AIA Power of Attorney Practice Presentation Mar-20-2013

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AIA Final Rules Power of Attorney March 20, 2013

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Transcript of AIA Power of Attorney Practice Presentation Mar-20-2013

  • 1. AIA Final RulesPower of Attorney March 20, 2013

2. Power of Attorney 3. Power of Attorney Why file a Power of Attorney? Allows the firm access to applications beforepublication Important for status checks at the USPTO Helps out attorneys with interviews Terminal disclaimers 4. Power of Attorney Original applicant filing the application ispresumed to be the owner (not theinventors), unless later assigned. 37 CFR3.73(a) ADS names the Applicant then they arepresumed to be the owner and the patent willissue to them Statement Under 3.73(b) is now 3.73(c) 5. Power of Attorney Two Ways to Accomplish:1. General POA (PTO/AIA/80) + 37 CFR 3.73(c) Statement (PTO/AIA/96)2. Transmittal For Power of Attorney (PTO/AIA/82)- Part A- Transmittal Identifying the Application- Part B- Power of Attorney 6. Power of Attorney- PTO/AIA/80 Way #1 File: General Power of Attorney (PTO/AIA/80) Signed by Applicant- e.g., Company Officer 37 CFR 3.73(c) Statement (PTO/AIA/96) Signed by either:- Attorney/Practitioner Identified on AIA/80- Applicant- e.g., Company Officer Assignment Record ahead of filing Power of Attorney; OR Attach copy of Assignment & Record Same Day 7. Power of Attorney- PTO/AIA/80 General POA 3.73(c) StatementPTO/AIA/80PTO/AIA/96 8. Power of Attorney Example #1- PTO/AIA/80Reel/Frame No.FiledRecordFileADSApp. Assignment New 3.73(c) Statement PTO/AIA/96ADS naming General POAApplicant PTO/AIA/80 9. Power of Attorney Example #2- PTO/AIA/80Filed Can file with App. FileADSApp.Assignment General POA 3.73(c) StatementADS namingPTO/AIA/96PTO/AIA/80Applicant 10. Power of Attorney- PTO/AIA/82 Way #2 File: Power of Attorney (PTO/AIA/82) Part A- Transmittal for Power of Attorney- Signed by Attorney/Practitioner, OR- Signed by Applicant (e.g., Company Officer) Part B- Power of Attorney by Applicant- Signed by Applicant (e.g., Company Officer) Assignment- Still Need to Record to EstablishAssignee as the Applicant 11. Power of Attorney- PTO/AIA/82 Transmittal (Part A) Fill in ApplicationInformation Can leave Application Information blank if filed with application Signed by: Applicant, Patent Attorney, or Patent Agent. 12. Power of Attorney- PTO/AIA/82 Power of Attorney(Part B) Signed by Applicant Company Officer President Treasurer Secretary, etc. Inventor 13. Power of Attorney- PTO/AIA/82 Power of Attorney(Part B) Apparently, theUSPTO allows you torecycle Part B formsand use them forother applications Just need to updatePart A for eachapplication 14. Power of Attorney- PTO/AIA/82 When to Use PTO/AIA/82 Form (Way #2) Want to establish Power of Attorney with thefiling of the application- assignments might takea while to get signed. Multiple inventors or assignees not wanting toassign to the same company Issues Need to have the correct box checked Still need to record the assignments 15. Power of Attorney Example #3- PTO/AIA/82 SignedClient (Officer) Part B APartUSPTO 16. Power of Attorney Example #4- PTO/AIA/82 SignedPart B Betty SignedBetty Part B AndyAndyPart B APart Part BUSPTO 17. Power of Attorney Example #5- PTO/AIA/82Filed Can file with App.FileADSApp.ADS naming Part APart BApplicant 18. Power of Attorney- Continuing Applications Allowed to use parent POA if you supply acopy of the parent POA Exception: POA by inventor and CON/DIVnames an inventor not in the parent 37 CFR 1.32(d) p. 32 Lose POA if you add a new inventor withoutPOA from new inventor 37 CFR 1.32(e) p. 32 19. More Information and Questions Contact: Chuck SchmalPhone: (317) 713-4954Email: [email protected] 20. AIA Final Rules Power of AttorneyMarch 20, 20132013 Woodard, Emhardt, Moriarty, McNett & Henry LLP