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USE OF GENERALPOWERS

Samson HelfgottKMZ RosenmanNew York, NY

IP Practice in Japan CommitteeAIPLA Mid-Winter InstituteJanuary, 2005

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Existing Situation

• Use of combined Declaration and Power of Attorney form signed by all inventors.

• In the form are listed all attorneys by name within the law firm.

• Use of Associate Powers of Attorney for adding additional attorneys

• Where inventors worked for a corporation all inventors signed Assignment form to corporation.

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Rule Changes (May 2004)

• Can only list up to 10 attorneys in a Power of Attorney.

• Can list Customer Number in Power of Attorney instead of names to include all attorneys associated with this Customer Number.

• No more use of Associate Power of Attorney. Must either add names of new attorneys to list associated with Customer Number or must get a new Power of Attorney naming him.

• An attorney not listed in Customer Number list or not listed in a Power of Attorney can still sign documents in a “representative capacity” but can not: change the correspondence address, expressly abandon an application or sign a terminal disclaimer.

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Use of General Powers

• An assignee can give a General Power of Attorney to a lawyer or firm and list their Customer Number.

• Each time you file a new case you submit a copy of the General Power of Attorney.

• You also submit a Statement under 37 CFR 3.73(b) concerning ownership. This can be signed by a lawyer if authorized to do so by the assignee.

• The inventor only signs a Declaration for Patent Application form (without Power of Attorney).

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Operating Under New Rules(for corporate filing)

• For each new application, we need:– Declaration for Patent Application form executed by all inventors.

– Assignment of patent Application form executed by all inventors.

• For each new application, we would then file:– Declaration for Patent Application form executed by all inventors.

– Assignment of Patent Application form executed by all inventors.

– A copy of the General Power of Attorney executed by assignee.

– A Statement Under 37 CFR 3.73(b) prepared and signed by attorney.

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Benefit of New Changes

• Use of Customer Number -– Can add and delete attorneys’ names from one list and will apply to all

cases on which customer number is used.

• Use of Declaration without Power and Assignee signs Power– Resolves ethical issue of who does US attorney really represents. When

inventor signs Power, is attorney really representing inventor? or assignee? What if a conflict arises?

• Use of General Power– Easier to handle work from a corporation.

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Additional Notes

• Old combined Declaration and Power of Attorney form signed by inventor is still accepted. However, you should still use Customer Number on this form.

• Only available Japanese translation is of old combined Declaration and Power of Attorney form. USPTO has not yet translated the Declaration form alone.

• Note that original Assignment documents may no longer be submitted. Only copies (or digitized images) can be filed.

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Contact Information forSamson Helfgott

Director of PatentsKMZ Rosenman

575 Madison Ave.New York, N.Y., 10022

(212) 940-8683Samson.Helfgott@KMZR.com

Disclaimer: This presentation does not constitute any specific legal or business advice.