16.2 Representation, Power of Attorney & Correspondence

16.2 Representation, Power of Attorney & Correspondence

Applicant, owner, and practitioner are different roles

Modern practice separates who is the applicant, who owns the property, and who is authorized to act before the USPTO. Under 35 U.S.C. § 118 and Rules 1.42–1.46, an application may be made by the inventor or joint inventors, a deceased or legally incapacitated inventor’s legal representative, an assignee, a person to whom the inventor is obligated to assign, or a person who otherwise shows sufficient proprietary interest. Naming an assignee as applicant does not silently cure inventorship: the true inventors still must be identified.

Ownership also does not by itself make a corporation a registered practitioner. A juristic entity acts through a registered patent attorney or agent except where a rule permits an authorized officer to take a specified action. A question that says “the company owns the application” still requires analysis of who may sign and prosecute.

Power of attorney

A power of attorney is the applicant’s written authorization for a registered practitioner to represent the applicant. It may name one or more practitioners directly or designate the practitioners associated with a customer number. Customer-number practice makes it possible to update the roster centrally, but the authorization is still limited to practitioners properly associated with that number.

A power of attorney should be signed by the applicant or party authorized to act for the applicant. An assignment of the invention does not automatically serve as a power of attorney, and a recorded power does not itself prove ownership. When ownership is relevant, the assignee must establish its chain of title under the applicable rules.

Before a power is filed, a registered practitioner may sometimes act in a representative capacity under Rule 1.34. The practitioner supplies the required identification and accepts professional responsibility for the paper. Representative-capacity practice does not create a general power of attorney and does not allow an unregistered person to prosecute for another.

Correspondence address and customer numbers

The correspondence address tells the Office where to send notices. It can be linked to a customer number, but it is conceptually distinct from the power of attorney. Changing the correspondence address does not revoke appointed practitioners. Revoking a power does not necessarily supply a new correspondence address. Exam answers often swap these effects.

The Office generally sends correspondence to the address of record, and a properly mailed or electronic notice can start a response period even if internal client routing fails. Practitioners therefore must keep address and customer-number data current and docket notices promptly. A change should identify the affected application or use the approved customer-number procedure rather than assume that editing one matter updates all files.

Revocation and withdrawal

The applicant may revoke a power of attorney. A new power commonly revokes a prior power unless the paper states and the rules permit a different arrangement. The Office must receive the change; a private termination between client and lawyer does not update USPTO records by itself.

A practitioner seeking to withdraw must comply with Rule 1.36 and the professional-conduct rules. Withdrawal is ordinarily allowed when it can occur without materially adverse effect or when another recognized ground exists, but the practitioner must take reasonable steps to protect the client: give notice, allow time to obtain new counsel, surrender papers and property, refund unearned fees, and identify pending due dates. Near a nonextendable deadline, the Office may require protective action or may deny withdrawal that would prejudice the applicant.

Patent-agent authority and assignments

Registered patent agents and patent attorneys have the same authority for patent prosecution before the USPTO. Agents may prepare applications, respond to examiners, conduct interviews, and represent applicants in ex parte appeals. Under the federal practice authority recognized in Sperry, an agent may also prepare an assignment when it is reasonably necessary and incidental to a USPTO proceeding and merely implements a preexisting obligation or agreed terms.

That narrow incident does not authorize a patent agent to choose or negotiate substantive commercial terms, draft a license or employment agreement as general state-law counsel, litigate infringement, or advise on unrelated state law. Ask whether the task is necessary and incidental to authorized USPTO practice, and whether substantive terms have already been fixed.

Exam comparison

Use the document’s legal function, not its label in a fact pattern. If an assignee wants control, it may need both proof of ownership and a proper power; if a client changes firms, it may need a revocation/new power and a correspondence-address change.