Do I need to sign power of attorney to respond to office action?

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We filed a patent. It was approved but then the office action was double patenting.

To respond to this office action do I need to sign power of attorney?

Is there data base for for patent lawyer customer numbers in US? What rights does power of attorney give ?

" I hereby appoint the Patent Practitioner(s) associated with the following Customer Number as my/our attorney(s) or agent(s), and to transact all business in the United States Patent and Trademark Office connected therewith for the application referenced in the attached transmittal letter (form PTO/AIA/82A) or identified above. #26344"

How can I find who is behind this customer number. Different name appears for U.S. Patent Office Registration ID with this number.

Anonymous

Posted 2015-12-03T07:20:37.740

Reputation: 113

Answers

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Is there database for for patent lawyer customer numbers in US?

I don't believe so. Patent practitioners have a registration number which is publicly searchable at the USPTO (as you have found). However, I do not believe there is any way to search by customer number.

An an aside, the customer number is used to appoint a firm of attorneys to act for you, rather than a single named attorney (MPEP § 403).

What rights does a power of attorney give?

37 CFR 1.32(a)(2) provides:

Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on the principal's behalf.

In other words, the power of attorney gives your attorney the right to act on behalf of the applicant. Most notably, this means that they can respond to the office action, and it's treated for legal reasons as if it comes from the applicant.

Can the attorney make decisions without consulting me?

Not really. The power of attorney allows the attorney to act on your behalf, so in theory they could act without consulting you. However, in practice this should not happen. Ethically, an attorney can only act on your instructions. They cannot make decisions on your behalf.

To respond to this office action do I need to sign power of attorney?

Yes—if you want your attorney to respond to the office action, you (as the applicant or a representative of the applicant) will need to sign the power of attorney. If you do not, the attorney will not be able to validly file a response.

Maca

Posted 2015-12-03T07:20:37.740

Reputation: 6 985

I would assume that the power of attorney gives the attorney also the right to sign and make decisions on my behalf without consulting with me ? Is that so ? – Anonymous – 2015-12-04T01:45:39.807

Why the same attorney did not needed power of attorney to file the same patent ? – Anonymous – 2015-12-04T02:00:16.107

I have updated my answer to discuss whether they can make decisions without consulting you.

It is very common for the power of attorney to be signed and provided to the USPTO after the application is filed. That may be why your attorney is getting you to sign it now. – Maca – 2015-12-04T09:59:04.090

Its not my attorney, it is hired by company that is co-inventor and it represents my 'interests' also. And it seems unnecessary to have power of attorney. – Anonymous – 2015-12-04T14:20:34.667

Multiple applicants can make things much more difficult. This may be a situation where you really do need to consult your own attorney to discuss the situation, who should explain what your options are. There may be other issues beyond the immediate power of attorney one. – Maca – 2015-12-04T14:38:54.607

An attorney who satisfies the requirements of 37 C.F.R. §10.14 who appears in person or signs a document on behalf of an applicant/registrant generally will be recognized by the USPTO as the authorized representative of the applicant/registrant. 37 C.F.R. §§2.17(a) and (c). Submission of a formal power of attorney is generally not required. However, once an attorney is recognized by the USPTO as the representative of an applicant/registrant, a change in representation can only be made upon written request signed by the applicant/registrant until USPTO recognition ceases as set forth below. – Anonymous – 2015-12-06T03:18:36.213

http://www.uspto.gov/trademark/guides-and-manuals/examination-guide-03-06 uspto guid lines – Anonymous – 2015-12-06T03:19:36.573

http://www.bitlaw.com/source/37cfr/2_17.html – Anonymous – 2015-12-06T03:27:24.073