Who Has the Power? Granting Power of Attorney in AIA Applications

For applications having an actual filing date on or after September 16, 2012, a party applying for a patent has the option of naming the inventor or joint inventors of the invention as the applicant or naming the assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the application as the applicant. To File or Not to File as an Applicant-Assignee: That is the Question, a post on the Finnegan AIA Blog, provides insight into the strategy behind determining which entity to list as the applicant. 

The identity of the applicant has implications on a number of actions and procedures that will occur during prosecution. For example, 37 CFR § 1.32, which applies to applications filed on or after September 16, 2012, notes that “A power of attorney must: . . . (4) Be signed by the applicant for patent (§ 1.42) or the patent owner . . . ” As such, the party named as the applicant when an application is filed is the party who must sign a Power of Attorney. If the applicant changes during prosecution, then a new Power of Attorney must be executed and filed with the U.S. Patent and Trademark Office for the appointed practitioners to remain of record.

The following flow-chart is useful in determining the party that can effectively sign a Power of Attorney based on when the application was filed and which entity was named as the applicant.

You can access Patents Forms on the USPTO website here.