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OCR transcription for search; preserved printed pages are authoritative

# Chapter 400 Representative of Inventor or Owner

401 Patent and Trademark Office Cannot Aid in Se-
lection of Attorney

402 Power of Attorney

402.01 Exceptions as to Registration

402.02
Appointment of Associate Attorney

402.05 Revocation

402.06 Attorney Withdraws

402.07 Assignee Can Revoke Power of Attorney of
Applicant
2.08 Application in Interference

403 Correspondence-With Whom Held

403.01 Correspondence Held With Associate Attor-
ney

403.02 Two Attorneys for Same Application

404 Conflicting Parties Having Same Attorney

405
Attorney Not of Record

406 Death of Attorney

407
Disbarred Attorney

40% Telephoning Attorney

409
Death, Insanity, or Unavailability of Inventor

409.01 Death of Inventor

409.01 (a) Prosecution by Administrator or Exe-
cutor

409.01 (b) Proof of Authority of Administrator or
Executor

409.01 (c) After Administrator or Executor is
Discharged

409.01 (d)
Exception in Some Foreign Countries

400.01 (e)
Applicant of Assigned Application Dies

409.01 (f)
Intervention of Administrator not Com-
pulsory

409.02 Insanity or Other Legal Incapacity

409.03 Unavailability of Inventor

409.03(a) At Least One Joint Inventor Available

409.03 (b)
No Inventor Available

409.03 (c)
Legal Representatives of Deceased In-
ventor Not Available

409.03 (d)
Proof of Unavailability or Refusal

409.03 (e)
Statement of Last Known Address

409.03 (f)
Proof of Proprietary Interest

409.03 (g)
Proof of Irreparable Damage

409.03 (h)
Acceptance of a Rule 47 Application

409.03 (i)
Rights of an Omitted Inventor

409.03 (j)
Action Following Acceptance of a Rule
47 Application

401 Patent and Trademark Office
Cannot Aid in Selection of At-
torney [R-46]

Rule 81. Applicants May Be Represented by an Attor-
ney or Agent. An applicant for patent may file and

prosecute his own case, or he may be represented by
an attorney or agent authorized to practice before the
Patent and Trademark Office in patent cases. The
Patent and Trademark Office cannot aid in the selection
of an attorney or agent.

If patentable subject matter appears to be dis-
closed in a pro se application and it is apparent
that the applicant is unfamiliar with the proper
preparation and prosecution of patent applica-
tions, the examiner may suggest to the appli-
cant that it may be desirable to employ a
registered patent attorney or agent. The follow-
ing language is suggested for incorporation in
an Office action :

[1] "Since the value of a patent is largely
dependent upon the skillful preparation of
the specification and claims, applicant may
consider it desirable to employ the services of
a registered patent attorney or agent. The
Patent and Trademark Office cannot aid in
the selection of an attorney or agent."

## 402 Power of Attorney [R-47]

Rule 34. Recognition for representation. (a) When
a registered attorney or agent acting in a representa-
tive capacity appears in person or signs a paper in
practice before the Patent and Trademark Office in a
patent case, his personal appearance or signature shall
constitute a representation to the Patent and Trade-
mark Office that, under the provisions of these rules
and the law, he is authorized to represent the par-
ticular party in whose behalf he acts. In filing such a
paper, the attorney or agent should specify his registra-
tion number with his signature. Further proof of au-
thority to act in a representative capacity may be
required.

(b) When an attorney or agent shall have filed his
power of attorney, or authorization, duly executed by
the person or persons entitled to prosecute the appli-
cation, he is a principal attorney of record in the case.
A principal attorney or agent so appointed, may ap-
point an associate attorney or agent who shall also
then be of record.

The Patent and Trademark Office will con-
tinue to give effect to powers of attorney and
authorizations of agent naming firms filed, with
respect to patent applications, before the ef-
fective date of the rules, July 2, 1971 and in all
divisions and continuations thereof not requir-
ing execution by the applicant. Powers of at-

torney or authorizations of agent naming firms
of attorneys or agents filed in patent applica-
tions after July 2, 1971 will not be recognized.
However, the Patent and Trademark Office will
construe any such powers or authorizations as a
direction to consider the address of the firm as
the correspondence address for the application.

The privilege afforded by rule 34(a) as to
recognition of registered attorneys and agents
not of record will apply to all applications
whether filed before or after the effective date.
Attention is called to the requirement of rule
34(a) that a paper filed by a registered patent
attorney or agent in an application in which he
is not of record should include both his signa-
ture and registration number.

Powers of attorney and authorizations of
agent under rule 34(b) naming one or more
registered individuals may continue to be made.

Acceptance of papers filed in patent applica-
tions by registered attorneys and agents upon
a representation that the attorney or agent is
authorized to act in a representative capacity
is for the purpose of facilitating responses on
behalf of applicants in patent applications, and,
further, to obviate the need for filing powers of
attorney or authorization of agent in individual
applications when there has been a change in
composition of law firms or corporate patent
staffs. Interviews with a registered attorney or
agent not of record will, in view of 35 U.S.C.
122, be conducted only on the basis of informa-
tion and files supplied by the attorney or agent.

Usually a power of attorney is made a part.
of the application oath or declaration, see
§ 601.02. In order that this power may be valid,
the attorney or agent appointed must be
registered.

When an application for patent is filed ac-
companied by a power of attorney or authori-
zation of agent to a person not registered to
practice before the United States Patent and
Trademark Office, the Application Division will
send the official filing receipt directly to the ap-
plicant, together with an explanatory letter. A
copy of the letter will be sent to the person
named in the power or authorization and a
copy placed in the file without being given a
paper number. The name of the unregistered
person will not be placed on the face of the file,
and the examiner will communicate only with
the applicant directly unless and until the ap-
plicant appoints a recognized practitioner. An
associate power of attorney or authorization
from the unregistered person will not be recog-
nized or accepted.

Rule 346. Signature and certificate of attorney.
Every paper filed by an attorney or agent representing
an applicant or party to a proceeding in the Patent
and Trademark Office must bear the signature of such

attorney or agent, except papers which are required
to be signed by the applicant or party in person (such
as the application Itself and affidavits or declarations
required of applicants). The signature of an attorney
or agent to a paper filed by him, or the filing or pres-
entation of any paper by him, constitutes a certificate
that the paper has been read ; that its filing is author-
ized; that to the best of his knowledge, information,
and belief, there is good ground to support it ; and that
it is not interposed for delay.

See also § 1702.

## 402.01 Exceptions as to Registration [R-37]

Rule 342. Limited recognition. Any person not reg-
istered and not entitled to be recognized under rule
341 as an attorney or agent to represent applicants
generally may, upon a showing of circumstances which
render it necessary or justifiable, be recognized by the
Commissioner to prosecute as attorney or agent a spec-
ified application or applications, but this limited recog-
nition shall not extend further than the application or
applications specified.

Sometimes in a joint application one of the
coinventors gives to the other the power of
attorney in the case. Such power will be rec-
ognized even though the one to whom it is
given is not registered.

If a request for special recognition accom-
panies the application, the Application Divi-
sion will forward the file to the Chairman of
the Committee on Enrollment.

## 402.02 Appointment of Associate At- torney [R-46]

The principal attorney may appoint an as-
sociate attorney as provided in rule 34. The
associate attorney may not appoint another at-
torney. See also § 406.

## 402.05 Revocation [R-29]

Rule 36. Revocation of power of attorney or author-
ization; withdrawal of attorney or agent. A power of
attorney or authorization of agent may be revoked at
any stage in the proceedings of a case, and an attorney
or agent may withdraw, upon application to and ap-
proval by the Commissioner. An attorney or agent, ex-
cept an associate attorney or agent whose address is
the same as that of the principal attorney or agent,
will be notified of the revocation of his power of attor-
ney or authorization and the applicant will be notified
of the withdrawal of the attorney or agent. An assign-
ment will not of itself operate as a revocation of a
power or authorization previously given, but the
assignee of the entire interest may revoke previous
powers and be represented by an attorney or agent of
his own selection.

Upon revocation of the power of attorney,
appropriate notification is sent by the clerk of
the examining group.

Revocation of the power of the principal
attorney revokes powers granted by him to
other attorneys.

Revocation of the power of attorney be-
comes effective on the date that the revocation
is RECEIVED in the Office (in contradis-
tinction to the date of ACCEPTANCE).

## 402.06 Attorney Withdraws [R-4]]

See rule 36 in § 402.05.

In the event that a notice of withdrawal is
filed by the attorney or attorneys of record,
the file will be forwarded to the Office of the
Solicitor where appropriate procedure will be
followed pertaining to the withdrawal. The
withdrawal is effective when approved rather
than when received.

To expedite the handling of requests for per-
mission to withdraw as attorney, under rule 36,
the request should be submitted in triplicate
(original and two copies) and indicate thereon
the present mailing address of the attorney who
is withdrawing. The examining group number
should also appear on all such requests.

## 402.07 Assignee Can Revoke Power of Attorney of Applicant [R-37]

The assignee of record of the entire interest
can revoke the power of attorney of the appli-
cant unless an "irrevocable" right to prosecute
the case had been given as in some government
owned applications.

Rule 92. Prosecution by assignee. The assignee of
record of the entire interest in an application for pat-
ent is entitled to conduct the prosecution of the appli-
cation to the exclusion of the inventor.

See rule 36 in § 402.05.

A power of attorney by the assignee of the
whole interest, if the assignment is recorded in
the Office, revokes all powers given by appli-
cant and prior assignees.

## 402.08 Application in Interference [R-2]]

While an application is involved in inter-
ference, no power of attorney of any kind
should be entered in such application by the
clerk of the group.

If a power of attorney or revocation is re-
ceived for an application while in interference,
it should be forwarded to the Interference Serv-
ice Branch because all parties to the interference
must be notified.

## 403 Correspondence With Whom Held [R-47]

Rule 33. Correspondence respecting patent applica-
tions and proceedings. (a) The residence and post office
address of the applicant must appear in the oath or
declaration if not stated elsewhere in the application.
The applicant may also specify and an attorney or
agent of record may specify a correspondence address
to which communications about the application are to
be directed. All notices, official letters, and other com-
munications in the case will be directed to the corres-
pondence address or, if no such correspondence address
is specified, to an attorney or agent of record (see rule
34(b) ), or, if no attorney or agent is of record, to the
applicant, or to any assignee of record of the entire
interest if the applicant or such assignee so requests,
or to an assignee of an undivided part if the applicant
so requests, at the post office address of which the
Office has been notified in the case. Amendments and
other papers filed in the application must be signed :
(1) By the applicant, or (2) if there is an assignee of
record of an undivided part interest, by the applicant
and such assignee, or (3) if there is an assignee of
record of the entire interest, by such assignee, or (4)
by an attorney or agent of record, or (5) by a regis-
tered attorney or agent not of record who acts in a
representative capacity under the provisions of rule 34
(a). Double correspondence with an applicant and his
attorney or agent, or with more than one attorney or
agent, will not be undertaken. If more than one at-
torney or agent be made of record and a correspondence
address has not been specified, correspondence will be
held with the one last made of record.

(b) An applicant who has not made of record a
registered attorney or agent may be required to state
whether he received assistance in the preparation or
prosecution of his application. for which any compen-
sation or consideration was given or charged, and if
so, to disclose the name or names of the person or per-
sons providing such assistance. This includes the prep-
aration for the applicant of the specification and
amendments or other papers to be filed in the Patent
and Trademark Office, as well as other assistance in
such matters, but does not include merely making
drawings by draftsmen or stenographie services in
typing papers.

Rule 33 (a) provides for an applicant to sup-
ply an address to receive correspondence from
the Patent and Trademark Office concerning his
application, in addition to his residence address,
so that the Patent and Trademark Office may
direct mail to any address of applicant's selec-
tion, such as a corporate patent department. a.
firm of attorneys or agents, or an individual
attorney, agent, or other person.

Rule 33 states that when an attorney has
been duly appointed to prosecute an appli-
cation correspondence will be held with the
attorney. Double correspondence with an ap-

plicant and his attorney, or with two repre-
sentatives, will not be undertaken. See §§ 403.01,
403.02 and 714.01 (d).

In a joint application with no attorney, the
applicant whose name first appears in the
papers receives the correspondence, unless
other instructions are given. All applicants
must sign the responses. See § 714.01 (a).

Powers of attorney to firms filed in executed
applications filed after July 2, 1972 are not rec-
ognized by the Patent and Trademark Office.
However, the firm's address will be considered
to be the correspondence address. The address
should appear as follows:

John Doe (inventor)
In care of Able, Baker and Charlie (firm)
1234 Jefferson Davis Highway
Arlington, Virginia 22202

See § 601.03

## 403.01 Correspondence Held With As- sociate Attorney

Where the attorneys bear relation of princi-
pal attorney and associate attorney, the
correspondence will be had with the associate
attorney unless the principal attorney directs
otherwise. Ex parte Eggan, 1911 C.D. 213;
172 O.G. 1091.

## 403.02 Two Attorneys for Same Appli- cations [R-24]

If applicant simultaneously appoints two
principal attorneys he should indicate with
which correspondence is to be conducted. If
one is a local Washington Metropolitan area
attorney and applicant fails to indicate either
attorney, correspondence will be conducted with
the local attorney.

If, after one attorney is appointed, a second
attorney is later appointed without revocation
of the power of the first attorney, the name of
the second attorney is entered on the face of
the file (Ex parte Eggan, 1911 C.D. 213; 172
O.G. 1091), with notation that the Office let-
ters are to be sent to him. This applies also
to associate attorneys.

## 404 Conflicting Parties Having Same Attorney [R-24]

See rule 208 in § 1101.01 (k).

## 405 Attorney Not of Record [R-30]

Papers may be filed in patent applications by
registered attorneys or agents not of record
under rule 34(a). Filing of such papers is con-

sidered to be a representation that the attorney
or agent is authorized to act in a representative
capacity on behalf of applicant. However, in-
terviews with a registered attorney or agent not
of record will be conducted only on the basis of
information and files supplied by the attorney
or agent in view of 35 U.S.C. 122.

## 406 Death of Attorney [R-47] SOLE ATTORNEY

If notification is received from the applicant
or assignee of the death of the sole principal at-
torney and the application is up for action by
the examiner, correspondence is held with the
applicant or assignee who originally appointed
the deceased attorney.

If notification is received from the office of
the deceased attorney and the application is up
for action, the examiner when preparing the
Office action should add a paragraph such as:
[1] "In view of the notification of the death
of the attorney of record, his power is ter-
minated. A new attorney may be appointed."

If notification of the death of the sole prin-
cipal attorney is received from the Attorney's
Roster or some outside source, there will be no
paper of record in the file wrapper to indicate
that the attorney is decreased. Correspondence
therefore continues to be held with the office of
the deceased attorney but a copy of the Office
action is also mailed to the person who origi-
nally appointed the attorney. In such an Office
action where the application is not ready for
allowance the examiner should add a para-
graph similar to the following :

[2] "Notice of the death of the attorney of
record has come to the attention of this Office.
Since his power of attorney is terminated, a
copy of this action is being mailed to appli-
cant (or assignee if he originally appointed
the deceased attorney). A new attorney may
be appointed."

If notification of the death of the sole prin-
cipal attorney is received from the Attorney's
Roster or some outside source and the ap-
plication is ready for allowance, the examiner
prepares the application for allowance and
writes a letter to the office of the deceased at-
torney with a copy to the person who originally
appointed the deceased attorney stating :

[3] "Notice of the death of the attorney of
record has come to the attention of this Office.
Since his power of attorney is thus ter-
minated, and this application is now ready
for allowance, the Notice of Allowance will
be mailed to the office of the deceased attorney
in the absence of a new power of attorney.'

409.01 (a)

Note § 405.

"The power of a principal attorney will be re-
voked, or terminated by his death. Such a revo-
cation or termination of the power of the prin-
cipal attorney will also terminate the power of
those appointed by him. Thus, a principal at-
torney may appoint an associate attorney but
such a power terminates with that of the prin-
cipal. However, the principal attorney may not
appoint a "substitute" and any attempt by the
principal to appoint a "substitute" attorney
whose power is intended to survive his own will
not be recognized by the Office.

## 407 Disbarred Attorney [R-24] See § 105.

## 408 Telephoning Attorney [R-37]

Present Office policy places great emphasis on
telephone interviews initiated by the examiner.
For this reason, it is not necessary for an attor-
ney to request a telephone interview. Examiners
are not required to note or acknowledge requests
for telephone calls or state reasons why such
proposed telephone interviews would not be con-
sidered effective to advance prosecution. How-
ever, it is desirable for an attorney to call the
examiner if the attorney feels the call will be
beneficial to advance prosecution of the case.
See §§ 713.01 and 713.05.

### SPECIFIC TELEPHONE INTERVIEW SITUATIONS Restriction of invention (§ 812.01). Multiplicity (§ 706.03 (1) ).

Many attorneys have offices or representatives
in the Washington area and it sometimes expe-
dites business to interview them concerning an
application. When the examiner believes the
progress of the application would be advanced
thereby, he may call the attorney in the case by
telephone and ask him to come to the Office.
Listings of Washington representatives of out-
of-town attorneys are kept in each examining
group.

Registered attorneys or agents not of record
in a patent application and acting in a repre-
sentative capacity under rule 34(a) should not
be telephoned for restriction requirements, ap-
proval of examiner's amendments or given any
information relative to such patent application
by telephone unless the telephone number of
such attorney or agent appears in a paper
signed by applicant or an attorney or agent of
record.

Examiners should place all long distance tele-
phone calls through the FTS ( Federal Telecom-

munications System), even though collect calls
may have been authorized by the attorney.

To facilitate any telephone calls that may
become necessary, it is strongly recommended
that amendments, letters of transmittal and
powers of attorney include the complete tele-
phone number, with area code and extension, of
the person with whom the interview should be
held, preferably near the signature.

In new applications, the telephone number
may appear on the letter of transmittal or in
the power of attorney, oath or declaration, next
to the attorney's name and address.

## 409 Death, Insanity, or Unavailability of Inventor [R-37]

If the inventor is dead, insane or otherwise
legally incapacitated, refuses to execute an
application, or cannot be found, an application
may be made by someone other than the in-
ventor, as specified in rules 42-47, §§ 409.01-
409.03(j).

## 409.01 Death of Inventor [R-30]

Unless a power of attorney is coupled with an
interest (i.e., an attorney is assignee or part-
assignee). the death of the inventor (or one of
the joint inventors) terminates the power of at-
torney and a new power from the heirs, admin-
istrators, executors or assigns is necessary if the
attorney is to remain of record (but see § 409.01
(f)).

## 409.01 (a) Prosecution by Adminis- trator or Executor [R-24]

### 35 U.S.C. 117 Death or incapacity of inventor

Legal representatives of deceased inventors and of
those under legal incapacity may make application for
patent upon compliance with the requirements and on
the same terms and conditions applicable to the inven-
tor.

Rule 42. When the inventor is dead. In case of the
death of the inventor, the legal representative (execu-
tor, administrator, etc.) of the deceased inventor may
sign the application papers and make the necessary
oath or declaration, and apply for and obtain the pat-
ent. Where the inventor dies during the time inter-
vening between the filing of his application and the
granting of a patent thereon, the letters patent may
be issued to the legal representative upon proper inter-
vention by him.

One who has reason to believe that he will
be appointed legal representative of a deceased
inventor may apply for a patent as legal rep-
resentative in accordance with rule 42. Such

## 409.01 (b)

## MANUAL OF PATENT EXAMINING PROCEDURE

application will be considered as having been
made on the date of receipt of all its required
parts, or of the part which renders it com-
plete (rules 51 and 53), provided proof of
applicant's authority as legal representative
is subsequently filed. The filing date corre-
sponding to said date of receipt will be can-
celed if another person is appointed legal rep-
resentative. In the latter case, the application
will be given an application date no earlier
than the date on which the properly appointed
legal representative actually executed the
papers. The foregoing applies to the legal
representative of a deceased sole or deceased
joint inventor.

Application may be made by the heirs of the
inventor, as such, if accompanied by a certifi-
cate from the court that they are all the heirs
and that the estate was under the sum required
by state law for the appointment of an ad-
ministrator.

## 409.01 (b) Proof of Authority of Ad- ministrator or Executor [R-47]

Rule 44. Proof of authority. In the cases mentioned
in rules 42 and 43, proof of the power or authority of
the legal representative must be recorded in the Pat-
ent and Trademark Office or filed in the application be-
fore the grant of a patent.

Whenever because of the death of an in-
ventor, the right of applying for and obtain-
ing a patent for an invention devolves upon
an executor or administrator, or whenever an
executor or administrator desires to intervene
prior to the granting of a patent, proof of the
authority of such executor or administrator
should in all cases be made of record in the
Patent and Trademark Office by filing in the
application or recording in the assignment
records a certificate of the clerk of a competent
court or the register of wills that his appoint-
ment is still in full force and effect. Such cer-
tificate shall be signed by an officer and
authenticated by the seal of the court by which
the same was issued. The authority of other
legal representatives of the inventor must be
similarly established.

Should such certificate of appointment be
found to be insufficient for any reason, there
may be required to be filed or recorded a cer-
tified and properly authenticated copy of the
letters testamentary or of the letters of ad-
ministration, in order that the scope of author-
ity of the persons who seek to intervene may
be a matter of record in this Office.

All applications filed by an executor or
administrator are initially referred to the
Assignment Division to ascertain whether

proper authority has been recorded or "filed
in the application" (rule 44) and for suitable
endorsement on the file. If the authority is
insufficient, a notation is made under "other" or
a form PO-152. When a reply is received to
such a notation and also in cases where the
executor or administrator intervenes (after fil-
ing) the case should be sent immediately to
the Assignment Division.

In any case in which the Chief of the As-
signment Division reports that the authority of
the executor or administrator of record in the
case is insufficient, the examiner will require
the filing in the application or the recording
in the Assignment Division of a certificate of
such appointment or a certified copy of letters
testamentary or of letters of administration in .
such case before finally passing the case to
issue.

In the case of foreign executors or adminis-
trators, a consular officer of the United States
may authenticate the signature of the foreign
officer attesting to the papers submitted as proof
of authority. Unusual situations may be referred
to the Office of the Solicitor.

## 409.01(c) After Administrator or Executor Has Been Dis- charged [R-2]]

When an administrator or executor has per-
formed his functions and has been discharged
and it is desired to make an application for an
invention of the deceased, it is necessary for the
administrator or executor to take out new letters
of administration in order that he may file a
new application of the deceased inventor.

409.01(d) Exception in Some For-
eign Countries [R-21]

The terms "Executor" and "Administrator"
do not find an exact counterpart in all foreign
countries and the procedure is governed by the
necessity of construing those terms to fit the
circumstances of the case. Hence the person or
persons having authority corresponding to that
of executor or administrator are permitted to
make application as, for example, the heirs in
Germany. The authority of such persons must
be proved by an appropriate certificate.

## 409.01(e) If Applicant of Assigned Application Dies

Where an applicant, carrying on the prose-
cution of an application after assignment, dies,
his administrator may carry on the prosecution
on filing letters of administration unless and
until the assignee intervenes.

409.03

## 409.01 (f) Intervention of Executor Not Compulsory [R-30]

When an inventor dies after filing an appli-
cation the executor or administrator should
intervene, but the allowance of the application
will not be withheld nor the application with-
drawn from issue if the executor or administra-
tor does not intervene.

This practice is applicable to an application
which has been placed in condition for allow-
ance or passed to issue prior to notification of
the death of the inventor. See § 409.01.

## 409.02 Insanity or Other Legal In- capacity [R-21]

Rule 45. When the inventor is insane or legally in-
capacitated. In case an inventor is insane or otherwise
legally incapacitated, the legal representative (guard-
ian, conservator, etc.) of such inventor may sign the
application papers and make the necessary oath or
declaration, and apply for and obtain the patent.

Section 409.01 (b) is also applicable in case of
insanity or other legal incapacity of an
inventor.

## 409.03 Unavailability of Inventor [R-37]

Rule 47. Filing by other than inventor. (a) If a joint
inventor refuses to join in an application for patent or
cannot be found or reached after diligent effort, the
application may be made by the other inventor on
behalf of himself and the omitted inventor. Such appli-
cation must be accompanied by proof of the pertinent
facts and must state the last known address of the
omitted inventor. The Patent Office shall forward notice
of the filing of the application to the omitted inventor
at said address. Should such notice be returned to the
Office undelivered, or should the address of the omitted
inventor be unknown, notice of the filing of the appli-
cation shall be published in the Official Gazette. The
omitted inventor may subsequently join in the applica-
tion on filing an oath or declaration of the character
required by rule 65. A patent may be granted to the
inventor making the application, upon a showing
satisfactory to the Commissioner, subject to the same
rights which the omitted inventor would have had if
he had been joined.

(b) Whenever an inventor refuses to execute an
application for patent, or cannot be found or reached
after diligent effort, a person to whom the inventor
has assigned or agreed in writing to assign the inven-
tion or who otherwise shows sufficient proprietary in-
terest in the matter justifying such action may make
application for patent on behalf of and as agent for
the inventor. Such application must be accompanied
by proof of the pertinent facts and a showing that
such action is necessary to preserve the rights of the

parties or to prevent irreparable damage, and must
state the last known address of the inventor. The
assignment, written agreement to assign or other evi-
dence of proprietary interest, or a verified copy thereof,
must be filed in the Patent Office. The Office shall for-
ward notice of the filing of the application to the
inventor at the address stated in the application. Should
such notice be returned to the Office undelivered, or
should the address of the inventor be unknown, notice
of the filing of the application shall be published in
the Official Gazette. The inventor may subsequently
join in the application on filing an oath or declaration
of the character required by rule 65. A patent may be
granted to the inventor upon a showing satisfactory
to the Commissioner.

35 U.S.C. 116. Joint inventors

When an invention is made by two or more persons
jointly, they shall apply for patent jointly and each
sign the application and make the required oath, ex-
cept as otherwise provided in this title.

If a joint inventor refuses to join in an application
for patent or cannot be found or reached after diligent
effort, the application may be made by the other in-
ventor on behalf of himself and the omitted inventor.
The Commissioner, on proof of the pertinent facts and
after such notice to the omitted inventor as he pre-
scribes, may grant a patent to the inventor making the
application, subject to the same rights which the
omitted inventor would have had if he had been joined.
The omitted inventor may subsequently join in the
application.

Whenever a person is joined in an application for
patent as joint inventor through error, or a joint in-
ventor is not included in an application through error,
and such error arose without any deceptive intention
on his part, the Commissioner may permit the applica-
tion to be amended accordingly, under such terms as
he prescribes.

35 U.S.C. 118. Filing by other than inventor

Whenever an inventor refuses to execute an applica-
tion for patent, or cannot be found or reached after
diligent effort, a person to whom the inventor has as-
signed or agreed in writing to assign the invention or
who otherwise shows sufficient proprietary interest in
the matter justifying such action, may make applica-
tion for patent on behalf of and as agent for the in-
ventor on proof of the pertinent facts and a showing
that such action is necessary to preserve the rights of
the parties or to prevent irreparable damage; and the
Commissioner may grant a patent to such inventor
upon such notice to him as the Commissioner deems
sufficient, and on compliance with such regulations
as he prescribes.

Application papers submitted pursuant to
rule 47 are forwarded by the Application Divi-
sion to the Office of the Solicitor for determina-
tion whether the papers are proper, complete,
and acceptable under rule 47.

### 409.03 (a)

A bona fide attempt must be made to comply
with the provisions of rule 47 at the time appli-
cation papers are first submitted. If the appli-
cation papers, and evidence submitted with the
application papers, are not found acceptable,
the rule 47 applicant will be notified by the Of-
fice of the Solicitor of the reasons why the pa-
pers are not acceptable. The rule 47 applicant
may request reconsideration and file supple-
mental evidence in a case where a bona fide
attempt was made to comply with rule 47 from
the outset.

## 409.03 (a) At Least One Joint Inventor Available [R-37]

Rule 47(a) and 35 U.S.C. 116, second para-
graph, permit a joint inventor to file an appli-
cation "on behalf of" himself and a joint inven-
tor who "cannot be found or reached after dili-
gent effort" or who refuses to sign application
papers. The person making application pursu-
ant to rule 47(a) is referred to as a "rule 47 (a)
applicant."

In addition to other requirements of law (35
U.S.C. §§ 111, 115), an application deposited
in the Patent Office pursuant to rule 47 (a) must
meet the following requirements :

(1) The rule 47(a) applicant must (i) make
oath on his own behalf as required by rule 65 (a)
or rule 175 (see §§ 602, 605.01, and 1401.08) and
(ii) make oath on behalf of the omitted joint
inventor as required by rule 65 (b).

(2) The application must be accompanied by
proof that the omitted inventor (i) cannot be
found or reached after diligent effort or (ii) re-
fuses to execute the application papers. See
§ 409.03(d).

(3) The last known address of the omitted
joint inventor must be stated. See § 409.03 (e).

## 409.03 (b) No Inventor Available [R-37]

Rule 47 (b) and 35 U.S.C. 118 allow a "per-
son" with a demonstrated proprietary interest
to make application "on behalf of and as agent
for" an inventor who "cannot be found or
reached after diligent effort" or who refuses to
sign application papers. The word "person" has
been construed by the Patent Office to include
juristic entities, such as a corporation. The per-
son making application pursuant to rule 47(b)
is referred to as a "rule 47 (b) applicant."

In addition to other requirements of law (35
U.S.C. §$ 111 and 115), an application deposited
pursuant to rule 47 (b) must meet the following
requirements :

(1) The rule 47 (b) applicant must make the
oath required by rule 65(b) or 175. Where a
corporation is the rule 47(b) applicant, an offi-
cer thereof should normally make the necessary
oath or declaration and sign the application. A
corporation may authorize any person. includ-
ing an attorney or agent registered to practice
before the Patent Office, to sign the application
papers on its behalf. Where application papers
are signed by a registered attorney or agent on
behalf of a corporation, proof of the attorney's
or agent's authority must be submitted. An in-
ventor may not authorize another individual
to act as his agent to sign application papers
on his behalf.

(2) The rule 47 (b) applicant must state his
relationship to the inventor as required by rule
65 (b).

(3) The application must be accompanied by
proof that the inventor (i) cannot be found or
reached after a diligent effort or (ii) refuses to
execute the application papers. See $ 409.03 (d).

(4) The last known address of the inventor
must be stated. See $ 409.03 (e).

(5) The rule 47 (b) applicant must make out
a prima facie case (i) that the invention has
been assigned to him or (ii) that the inventor
has agreed in writing to assign the invention to
him or (iii) otherwise demonstrate a proprie-
tary interest in the subject matter of the appli-
cation. See § 409.03(f).

(6) The rule 47 (b) applicant must prove that
the filing of the application is necessary (i) to
preserve the rights of the parties or (ii) to pre-
vent irreparable damage. See 409.03.(g).

## 409.03(c) Legal Representatives of Deceased Inventor Not Available [R-37]

Rule 47 should not be considered an alterna-
tive to rule 42 or 35 U.S.C. 117, since the lan-
guage "cannot be found or reached after diligent
effort" has no reasonable application to a de-
ceased inventor. In re Application Papers Filed
September 10, 1954, 108 USPQ 340 (Comm'r.
Pat. 1955). See rule 42 and § 409.01. However,
rule 47 does apply where a known legal rep-
resentative of a deceased inventor cannot be
found or reached after diligent effort, or refuses
to make application. In such cases, the last
known address of the legal representative must
be given (see § 409.03(e)), and proof of the
power or authority of the legal representative
must be established before the grant of a patent,
rule 44. Also, in hardship situations where time
or circumstances do not permit appointment of
a legal representative to make application, rule
47 may apply. In re Schwarz, 147 USPQ 394

(Comm'r. Pat. 1960). In such situations, how-
ever, subsequent joinder of a properly author-
ized legal representative will normally be re-
quired before the grant of a patent.

## 409.03 (d) Proof of Unavailability or Refusal [R-37]

Where inability to find or reach an omitted
inventor "after diligent effort" is the reason
for filing under rule 47, an affidavit or declara-
tion should be submitted which fully describes
the exact facts which are relied upon to estab-
blish that a diligent effort was made. The dili-
gent effort must have been made before the
application is deposited in the Patent Office.

The affidavit or declaration must be signed.
where at all possible, by a person having first-
hand knowledge of the facts recited therein.
Statements based on hearsay will not normally
be accepted. Copies of documentary evidence
such as letters, telegrams, etc., which support
a finding that an omitted inventor could not be
found or reached should be made part of the
affidavit or declaration. It is important that the
affidavit or declaration contain statements of
fact as opposed to conclusions.

Where a refusal of the inventor to sign the
application papers is alleged, the circumstances
of this refusal must be specified in an affidavit
or declaration by the person to whom the re-
fusal was made. Statements by a party not
present when an oral refusal is made will not be
accepted.

Before a refusal can be alleged, it must be
demonstrated that a bona fide attempt was made
to present a copy of the application papers (spe-
cification, including claims, drawings, and oath
or declaration) to the omitted inventor for
signature.

When there is an express oral refusal. that
fact along with the time and place of the re-
fusal must be stated in the affidavit or declara-
tion. When there is an express written refusal,
a copy of the document evidencing that refusal
must be made part of the affidavit or declara-
tion.

When it is concluded by the rule 47 applicant
that an omitted inventor's conduct constitutes
a refusal. all facts upon which that conclusion
is based should be stated in an affidavit or dec-
laration. If there is documentary evidence to
support facts alleged in the affidavit or declara-
tion, such evidence should be submitted.

Whenever an omitted inventor gives a reason
for refusing to sign application papers, that
reason should be stated in the affidavit or
declaration.

409.03(e)
Statement of Last Known
Address
[R-37]

An application filed pursuant to rule 47 must
state the last known address of the omitted in-
ventor. That address should be the last known
address at which the inventor customarily re-
ceives his mail. See $ 605.03. Ordinarily. the last
known address will be the last known residence
of the omitted inventor.

Inasmuch as an omitted inventor is notified
that an application pursuant to rule 47 has been
filed on his behalf, other addresses at which the
omitted inventor may be reached should also
be given.

## 409.03 (f) Proof of Proprietary Inter- est [R-37]

When an application is deposited pursuant
to rule 47(b), the rule 47 (b) applicant must
prove, that, as of the date the application is de-
posited in the Patent Office, (1) the invention
has been assigned to him or (2) the inventor
has agreed in writing to assign the invention
to him or (3) he otherwise has sufficient pro-
prietary interest in the subject matter to justify
the filing of the application.

If the application has been assigned, a copy
of the assignment (in the English language)
must be submitted. The assignment must clearly
indicate that the invention described in the rule
47(b) application was assigned to the rule
47(b) applicant prior to the date the applica-
tion is deposited in the Patent Office. An as-
signment of an application and any "reissue,
division, or continuation of said application"
does not itself establish an assignment of a con-
tinuation-in-part application. In re Gray, 115
USPQ 80 (Comm'r. Pat. 1956). An assignment
to a rule 47(b) applicant for the sole purpose
of obtaining a filing date for a rule 47(b) ap-
plication is not considered an assignment within
the meaning of 35 U.S.C. 118 and rule 47(b).

When an inventor has agreed in writing to
assign an invention described in an application
deposited pursuant to rule 47 (h). a copy of that
agreement should be submitted. If an agreement
to assign is dependent on certain specified con-
ditions being met. it must be established by af-
fidavit or declaration that those conditions have
been met. A typical agreement to assign is an
employment agreement where an employee
(omitted inventor) agrees to assign to his em-
ployer (rule 47(b) applicant ) all inventions
made during employment. When such an agree-
ment is relied upon, it must be established by
the affidavit or declaration of a person having
first-hand knowledge of the facts that the in-

vention was made by the employee while he was
employed by the rule 47 (b) applicant.

If the invention has not been assigned, or if
there is no written agreement to assign, the rule
47 (b) applicant must demonstrate that he other-
wise has a sufficient proprietary interest in the
matter.

A proprietary interest obtained otherwise
than by assignment or agreement to assign may
be demonstrated by an appropriate legal memo-
randum to the effect that a court of competent
jurisdiction (federal, state, or foreign) would
by the weight of authority in that jurisdiction
award title of the invention to the rule 47(b)
applicant. The facts in support of any conclu-
sion that a court would award title to the rule
47 (b) applicant should be made of record by
way of an affidavit or declaration of the person
having first-hand knowledge of same. The legal
memorandum should be prepared and signed
by an attorney at law familiar with the law of
the jurisdiction involved. A copy (in the Eng-
lish language) of a statute (other than the
United States statute) or a court decision (other
than a decision of a federal court or a decision
reported in the United States Patents Quar-
terly) relied upon to demonstrate a proprietary
interest should be made of record.

## 409.03(g) Proof of Irreparable Dam- age [R-37]

Irreparable damage may be established by
showing that a filing date is necessary to (1)
avoid an imminent statutory bar (35 U.S.C.
102) or (2) make a claim for priority (35 U.S.C.
119, 120, and 121). If a statutory bar is involved,
the act or publication which is believed to con-
stitute the bar should be identified. If a claim
for priority is involved, the prior application
or applications should be identified.

Preservation of the rights of the parties may
be demonstrated by a showing that the inventor
may reasonably be expected to enter into com-
petition with the rule 47 (b) applicant, or that
a firm plan for commercialization of the sub-
ject matter of the application has been adopted.

## 409.03 (h) Acceptance of a Rule 47 Application [R-37]

A filing date is not assigned to an applica-
tion deposited pursuant to rule 47 until the ap-
plication is found acceptable by the Office of the
Solicitor.

When papers deposited pursuant to rule 47
are found acceptable, the Office of the Solicitor
enters a memorandum or letter to that effect
in the file, the Application Division, is author-
ized to assign the application a filing date, and

notice is normally sent to the omitted inventor
(inventor designee) at his last known address.
If such a notice is returned to the Patent Office
by the United States Postal Service as being
undeliverable, and the application is there-
after determined to be allowable by the ex-
aminer, a notice will be published in the Official
Gazette.

## 409.03(i) Rights of the Omitted In- ventor [R-37]

The omitted inventor (also referred to as an
"inventor designee") may protest his designa-
tion as an inventor. The omitted inventor is en-
titled to inspect the application, order copies of
all or any part thereof (at a prepaid cost of 30
cents per page) and make his position of record
in the file wrapper of the application. Alter-
natively, the omitted inventor may arrange to
do any of the preceding through a registered
patent attorney or agent.

While the Patent Office will grant the omitted
inventor access to the application, inter partes
proceedings will not be instituted in a rule 47
case, In re Hough, 108 USPQ 89 (Comm'r. Pat.
1955). An omitted inventor is not entitled to a
hearing (Cogar v. Schuyler, 173 USPQ 389
(D.C. Cir. 1972) ) and is not entitled to pro-
secute the application.

An omitted inventor may join in a rule 47
application. To join in the application, the omit-
ted inventor should ordinarily file an appropri-
ate rule 65(a) oath or declaration attached to a
copy of the application as originally filed.

The rights of an omitted inventor are pro-
tected by the fact that in an application filed
under rule 47(b) and 35 U.S.C. 118 the patent
must issue to the inventor, and in an application
filed under rule 47(a) and 35 U.S.C. 116, the
inventor has the same rights that he would have
if he had joined in the application, In re Hough,
108 USPQ 89 (Comm'r. Pat. 1955).

If an omitted inventor feels that he is the sole
inventor of an invention claimed in a rule 47
application naming him as a joint inventor, the
omitted inventor may file his own application
and request that his application be placed in
interference with the rule 47 application. If the
claims in both the omitted inventor's applica-
tion and the rule 47 application are otherwise
found allowable, an interference may be
declared.

409.03 (j) Action Following Accept-
ance of a Rule 47 Applica-
tion [R-37]

After an application deposited pursuant to
rule 47 is found acceptable by the Office of the

Solicitor, the examiner will act on the applica-
tion in the usual manner, except that papers filed
by an inventor who did not originally join in
the application, and papers relating to its rule
47 status, will be forwarded with the file wrap-
per to the Office of the Solicitor for consider-
ation.

In the event joinder papers are filed, the Office
of the Solicitor will determine whether such pa-
pers meet the requirements of rule 65, including
the requirement implicit in that rule that the
oath or declaration be made on the basis of ac-
tual knowledge of the application papers on
file. This knowledge may be demonstrated by
reference in the oath or declaration to an at-
tached copy of the application, In re Bernard,
123 USPQ 387 (Comm'r Pat. 1959).

When the examiner determines that a rule
47 case is allowable, he should forward the file
wrapper with a brief memorandum of that fact
to the Office of the Solicitor. The rule 47 aspects
of the case will then be reviewed. If it appears
that the originally non-signing inventor has
joined in the application, or has received notice
and not replied in any way, the file wrapper is
generally returned to the examiner for allow-
ance without further rule 47 correspondence. On

the other hand, if the inventor designee has
shown some interest in the case short of proper
joinder, he may be notified of imminent allow-
ance and given a further opportunity to take
any action he deems appropriate. Where there
has been no proper joinder, a patent on a rule
47(b) application must be granted to the inven-
tor, notwithstanding any recorded assignment
by the inventor, In re Schuyler, 119 USPQ 97
(Comm'r Pat. 1957). Hence, it is generally ad-
visable for an assignee to effect the inventor's
proper joinder as soon as practicable. In many
instances where the omitted inventor is tempo-
rarily unavailable, his joinder papers are best
submitted as soon as possible, preferably before
the rule 47 application is formally accepted.
Such joinder papers should be filed with a brief
explanatory letter, requesting that they be in-
corporated with the earlier rule 47 application
papers. The later submission of joinder papers
is not prejudicial to an earlier filing date under
rule 47 if acceptance of the application under
that rule would otherwise be warranted. The
fact that the application was made under rule
47 will be indicated on the patent unless a proper
joinder has been made.

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OCR transcription for search; preserved printed pages are authoritative

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