How to know whether USPTO has recognized your patent Power of Attorney?

There are lots of situations where USPTO will refuse to do what you want if USPTO thinks that you are not the “attorney of record”.  Filing any of a variety of EFS-Web auto-granted actions such as a Terminal Disclaimer.  When you try to do any of these things in an application file, the EFS-Web system asks you to type in your registration number and will look up that number in the Palm database for the application file.  If EFS-Web thinks you aren’t the attorney of record, it will halt and refuse to let you move forward.

As another example it is impossible to get the auto-granted petition to withdraw as attorney, unless the Palm system thinks you are the attorney.

You never know when one of these situations might come up without warning, and you would need to get such a filing done.  Which means that as a general rule you should be filing a Power of Attorney in each case.  And as a general rule you should docket carefully to check to make sure the USPTO actually recognizes the Power of Attorney.  Then when a crunch time comes, such as the need to urgently file a Terminal Disclaimer, or get yourself withdrawn as attorney, you will actually be able to get the task done.

And as it turns out, at least two of USPTO’s ways for you to supposedly learn whether or not the USPTO recognizes the Power of Attorney are flawed and can’t be trusted.

For many years there was exactly one way to know for sure that the USPTO had reviewed and accepted the Power of Attorney that you had filed.  The exactly one way was to watch for Form N570, entitled Notice of Acceptance of Power of Attorney.  If you had received Form N570, you knew that USPTO had formally accepted the Power of Attorney.  If you had not received Form N570, you knew that USPTO had not yet gotten around to reviewing the Power of Attorney to decide whether or not to accept it.

This provided a simple rule for the docket department.  When we send in a Power of Attorney, docket a month to check for receipt of Form N570 from the USPTO.

In recent months, however, USPTO has made an unpublicized change in its procedures.  USPTO has discontinued the mailing of most Forms N570, and instead uses a sentence in the official Filing Receipt to communicate that USPTO has accepted a Power of Attorney.

Okay, so that’s not so bad, right?  We can just tell the docket department that either of two events will permit clearing the docket “check for receipt of Form N570”.  One event is the receipt of Form N570.  The other event is receipt of a Filing Receipt in which the USPTO states that there is a Power of Attorney.

Such a Filing Receipt has a sentence like this:

Power of Attorney:  The patent practitioners associated with Customer Number 12345.

I call this the “magic sentence” relating to a POA.

The problem is that the presence of the “magic sentence” in a Filing Receipt can’t be trusted as an indicator that the USPTO has examined a Power of Attorney and has decided to accept it.  The easiest way to see this is by looking in any of your files that have a Filing Receipt and in which you have not yet filed a Power of Attorney.  In nearly all such files, you will see that same sentence:

Power of Attorney:  The patent practitioners associated with Customer Number 12345.

But however it is that USPTO decided to insert the customer number “12345” into that sentence in the Filing Receipt, USPTO did not do it by looking at the Power of Attorney, because you had not filed one!

It seems that USPTO pulls the “representative” customer number from the Application Data Sheet, and slots that number into the “magic sentence” in the Filing Receipt.  As such, the magic sentence in the Filing Receipt sometimes merely communicates who exactly is recognized as “acting in a representative capacity”.

Which means you could later run into a crunch situation where you urgently need to file a TD, and you could find yourself incapable of filing the TD.

I phoned up the Application Assistance Unit, reaching a representative who shall remain nameless.  This representative said “if you ever want to know whether the USPTO has formally accepted a Power of Attorney, you can learn the answer to this question by clicking on the “attorney/agent” tab in Private PAIR.

I pointed out to the representative that this was nonsense.  If you file a new patent application at 10:00 AM, and look at the case in PAIR at 10:30 AM, you will see an “attorney/agent” tab and if you click on it, some attorneys will be listed.  There is no way that a mere half an hour after e-filing a new case, the USPTO would already have inspected the Power of Attorney and decided whether or not to accept it.

Unfortunately USPTO has never documented any of this, not in the MPEP nor anywhere else such as the Official Gazette.  So USPTO has never taken a position in any public way as to what you can and cannot conclude regarding a Power of Attorney.  You cannot be sure the USPTO has actually looked at it.  The sentence in the Filing Receipt might merely mean that USPTO is acknowledging that some group of practitioners is acting “in a representative capacity”.  The presence of a practitioner list in the “attorney/agent” tab of PAIR might likewise merely mean that USPTO is acknowledging that some group of practitioners is acting “in a representative capacity”.

USPTO needs to come out and state publicly whether some event other than mailing of an N570 really counts as USPTO’s express acceptance of a Power of Attorney.  And that event (for example USPTO mailing a Filing Receipt containing the “magic sentence”) needs to never happen merely because some customer number is cited in an ADS.

Between now and then, at our office we do not see any alternative but to continue to badger the USPTO to mail out Form N570 for each Power of Attorney that we file.

What do you docket for USPTO acceptance of POAs?  Do you permit your docket department to clear the POA docket based on nothing more than the “magic sentence” in the Filing Receipt?  If so, then how do you deal with “magic sentences” that predate the filing of a Power of Attorney?  Comments welcome.