Power of Attorney for Patent Applicants  

Author – Sanjeeta Das  

For further information, please contact: 

Manisha Singh , Partner, LexOrbis

[email protected]

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Q: Should I sign a combined declaration and assignment if I have not seen the patent application?

My employer has, on several occasions, had me sign paperwork to assign ownership of patents for products I have worked on to the company. Which is fine, I agreed to as much when I accepted the job. These documents include four declarations, the first three of which involve reviewing and confirming aspects of the application, and the fourth is acknowledgement that I am subject to fines or jail time for making any false statements. The company has declined to provide me with a copy of the application (I don't know if it's even been written . . .). I get that this form is basically superfluous, since they can sign on my behalf based on my employment contract. But I'm disinclined to sign something that is clearly not true even if it's just a technicality. OTOH I'm concerned bout not receiving credit for future work if I make this difficult. Should I just sign, or is there reason to be concerned about consequences -- or about abetting a bad filing if it's being shoddily handled like this?

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A: Based on the information you've provided, there are a few important considerations: 1. Legal implications: Signing a declaration without having seen the patent application could potentially expose you to legal risks, especially if the declaration includes statements confirming aspects of the application that you cannot verify. The fourth declaration you mentioned, acknowledging potential fines or jail time for false statements, underscores the seriousness of this issue. 2. Ethical concerns: If you are uncomfortable signing a document that you believe contains false statements, even if they seem like technicalities, it's reasonable to hesitate. Signing something you know to be untrue could be considered unethical. 3. Professional credit: Your concern about not receiving credit for future work if you don't sign is understandable. However, if your employment contract already assigns patent rights to your employer, refusing to sign this particular document may not necessarily jeopardize your professional credit. Recommendation: Before signing, it would be prudent to raise your concerns with your employer or the legal department handling the patent application. Explain that you are hesitant to sign declarations confirming aspects of an application you haven't seen. Request a copy of the application to review before signing, or ask if the language in the declarations can be modified to reflect that you are assigning rights but not making specific claims about the application's contents. If your employer is unwilling to provide the application or modify the declarations, you may want to consider seeking independent legal advice to better understand your rights and obligations in this situation. A lawyer specializing in intellectual property and employment law could help you assess the potential risks and advise on how to proceed. Ultimately, while not signing may create some friction with your employer, signing a document you know to contain false statements could expose you to more serious consequences. It's important to balance your professional obligations with your personal integrity and legal protection.

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