MPEP 400 - Representation of Owner/Inventor

Question 1

When may an attorney resign?

Answer 1

Attorney may resign with some restrictions.
1. A withdraw is effective when APPROVED rather than when received.

2. Commissioner usually requires at least 30 days between (i) approval of withdraw and the end of a reply period; or (ii) the expiration date of the period which can be obtained by a petition for extension of time.

Question 2

Dead, Insane, or Unavailable Inventor BEFORE Filing

Answer 2

Oath/Substitute statement must be signed by person who steps into dead inventor’s shoes OR by coinventor under Rule 1.45 or 1.46, or, if no coinventor is available, by someone having a sufficient proprietary interest.

Question 3

When is revocation of a power of attorney by client completed?

Answer 3

When patent office receives the notice.

Question 4

Dead, Insane, or Unavailable AFTER filing

Answer 4

Need new power of attorney, unless coupled with an interest or Notice of Allowance received.

Requirement for Supplemental Oath can be waived.

Question 5

Statements that require verification (oath/declaration)

Answer 5

1. Retroactive foreign filing license (Rule 5.25)
2. Rule 131 (antedating)
3. Rule 132 (secondary considerations, utility, operability)
4. Inventor’s Oath or Declaration
5. Affidavit to disqualify patent, printed publication, or other disclosure as prior art (AIA 102(b)(1), (2), and Rule 1.130)

Question 6

Statements that DO NOT need to be verified

Answer 6

1. IDS
2. Translations
3. Mail filed after postal interruption or emergency
4. Establish Fax Transmission of 1.53(d) (CPA) application (Rule 1.6(f)(iii)).
5. Express mail filing date correction
6. Substitute Specification
7. Request for reexamination