Why it is super-important to get a Power of Attorney filed in absolutely every patent file

Over in the patent practitioner’s listserv (see EFS-Web) a question came up the other day about managing customer numbers.  One list member pointed out that Private PAIR nowadays offers really handy file management functions.  The Private PAIR user can easily update and change customer numbers, for example.  But alert listserv member Jeffrey Wendt reminded us that these really handy file management functions are available only with respect to application files for which the user has filed a Power of Attorney (and has the good luck that the USPTO has recognized the Power of Attorney).  And in fact there are many reasons, not only this PAIR file-management reason, why it is very very important to get a POA filed in every one of your active files.  I will list some of these reasons.

First I will mention that I am well aware that some practitioners rarely file a Power of Attorney in their cases.  The USPTO rules and practices permit a practitioner to conduct an entire course of prosecution, up to paying the Issue Fee and receiving the physical granted patent, without ever having to face the pesky business of filing a Power of Attorney.  But this blog article seeks to remind the reader that for many reasons, it is not a Best Practice to get lazy about filing POAs.

Filing a rush-rush Terminal Disclaimer.  Every now and then we run into a situation where we need to file a TD.  Maybe it’s only one case out of a hundred.  But it happens every now and then.  And when it happens, usually it is important to get it filed (and more importantly, granted by the USPTO) in a big rush.

You can upload a TD PDF file to EFS-Web and click “submit”.  Does that get you a granted TD?  No.  You get to wait, maybe days, maybe more than a week, until some USPTO employee gets around to looking at it.

But if you e-file the TD using the online EFS-Web form, it gets granted instantly.  This can make a big difference sometimes in getting a case allowed during the end-of-quarter or end-of-biweek time that is important to your Examiner.

But the stinker is — the online instantly granted TD will only work if you are already counsel of record.  In other words, you need to have already filed a POA and it needs to have already been recognized by the USPTO.

Using the super-handy file management features of Private PAIR.  Suppose you run into a situation where you need to update the Correspondence Address Customer Number for one file, or for a hundred files.  You could fax in a hundred Forms PTO/SB/122.  And wait and wait to see how long it takes USPTO to act on them.  And watch and watch to see how many of the cases USPTO fat-fingers to some other customer number.

Or you could use the Private PAIR system that lets you update many files with a new CACN with just a few mouse clicks.

Same thing if you find that you need to update one file or multiple files with a new Fee Address Customer Number (FACN).  Just a few mouse clicks if you do it online.

Except, this will work only if you are attorney of record for the files involved.

Changing entity size status.  Sometimes you have a patent that is in USPTO’s system as being owned by a small entity.  And the maintenance fee (MF) needs to be paid in a hurry.  And you discover to your horror that the owner no longer counts as “small”.  (Maybe the owner granted a license to a large entity, for example.)  So to be able to pay the large-entity MF you must somehow get the USPTO to list the patent as being owned by a large entity.

Legacy practice is to fax or mail a paper document to the USPTO.  And then to sit and wait and wait until somebody at the USPTO gets around to updating the entity size information.  Meanwhile you can’t pay the MF.  And time is running out.

In Private PAIR, you can update the entity size with just a few mouse clicks.  And the change takes effect instantly.

Except it won’t work if you are not attorney of record on the case.

Getting un-retained.  We hate to think about it, but sometimes a situation arises where we need to get off the file.  We need to be un-retained.  This might be a pending case or might be a granted patent.  But we need to get off the file.

Well, it turns out that there is an EFS-Web petition that is automatically granted that will let you off the file.  You click around and answer some questions in the affirmative and the EFS-Web system will automatically grant your petition to withdraw.

But not if you are not the attorney of record in USPTO’s computer system.  You have to be retained to get un-retained.

But let’s suppose your choice is to file a Petition to Withdraw as counsel on paper.  Suppose you hand-carry it to the USPTO (or fax it, or e-file it).  Well, pursuant to the USPTO rules, the petition will get bounced if the petitioner is not already counsel of record.

Corrective Application Data Sheet.  Practitioners who have experience with updating bibliographic data at the USPTO are well aware how very difficult it is to satisfy the nit-picky people at the USPTO who look to see if you did your strikethroughs and underscores in exactly the right places, and who seemingly draw pleasure from being about bounce a corrective ADS rather than making the bib data changes that were being requested.

EFS-Web has a Corrective ADS system that permits the practitioner to carry out the Corrective ADS process in a nearly completely automated way.  The nit-picker is denied the opportunity to find fault with the strikethroughs and underscores because (gasp) the USPTO itself prepares the strikethroughs and underscores in the e-filed form.  The nit-picker can’t very well say the strikethroughs and underscores were done wrong if the (real or imagined) error is due to the USPTO rather than due to the filer.

So the Corrective ADS is by far the Best Practice for submitting bib data changes, for those application types for which the system is available.

Except (the reader will guess what comes next) you are blocked from using the online Corrective ADS system if you are not already counsel of record in the case.

Other auto-granted petitions.  There are many more auto-granted petitions that USPTO will auto-grant only if you are already counsel of record.  Petition to withdraw from issue.  Petition to revive.  Petition to correct Assignee after payment of Issue Fee.

Web-based Issue Fee payment.  Until recent months the only way to pay an Issue Fee was to laboriously fill in a PDF form, with fiddly requirements to fit typewritten text into various physical fields on the form.  Now you can do a very convenient online web-based Issue Fee payment in EFS-Web.  It’s faster and easier then the legacy practice.

Except you can’t use it if you are not counsel of record on the file.

What’s your favorite reason why it is important to make sure you are counsel of record on a case?  Post a comment below.

9 Replies to “Why it is super-important to get a Power of Attorney filed in absolutely every patent file”

  1. Web based issued fee payment has been my favorite reason. I have not had the “pleasure” of doing the web based ADS yet but I am looking forward to it 🙂

  2. Carl,

    You’ve done a great job of summarizing some of the main reasons for having a Power of Attorney on record.

    Bottom line: it makes things more efficient.

  3. Makes sense, probably if there is a power of attorney filled he could also attend the hearings or other meetings in-case the applicant is not able to make it for such meeting..did i get it right?

  4. Agreed. The only additional reason I could think of is that some Examiners require the Power of Attorney to conduct an interview. From USPTO interview training materials: “If [the interview requester is] a registered practitioner, have them supply a power of attorney before the interview.” And from MPEP 713.05: “Interviews are generally not granted to registered individuals to whom there is no power of attorney or authorization to act in a representative capacity.”

  5. There are boxes you can check on the Issue Fee Transmittal Form to change entity status. But having a POA is the best practice.

  6. In your post, you say that you may do an EFS-Web petition (or I think also you could do a regular petition via EFS) so that you can be un-retained. I know that this works for a pending application where you have Power of Attorney, but you also mention in your post the need to be un-retained from granted patents. How do you remove yourself as attorney of record from an issued patent? It doesn’t seem to be possible via an EFS-Web petition, and I’m not sure if can work with a regular PDF petition either. Do you know how to un-retain yourself from an issued patent?

    1. To answer my own question, I don’t think you can un-retain yourself from an issued patent. See excerpt from MPEP 402.06 “Requests for withdrawal filed
      after a patent has issued will be placed in the file but
      will generally not be treated on their merits.”

      1. Kelly, your analysis seems correct.

        I tested and can confirm that the Withdrawal ePetition does not work in an issued patent. First, the ePetition requests application and confirmation numbers, not patent number. If you supply those numbers from the issued application, EFS gives the following error: “Application has patented. Cannot withdraw attorney(s)/agent(s) of a patented application.”

        It seems that the only thing one can do is manually change the correspondence address (and, if specified, the fee address) to point to the assignee. Any thoughts, Carl?

        1. One additional note. MPEP 2560 states: “The revocation or withdrawal of an attorney may be submitted at any time; however, a revocation or withdrawal of an attorney filed after issuance of a patent is not normally processed.”

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