Chapter    400  Representative of Inventor or Owner
---SECTION---401 Patent and Trademark Office Cannot Aid in Selection of
Attorney

37 CFR 1.31 Applicants may be represented by a registered attorney or
agent.

An applicant for patent may file and prosecute his or her own case, or
he or she may be represented by a registered attorney, registered agent,
or other individual authorized to practice before the Patent and
Trademark Office in patent cases. See Section Section  10.6 and 10.9 of
this subchapter. The Patent and Trademark Office cannot aid in the
selection of a registered attorney or agent.

An applicant for patent may file and prosecute his or her own
application, and thus act as his or her own representative (pro se)
before the Office. See 37 CFR 1.31. In presenting (whether by signing,
filing, submitting, or later advocating) papers to the Office, a pro se
applicant is making the certifications under 37 CFR 10.18(b), and may be
subject to sanctions under 37 CFR 10.18(c) for violations of 37 CFR
10.18(b)(2). See 37 CFR 1.4(d)(2). See also MPEP Section  410.

If patentable subject matter appears to be disclosed in a pro se
application and it is apparent that the applicant is unfamiliar with the
proper preparation and prosecution of patent applications, the examiner
may suggest to the applicant that it may be desirable to employ a
registered patent attorney or agent. It is suggested that Form Paragraph
17.01 be incorporated in an Office action if the use of an attorney or
agent is considered desirable and if patentable subject matter exists in
the application.

17.01 Employ Services of Attorney or Agent

An examination of this application reveals that applicant is unfamiliar
with patent prosecuting procedure. While an inventor may prosecute the
application, lack of skill in this field usually acts as a liability in
affording the maximum protection for the invention disclosed. Applicant
is advised to secure the services of a registered patent attorney or
agent to prosecute the application, since the value of a patent is
largely dependent upon skillful preparation and prosecution. The Office
cannot aid in selecting an attorney or agent.

Applicant is advised of the availability of the publication "Attorneys
and Agents Registered to Practice Before the U.S. Patent and Trademark
Office." This publication is for sale by the Superintendent of
Documents, U.S. Government Printing Office, Washington, D.C. 20402.

Examiner Note:

The examiner should not suggest that applicant employ an attorney or
agent if the application appears to contain no patentable subject
matter.

---SECTION---402 Power of Attorney

37 CFR 1.34 Recognition for representation.

(a) When a registered attorney or agent acting in a representative
capacity appears in person or signs a paper in practice before the
Patent and Trademark Office in a patent case, his or her personal
appearance or signature shall constitute a representation to the Patent
and Trademark Office that under the provisions of this Subchapter and
the law, he or she is authorized to represent the particular party in
whose behalf he or she acts. In filing such a paper, the registered
attorney or agent should specify his or her registration number with his
or her signature. Further proof of authority to act in a representative
capacity may be required.

(b) When an attorney or agent shall have filed his or her power of
attorney, or authorization, duly executed by the person or persons
entitled to prosecute an application or a patent involved in a
reexamination proceeding, he or she is a principal attorney of record in
the case. A principal attorney or agent, so appointed, may appoint an
associate attorney or agent who shall also then be of record.

The Patent and Trademark Office will continue to give effect to powers
of attorney and authorizations of agent naming firms filed, in patent
applications before July 2, 1971, and in all divisions and continuations
thereof not requiring execution by the applicant. Powers of attorney or
authorizations of agent naming firms of attorneys or agents filed in
patent applications after July 2, 1971, will not be recognized. However,
the Patent and Trademark Office will construe any such powers or
authorizations filed after July 2, 1971, as a direction to consider the
address of the firm as the correspondence address for the application.

The privilege afforded by 37 CFR 1.34(a) as to recognition of registered
attorneys and agents not of record will apply to all applications and
reexamination proceedings whether filed before or after July 2, 1971.
Attention is called to the replacement of 37 CFR 1.34(a) that a paper
filed by a registered patent attorney or agent in an application in
which he or she is not of record should include both his or her
signature and number.

Powers of attorney and authorizations of agent under 37 CFR 1.34(b)
naming one or more registered individuals, or all registered
practitioners associated with a Customer Number, may be made. See MPEP
Section  403 for Customer Number practice.

Acceptance of papers filed in patent applications and reexamination
proceedings 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 replies on behalf of
applicants in patent applications and, further, to obviate the need for
filing powers of attorney or authorizations of agent in individual
applications or patents 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 information and files supplied by the
attorney or agent. A person acting in a representative capacity may not
sign a power of attorney or a document granting access to an
application.

Usually a power of attorney is made a part of the application oath or
declaration. In order that this power may be valid, the attorney or
agent appointed must be registered. A power of attorney or authorization
given to a registered Canadian patent agent, to be valid, must be given
by the applicants, all of whom are located in Canada. See 37 CFR
10.6(c).

When an application for patent is filed accompanied by a power of
attorney or authorization of agent to a person not registered to
practice before the United States Patent and Trademark Office, the
Office of Initial Patent Examination will send the official filing
receipt directly to the applicant, 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 either
the face of the file or the PALM bib-data sheet and the examiner will
communicate only with the applicant directly at the correspondence
address specified by the applicant unless and until the applicant
appoints a recognized practitioner. An associate power of attorney or
authorization from the unregistered person will not be recognized or
accepted.

Form Paragraph 4.09 may be used to notify applicant that the attorney or
agent is not registered.

4.09 Unregistered Attorney or Agent

An examination of this application reveals that applicant has attempted
to appoint an attorney or agent who is not registered to practice before
the U.S. Patent and Trademark Office, contrary to the Code of Federal
Regulations, 37 CFR 1.31. Therefore, the appointment is void, ab initio.
We will not recognize the appointment and all correspondence concerning
this application must be signed by: 1) all named applicants (inventors),
2) all the owners of the rights to the invention, or 3) a registered
attorney or agent duly appointed by the inventor(s) or the owner(s).
Furthermore, all communications from the Office will be addressed to the
first named inventor, unless specific instructions to the contrary are
supplied by the named inventor(s) or owner(s).

While an applicant may prosecute the application, lack of skill in this
field usually acts as a liability in affording the maximum protection
for the invention disclosed. Applicant is, therefore, encouraged to
secure the services of a registered patent attorney or agent (i.e.,
registered to practice before the U.S. Patent and Trademark Office) to
prosecute the application, since the value of a patent is largely
dependent upon skillful preparation and prosecution.

The Office cannot aid you in selecting a registered attorney or agent,
however, we do have a publication which lists all the patent attorneys
and agents who are registered to practice before the Office. The
publication, "Attorneys and Agents Registered to Practice Before the
U.S. Patent and Trademark Office," may be purchased from the
Superintendent of Documents, U.S. Government Printing Office,
Washington, D.C. 20402. In addition, applicant may obtain this
information: from the USPTO Internet Web Site [http://www.uspto.gov/];
by writing to the Commissioner of Patents and Trademarks, Box OED,
Washington, DC 20231; by calling the Office of Enrollment and Discipline
at (703) 306-4097; or, through the Patent Assistance Center toll free
number, 1(800)786-9199.

Examiner Note:

This form paragraph is to be used ONLY after ensuring that the named
representative is not registered with the Office.  A PALM inquiry should
be first made and if no listing is given, the Office of Enrollment and
Discipline should be contacted to determine the current "recognition"
status of the individual named by the applicant in a "power of
attorney."  If the named individual is NOT registered or otherwise
recognized by the Office, the correspondence address on the face of the
file should be promptly changed to that of the first named inventor
unless applicant specifically provides a different "correspondence
address."  A copy of the Office communication incorporating this form
paragraph should also be mailed to the unregistered individual named by
the applicant in the "power of attorney."  If desired, you may include
with your communication, a list of the registered practitioners from
applicant's zip code copied from the above noted publication which
should be available in the Director's Office.

In the event of a need to file a change in the power of attorney in a
plurality of applications or patents of a common assignee or inventive
entity, a single, original paper may be used provided that a
reproduction of this original paper is supplied in each of the affected
applications or patents. The copy of the original paper must identify in
which application or patent the original paper is located and authorize
the public to inspect and copy the original paper in the event one of
the applications containing a copy matures into or is a patent, and the
application containing the original paper is pending or has become
abandoned. See MPEP Section  601.03. See MPEP Section  201.06(c) for
change in the power of attorney in continuation or divisional
applications filed under 37 CFR 1.53(b). See MPEP Section  403 for the
addition and/or deletion of a practitioner from the list of
practitioners associated with a Customer Number.  For a representative
of a requester of reexamination see MPEP Section  2213.

37 CFR 10.18 Signature and certificate for correspondence filed in the
Patent and Trademark Office.

(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, except for correspondence that is required to
be signed by the applicant or party, each piece of correspondence filed
by a practitioner in the Patent and Trademark Office must bear a
signature, personally signed by such practitioner, in compliance with
Section  1.4(d)(1) of this chapter.

(b) By presenting to the Office (whether by signing, filing, submitting,
or later advocating) any paper, the party presenting such paper, whether
a practitioner or non-practitioner, is certifying that--

(1) All statements made therein of the party's own knowledge are true,
all statements made therein on information and belief are believed to be
true, and all statements made therein are made with the knowledge that
whoever, in any matter within the jurisdiction of the Patent and
Trademark Office, knowingly and willfully falsifies, conceals, or covers
up by any trick, scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or makes or uses
any false writing or document knowing the same to contain any false,
fictitious or fraudulent statement or entry, shall be subject to the
penalties set forth under 18 U.S.C. 1001, and that violations of this
paragraph may jeopardize the validity of the application or document, or
the validity or enforceability of any patent, trademark registration, or
certificate resulting therefrom; and

(2) To the best of the party's knowledge, information and belief, formed
after an inquiry reasonable under the circumstances, that --

(i) The paper is not being presented for any improper purpose, such as
to harass someone or to cause unnecessary delay or needless increase in
the cost of prosecution before the Office;

(ii) The claims and other legal contentions therein are warranted by
existing law or by a nonfrivolous argument for the extension,
modification, or reversal of existing law or the establishment of new
law;

(iii) The allegations and other factual contentions have evidentiary
support or, if specifically so identified, are likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence,
or if specifically so identified, are reasonably based on a lack of
information or belief.

(c) Violations of paragraph (b)(1) of this section by a practitioner or
non-practitioner may jeopardize the validity of the application or
document, or the validity or enforceability of any patent, trademark
registration, or certificate resulting therefrom. Violations of any of
paragraphs (b)(2)(i) through (iv) of this section are, after notice and
reasonable opportunity to respond, subject to such sanctions as deemed
appropriate by the Commissioner, or the Commissioner's designee, which
may include, but are not limited to, any combination of --

(1) Holding certain facts to have been established;

(2) Returning papers;

(3) Precluding a party from filing a paper, or presenting or contesting
an issue;

(4) Imposing a monetary sanction;

(5) Requiring a terminal disclaimer for the period of the delay; or

(6) Terminating the proceedings in the Patent and Trademark Office.

(d) Any practitioner violating the provisions of this section may also
be subject to disciplinary action. See Section  10.23(c)(15).

37 CFR 10.18(a) emphasizes that every paper filed by a practitioner must
be personally signed by the practitioner, except those required to be
signed by the applicant or party. 37 CFR 10.18(b) provides that, by
presenting any paper to the Office, the party presenting such paper
(whether a practitioner or nonpractitioner) is: (1) certifying that the
statements made therein are subject to the declaration clause of 37 CFR
1.68; and (2) making the certifications required for papers filed in a
federal court under Rule 11(b) of the Federal Rules of Civil Procedure.
See MPEP Section  410. 37 CFR 10.18(d) provides that any practitioner
violating the provisions of 37 CFR 10.18 may also be subject to
disciplinary action (see 37 CFR 10.23(c)(15)), thus clarifying that a
practitioner may be subject to disciplinary action in lieu of, or in
addition to, the sanctions set forth in 37 CFR 10.18(c) for violations
of 37 CFR 10.18.  See also 37 CFR 1.4(d)(2).

The certifications in 37 CFR 10.18(b) apply to all papers filed in the
Office, including allegations of improper conduct made by a registered
practitioner in any Office proceeding.

37 CFR 10.11 Removing names from registers.

(a) Registered attorneys and agents shall notify the Director of any
change of address. Any notification to the Director of any change of
address shall be separate from any notice of change of address filed in
individual applications.

(b) A letter may be addressed to any individual on the register, at the
address of which separate notice was last received by the Director, for
the purpose of ascertaining whether such individual desires to remain on
the register. The name of any individual failing to reply and give any
information requested by the Director within a time limit specified will
be removed from the register and names of individuals so removed will be
published in the Official Gazette. The name of any individual so removed
may be reinstated on the register as may be appropriate and upon payment
of the fee set forth in Section  1.21(a)(3) of this subchapter.

See also MPEP Section  1702.

---SECTION---402.01 Exceptions as to Registration

37 CFR 10.9 Limited recognition in patent cases.

(a) Any individual not registered under Section  10.6 may, upon a
showing of circumstances which render it necessary or justifiable, be
given limited recognition by the Director to prosecute as attorney or
agent a specified application or specified applications, but limited
recognition under this paragraph shall not extend further than the
application or applications specified.

(b) When registration of a resident alien under paragraphs (a) or (b) of
Section  10.6 is not appropriate, the resident alien may be given
limited recognition as may be appropriate under paragraph (a) of this
section.

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

If a request for special recognition accompanies the application, the
Office of Initial Patent Examination will forward the file to the
Director of the Office of Enrollment and Discipline.

---SECTION---402.02 Appointment of Associate Attorney or 	Agent

The principal attorney or agent may appoint an associate attorney or
agent as provided in 37 CFR 1.34. The associate attorney may not appoint
another attorney. See also MPEP Section  406.

---SECTION---402.05 Revocation

37 CFR 1.36 Revocation of power of attorney or authorization; 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 approval by the Commissioner. An
attorney or agent, except 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 the power of attorney or authorization, and the
applicant or patent owner will be notified of the withdrawal of the
attorney or agent.  An assignment will not 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 the assignee's own selection. See
Section  1.613(d) for withdrawal of an attorney or agent of record in an
interference.

Upon revocation of the power of attorney, appropriate notification is
sent by the technical support staff of the examining group.

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

Revocation of the power of attorney becomes ef fective on the date that
the revocation is RECEIVED in the Office (in contradistinction to the
date of ACCEPTANCE).

---SECTION---402.06 Attorney or Agent Withdraws

See 37 CFR 1.36 in MPEP Section  402.05.  See also 37 CFR 10.40.

In the event that a notice of withdrawal is filed by the attorney or
agent of record, the file will be forwarded to the Group Director of the
examining group where the application is assigned 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 permission to withdraw as
attorney, under 37 CFR 1.36, Form PTO/SB/83 may be used. Because the
Office does not recognize law firms, each attorney of record must sign
the notice of withdrawal, or the notice of withdrawal must contain a
clear indication of one attorney signing on behalf of another.

The Commissioner of Patents and Trademarks usually requires that there
be at least 30 days between approval of withdrawal and the later of the
expiration date of a time period for reply or the expiration date of the
period which can be obtained by a petition and fee for extension of time
under 37 CFR 1.136(a). This is so that the applicant will have
sufficient time to obtain other representation or take other action. If
a period has been set for reply and the period may be extended without a
showing of cause pursuant to 37 CFR 1.136(a) by filing a petition for
extension of time and fee, the practitioner will not be required to seek
such extension of time for withdrawal to be approved. In such a
situation, however, withdrawal will not be approved unless at least 30
days would remain between the date of approval and the last date on
which such a petition for extension of time and fee could properly be
filed.

For withdrawal during reexamination proceedings, see MPEP Section  2223.

Form PTO/SB/83. Request for Withdrawal as Attorney or Agent[GRAPHIC]

---SECTION---402.07 Assignee Can Revoke Power of Attorney of Applicant

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

37 CFR 3.71 Prosecution by assignee.

The assignee of record of the entire right, title, and interest in an
application for patent is entitled to conduct the prosecution of the
patent application to the exclusion of the named inventor or previous
assignee. The assignee of a registered trademark or a trademark for
which an application to register has been filed is entitled to conduct
the prosecution of the trademark application or registration to the
exclusion of the original applicant or previous assignee.

See 37 CFR 1.36 in MPEP Section  402.05.

A power of attorney by the assignee of the entire interest revokes all
powers given by the applicant and prior assignees if the assignee
establishes their right to take action as provided in 37 CFR 3.73(b). 
See MPEP Section  324. Ordinarily, the applicant will still have access
to the application (MPEP Section  106).

In an application that has been accorded status under 37 CFR 1.47(a), or
for which status under 37 CFR 1.47(a) has been requested, a power of
attorney given by the inventors who have signed the declaration
(available inventors) may be revoked by an assignee of the entire
interest of the available inventors. Rights of the assignee to take
action may be established as provided in 37 CFR 3.73(b) and MPEP Section 
324.

---SECTION---402.08 Application in Interference

While an application is involved in interference, no power of attorney
of any kind should be entered in such application by the technical
support staff of the examining group.

If a power of attorney or revocation is received for an application
which is in interference, it should be forwarded to the Service Branch
of the Board of Patent Appeals and Interferences because all parties to
the interference must be notified.

---SECTION---402.09 International Application

37 CFR 1.455 Representation in international applications.

(a) Applicants of international applications may be represented by
attorneys or agents registered to practice before the Patent and
Trademark Office or by an applicant appointed as a common representative
(PCT Art. 49, Rules 4.8 and 90 and Section  10.10). If applicants have
not appointed an attorney or agent or one of the applicants to represent
them, and there is more than one applicant, the applicant first named in
the request and who is entitled to file in the U.S. Receiving Office
shall be considered to be the common representative of all the
applicants. An attorney or agent having the right to practice before a
national office with which an international application is filed and for
which the United States is an International Searching Authority or
International Preliminary Examining Authority may be appointed to
represent the applicants in the international application before that
authority. An attorney or agent may appoint an associate attorney or
agent who shall also then be of record (PCT Rule 90.1(d)). The
appointment of an attorney or agent, or of a common representative,
revokes any earlier appointment unless otherwise indicated (PCT Rule
90.6(b) and (c)).

(b) Appointment of an agent, attorney, or common representative (PCT
Rule 4.8) must be effected either in the Request form, signed by all
applicants, or in a separate power of attorney submitted either to the
United States Receiving Office or to the International Bureau.

(c) Powers of attorney and revocation thereof should be submitted to the
United States Receiving Office until the issuance of the international
search report.

(d) The addressee for correspondence will be as indicated in Section 108
of the Administrative Instructions.

For representation in international applications, see MPEP Section 
1807.

---SECTION---402.10 Appointment/Revocation by Less Than All Applicants
or Owners

Papers giving or revoking a power of attorney in an application
generally require signature by all the applicants or owners of the
application. Papers revoking a power of attorney in an application (or
giving a power of attorney) will not be accepted by the Office when
signed by less than all of the applicants or owners of the application
unless they are accompanied by a petition and fee under 37 CFR 1.182
giving good and sufficient reasons as to why such papers should be
accepted. The petition should be directed to the Office of Petitions.
The acceptance of such papers by petition under 37 CFR 1.182 will result
in more than one attorney, agent, applicant, or owner prosecuting the
application at the same time. Therefore, each of these parties must sign
all subsequent replies submitted to the Office. See In re Goldstein, 16
USPQ2d 1963 (Dep. Assist. Comm'r Pat. 1988). In an application filed
under 37 CFR 1.47(a), an assignee of the entire interest of the
available inventors who have signed the declaration may appoint or
revoke a power of attorney without a petition under 37 CFR 1.182. See
MPEP Section  402.07. However, in applications accepted under 37 CFR
1.47, such a petition under 37 CFR 1.182 submitted by a previously
nonsigning inventor who has now joined in the application will not be
granted. See MPEP Section  409.03(i). Upon accepting papers appointing
and/or revoking a power of attorney that are signed by less than all of
the applicants or owners, the Office will indicate to applicants who
must sign subsequent replies. An indication will be placed on the file
wrapper as to the number of signatures necessary for accepting
subsequent replies and the paper number(s) where the split powers of
attorney appear. Dual correspondence will still not be permitted.
Accordingly, when the acceptance of such papers results in an attorney
or agent and at least one applicant or owner prosecuting the
application, correspondence will be mailed to the attorney or agent.
When the acceptance of such papers results in more than one attorney or
agent prosecuting the application, the correspondence address will
continue to be that of the attorney or agent first named in the
application, unless all parties agree. Each attorney or agent signing
subsequent papers must indicate whom he or she represents.

The following are examples of who must sign replies when there is more
than one person responsible for prosecuting the application:

(A) If coinventor A has given a power of attorney and coinventor B has
not, replies must be signed by the attorney of A and by coinventor B.

(B) If coinventors A and B have each appointed their own attorney,
replies must be signed by both attorneys.

---SECTION---403 Correspondence - With Whom Held

37 CFR 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.

(a) The applicant, the assignee(s) of the entire interest (see Section
Section  3.71 and 3.73) or an attorney or agent of record (see Section 
1.34(b)) may specify a correspondence address to which communications
about the application are to be directed.  All notices, official
letters, and other communications in the application will be directed to
the correspondence address or, if no such correspondence address is
specified, to an attorney or agent of record (see Section  1.34(b)), or,
if no attorney or agent is of record, to the applicant, so long as a
post office address has been furnished in the application.  Double
correspondence with an applicant and an attorney or agent, or with more
than one attorney or agent, will not be undertaken.  If more than one
attorney or agent is made of record and a correspondence address has not
been specified, correspondence will be held with the one last made of
record.

(b) Amendments and other papers filed in the application must be signed
by:

(1) An attorney or agent of record appointed in compliance with Section 
1.34(b);

(2) A registered attorney or agent not of record who acts in a
representative capacity under the provisions of Section  1.34(a);

(3) The assignee of record of the entire interest, if there is an
assignee of record of the entire interest;

(4) An assignee of record of an undivided part interest, and any
assignee(s) of the remaining interest and any applicant retaining an
interest, if there is an assignee of record of an undivided part
interest; or

(5) All of the applicants (Section Section  1.42, 1.43 and 1.47) for
patent, unless there is an assignee of record of the entire interest and
such assignee has taken action in the application in accordance with
Section Section  3.71 and 3.73.

(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed to
the attorney or agent of record (see Section  1.34(b)) in the patent
file at the address listed on the register of patent attorneys and
agents maintained pursuant to Section Section  10.5 and 10.11 or, if no
attorney or agent is of record, to the patent owner or owners at the
address or addresses of record. Amendments and other papers filed in a
reexamination proceeding on behalf of the patent owner must be signed by
the patent owner, or if there is more than one owner by all the owners,
or by an attorney or agent of record in the patent file, or by a
registered attorney or agent not of record who acts in a representative
capacity under the provisions of Section  1.34(a). Double correspondence
with the patent owner or owners and the patent owner's attorney or
agent, or with more than one attorney or agent, will not be undertaken.
If more than one attorney or agent is of record and a correspondence
address has not been specified, correspondence will be held with the
last attorney or agent made of record.

(d) A "correspondence address" or change thereto may be filed with the
Patent and Trademark Office during the enforceable life of the patent.
The "correspondence address" will be used in any correspondence relating
to maintenance fees unless a separate "fee address" has been specified.
See Section  1.363 for "fee address" used solely for maintenance fee
purposes.

37 CFR 1.33(a) provides for an applicant to supply an address to receive
correspondence from the Patent and Trademark Office so that the Patent
and Trademark Office may direct mail to any address of applicant's
selection, such as a corporate patent department, a firm of attorneys or
agents, or an individual attorney, agent, or other person.

37 CFR 1.33 states that when an attorney has been duly appointed to
prosecute an application correspondence will be held with the attorney
unless some other correspondence address has been given. Double
correspondence with an applicant and his or her attorney, or with two
representatives, will not be undertaken. See MPEP Section  403.01,
Section  403.02, and Section  714.01(d).

If double correspondence is attempted, Form Paragraph 4.01 should be
included in the next Office action.

4.01 Dual Correspondence

Applicant has appointed an attorney or agent to conduct all business
before the Patent and Trademark Office.  Double correspondence with an
applicant and applicant's attorney or agent will not be undertaken. 
Accordingly, applicant is required to conduct all future correspondence
with this Office through the attorney or agent of record. See 37 CFR
1.33.

Examiner Note:

1. The first time a reply is received directly from applicant, include
this paragraph in the Office action and send a copy of the action to the
applicant. See MPEP Section Section  403 and 714.01.

2. Should applicant file additional replies, do not send copies of
subsequent Office actions to the applicant.

3. Status letters from the applicant may be acknowledged in isolated
instances.

In a joint application with no attorney or agent, the applicant whose
name first appears in the papers receives the correspondence, unless
other instructions are given. All applicants must sign the replies. See
MPEP Section  714.01(a).  If the assignee of the entire interest is
prosecuting the application (MPEP Section  402.07), the assignee may
specify a correspondence address.

37 CFR 1.33(c) relates to which address communications for the patent
owner will be sent in reexamination proceedings. See also MPEP Section 
2224.

Powers of attorney to firms filed in executed applications filed after
July 2, 1971, are not recognized 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 MPEP Section  601.03.

See MPEP Section  201.06(c) regarding change of correspondence address
in continuation or divisional applications filed under 37 CFR 1.53(b).

CUSTOMER NUMBER PRACTICE

A Customer Number (previously a "Payor Number") may be used to: 

(A) designate the correspondence address of a patent application by a
Customer Number such that the correspondence address for the patent
application would be the address associated with the Customer Number;

(B) designate the fee address (37 CFR 1.363) of a patent by a Customer
Number such that the fee address for the patent would be the address
associated with the Customer Number; and

(C) submit a list of practitioners by Customer Number such that an
applicant may in a Power of Attorney appoint those practitioners
associated with the Customer Number. 

Thus, a Customer Number may be used to designate the address associated
with the Customer Number as the correspondence address of an application
(or patent) or the fee address of a patent, and may also be used to
submit a power of attorney in the application (or patent) to the
registered practitioners associated with the Customer Number.

The following forms are suggested for use with the Customer Number
practice: 

(A) the "Request for Customer Number" (PTO/SB/125) to request a Customer
Number;

(B) the "Request for Customer Number Data Change" (PTO/SB/124) to
request a change in the data (address or list of practitioners)
associated with an existing Customer Number;

(C) the "Change of Correspondence Address, Application" (PTO/SB/122) to
change the correspondence address of an individual application to the
address associated with a Customer Number;

(D) the "Change of Correspondence Address, Patent" (PTO/SB/123) to
change the correspondence address of an individual patent to the address
associated with a Customer Number; and

(E) the "Correspondence Address Indication Form" (PTO/SB/121) to change
the correspondence address of a list of applications or patents to the
address associated with a Customer Number. 

The Office will also accept requests submitted electronically via a
computer-readable diskette to:

(A) change the correspondence address of a list of applications or
patents or the fee address for a list of patents to the address
associated with a Customer Number; and

(B) submit a power of attorney in a list of applications or patents to
the registered practitioners associated with the Customer Number. 

Such electronic requests must be submitted in the manner set forth in
the Notice entitled "Extension of the Payor Number Practice (through
"Customer Numbers") to Matters Involving Pending Patent Applications,"
published in the Federal Register at 61 FR 54622, 54623-24 (October 21,
1996), and in the Official Gazette at 1191 O. G. 187, 188-89 (October
29, 1996).

The Customer Number practice does not affect the current practice of
permitting a patentee to provide a "fee address" for the receipt of
maintenance fee correspondence. A patentee will be able to designate a
"fee address" for the receipt of maintenance fee correspondence, and a
different address for the receipt of all other correspondence. The
designation of a "fee address" by reference to a Customer Number will
not affect or be affected by the designation of a correspondence address
by reference to another Customer Number, in that the Office will send
maintenance fee correspondence to the address associated with the
Customer Number designated as the "fee address" and will send all other
correspondence to the address associated with the Customer Number
designated as the correspondence address.

The association of a list of practitioners with a Customer Number will
permit an applicant to appoint all of the practitioners associated with
the Customer Number merely by reference to the Customer Number in the
Power of Attorney (i.e., without individually listing the practitioners
in the Power of Attorney). The addition and/or deletion of a
practitioner from the list of practitioners associated with a Customer
Number will result in the addition or deletion of such practitioner from
the list of persons authorized to represent any applicant who appointed
all of the practitioners associated with such Customer Number.  This
will avoid the necessity for the filing of additional papers in each
patent application affected by a change in the practitioners of the law
firm prosecuting the application. The appointment of practitioners
associated with a Customer Number will be optional, in that any
applicant may continue to individually name those practitioners to
represent the applicant in a patent application.

The Customer Number practice does not affect the prohibition against and
does not amount to an appointment of a law firm (rather than specified
practitioners).  The Office prohibits an appointment of a specified law
firm because the Office cannot ascertain from its records whether a
particular practitioner submitting a paper to the Office is associated
with the law firm specified in an appointment. The Office will permit an
appointment of all of the practitioners associated with a specified
Customer Number because the Office can ascertain from its records for
the specified Customer Number whether a particular practitioner is
associated with such Customer Number.

As the Office will not recognize more than one correspondence address
(37 CFR 1.33(a)), any inconsistencies between the correspondence address
resulting from a Customer Number being provided in an application for
the correspondence address and any other correspondence address provided
in that application would be resolved in favor of the address of the
Customer Number.  Where an applicant appoints all of the practitioners
associated with a Customer Number as well as a list of individually
named practitioners, such action would be treated as only an appointment
of all of the practitioners associated with a Customer Number due to the
potential for confusion and data entry errors in entering registration
numbers from plural sources. Customer Numbers are designed to serve the
dual purpose in an application of providing a correspondence address,
and providing the list of practitioners appointed with a power of
attorney.  Due to the prohibition against dual correspondence in an
application (37 CFR 1.33(a)), an applicant will be permitted to provide
only a single number at a time as the Customer Number, and thus
correspondence address, for the application.  In an instance in which an
applicant provides more than one Customer Number as the correspondence
address, the last provided Customer Number is controlling. Thus, the
appointment of a plurality (much less a large number) of Customer
Numbers will result in the Office recognizing only the last mentioned
Customer Number. Applicants are strongly cautioned not to attempt to
appoint more than one Customer Number in a single communication, as such
action will not have a cumulative effect.

The Office has created a box designation for correspondence related to a
Customer Number ("Box CN"), and all correspondence related to a Customer
Number (e.g., requests for a Customer Number) should be addressed to
this box designation.

Form PTO/SB/121. Correspodence Address Indication Form[GRAPHIC]

Form PTO/SB/122. Change of Correspondence Address--Application.[GRAPHIC]

Form PTO/SB/123. Change of Correspondence Address--Patent[GRAPHIC]

Form PTO/SB/124A. Request for Customer Number Data Change[GRAPHIC]

Form PTO/SB/124B. Request for Customer Number Data Change[GRAPHIC]

Form PTO/SB/125A. Request for Customer Number[GRAPHIC]

Form PTO/SB/125B. Request for Customer Number--Supplemental
Sheet[GRAPHIC]

PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESS

In accordance with the provisions of 35 U.S.C. 111(a) and 37 CFR 1.53, a
filing date is granted to a nonprovisional application for patent, which
includes at least a specification containing a description pursuant to
37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any
drawing referred to in the specification or required by 37 CFR 1.81(a),
which is filed in the Patent and Trademark Office. If a nonprovisional
application which has been accorded a filing date does not include the
appropriate filing fee, or oath or declaration, the applicant will be so
notified and given a period of time within which to file the missing
parts to complete the application and to pay the surcharge as set forth
in 37 CFR 1.16(e) in order to prevent abandonment of the application. If
a provisional application which has been accorded a filing date does not
include the appropriate filing fee, or the cover sheet, the applicant
will be so notified and given a period of time within which to file the
missing parts to complete the application and to pay the surcharge as
set forth in 37 CFR 1.16(l) in order to prevent abandonment of the
application.

In order for the Office to so notify the applicant, a correspondence
address must also be provided by the applicant. The address may be
different from the post office address of the applicant. For example,
the address of the applicant's registered attorney or agent may be used
as the correspondence address. If the applicant fails to provide the
Office with a correspondence address, the Office will be unable to
provide the applicant with notification to complete the application and
to pay the surcharge as set forth in 37 CFR 1.16(e) for nonprovisional
applications and 37 CFR 1.16(l) for provisional applications. In such a
case, the applicant will be considered to have constructive notice as of
the filing date that the application must be completed and the applicant
will have 2 months from the filing date in which to do so before
abandonment occurs.

The periods of time within which the applicant must complete the
application may be extended under the provisions of 37 CFR 1.136.
Applications which are not completed in a timely manner will be
abandoned.

---SECTION---403.01 Correspondence Held With Associate Attorney

Where the attorneys bear relation of principal 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 (Comm'r Pat. 1911).  The associate attorney may
specify or change the correspondence address to which communications
about the application are to be directed.

---SECTION---403.02 Two Attorneys for Same Application

If the applicant simultaneously appoints two principal attorneys, he or
she should indicate with whom correspondence is to be conducted. If one
is a local Washington metropolitan area attorney and the 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 either the face of the file or
the PALM bib-data sheet (Ex parte Eggan, 1911 C.D. 213, 172 O.G. 1091
(Comm'r Pat. 1911)), with notation that the Office letters are to be
sent to him.  This applies also to associate attorneys.

---SECTION---404 Conflicting Parties Having Same Attorney

See 37 CFR 10.66.

---SECTION---405 Attorney Not of Record

Papers may be filed in patent applications by registered attorneys or
agents not of record under 37 CFR 1.34(a). Filing of such papers is
considered to be a representation that the attorney or agent is
authorized to act in a representative capacity on behalf of applicant.
However, interviews 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. Powers of attorney,
change of correspondence address, and documents granting access may not
be signed by an attorney or agent not of record.

---SECTION---406 Death of Attorney

If notification is received from the applicant or assignee of the death
of the sole principal attorney 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 Form Paragraph 4.02.

4.02 Death of Attorney, Notice Received from Attorney's Office

In view of the notification of the death of the attorney or agent of
record, the power of attorney is terminated.  A new registered attorney
or agent may be appointed.

Examiner Note:

As the power of attorney has been terminated, Office correspondence is
sent to the applicant or the assignee who originally appointed the
deceased attorney or agent.

If notification of the death of the sole principal attorney is received
from the Office of Enrollment and Discipline or some other source, there
will be no paper of record in the file wrapper to indicate that the
attorney is deceased. 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 originally appointed the attorney. In such
an Office action where the application is not ready for allowance, the
examiner should add Form Paragraph 4.03.

4.03 Death of Attorney, Notice from Other Source

Notice of the death of the attorney or agent of record has come to the
attention of this Office.  Since the power of attorney is therefore
terminated, a copy of this action is being mailed to the [1].

Examiner Note:

In bracket 1, insert --applicant-- or --assignee-- if the assignee
originally appointed the deceased attorney or agent.

If notification of the death of the sole principal attorney is received
from the Office of Enrollment and Discipline or some other source and
the application is ready for allowance, the examiner prepares the
application for allowance and writes a letter to the office of the
deceased attorney with a copy to the person who originally appointed the
deceased attorney including the wording of Form Paragraph 4.04.

4.04 Death of Attorney, Case Is Ready for Allowance

Notice of the death of the attorney or agent of record has come to the
attention of this Office.  Since the power of attorney is thus
terminated, and this application is now ready for allowance, the Notice
of Allowance will be mailed to the office of the deceased attorney or
agent in the absence of a new power of attorney.

Examiner Note:

A copy should also be mailed to the applicant or the assignee who
originally appointed the attorney or agent.

Note MPEP Section   405.

The power of a principal attorney will be revoked or terminated by his
or her death. Such a revocation or termination of the power of the
principal attorney will also terminate the power of those appointed by
him or her. Thus, a principal attorney may appoint an associate attorney
but such a power terminates with that of the principal. 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 or her own will not be recognized by the Office.

---SECTION---407 Suspended or Excluded Practitioner

See MPEP Section  105.

Form Paragraphs 4.06, 4.07, and 4.08 should be used where power of
attorney is given to an attorney or agent who has been suspended from
practice before the office.

4.06 Attorney/Agent Suspended (Sole Practitioner, Sole Inventor)

The instant application contains a power of attorney to [1] who has been
[2] from practice before the Patent and Trademark Office (Office). The
Office does not communicate with attorneys or agents who have been
suspended or excluded from practice.  Accordingly, the Office action is
being mailed to you as the inventor.

Applicant may, of course, file a new power of attorney in the
application to have a registered attorney or agent represent you before
the Office.  In the absence of an attorney or agent of record, all
amendments and other papers filed in the application must be signed: (1)
by you; or (2) if there is an assignee of record of an undivided part
interest, by you and such assignee; or (3) if there is an assignee of
the entire interest, by such assignee; or (4) by a registered patent
attorney or agent, not of record, who acts in a representative capacity
under the provisions of 37 CFR 1.34(a).  The Office will not hold
telephone interviews with or send communications to a registered patent
attorney or agent, acting in a representative capacity under  37 CFR
1.34, i.e., who is not of record in the application.

Applicant may obtain a list of registered patent attorneys and agents
located in your area by writing to the Commissioner of Patents and
Trademarks, Box OED, Washington, DC 20231, or by calling the Office of
Enrollment and Discipline at (703) 306-4097.

Examiner Note:

1. In bracket 1, insert name of suspended or excluded practitioner.

2. In bracket 2, insert either --suspended-- or --excluded--.

3. This form paragraph should be used when a suspended or excluded
practitioner is the only practitioner of record and there is only a
single inventor. Use form paragraph 4.07 if there are joint inventors.

4. The Office action is to be mailed only to the inventor at his/her
current address of record.

4.07 Attorney/Agent Suspended (Sole Practitioner, Joint Inventors)

The instant application contains a power of attorney to [1] who has been
[2] from practice before the Patent and Trademark Office (Office).  The
Office does not communicate with attorneys or agents who have been
suspended or excluded from practice.  Accordingly, the Office action is
being mailed to the address of the inventor first named in the
application.

Applicants may, of course, file a new power of attorney in the
application to have a registered attorney or agent represent them before
the Office.  In the absence of an attorney or agent of record, all
amendments and other papers filed in the application must be signed: (1)
by all named applicants unless one named applicant has been given a
power of attorney to sign on behalf of the remaining applicants, and the
power of attorney is of record in the application; or (2) if there is an
assignee of record of an undivided part interest, by all named
applicants retaining an interest and such assignee; or (3) if there is
an assignee of the entire interest, by such assignee; or (4) by a
registered patent attorney or agent not of record who acts in a
representative capacity under the provisions of 37 CFR 1.34(a).  The
Office will not hold telephone interviews with or send communications to
a registered patent attorney or agent, acting in a representative
capacity under 37 CFR 1.34, i.e., who is not of record in the
application.

Applicants may obtain a list of registered patent attorneys and agents
located in their area by writing to the Commissioner of Patents and
Trademarks, Box OED, Washington, DC 20231, or by calling the Office of
Enrollment and Discipline at (703) 306-4097.

Examiner Note:

1. In bracket 1, insert the name of the suspended or excluded
practitioner.

2. In bracket 2, insert either --suspended-- or --excluded--.

3. This form paragraph should be used when the suspended or excluded
practitioner is the only practitioner of record and there are joint
inventors.  Use form paragraph 4.06 if there is a single inventor.

4. The Office action is to be mailed only to the inventor first named in
the declaration at his or her current post office address of record.

4.08 Attorney/Agent Suspended (Plural Practitioners)

The present application was filed containing a power of attorney to [1]
and [2].  A correspondence address was supplied for [3].  No address was
supplied for [4].

[5] was [6] from practice before the Patent and Trademark Office
(Office).  The Office does not communicate with attorneys or agents who
have been suspended or excluded from practice.

As a correspondence address, other than to [7], is not of record, this
Office action is being mailed to [8] at his/her last known address as
listed on the register of patent attorneys and agents.  To ensure that a
copy of this Office action is received in a timely manner to allow for a
timely reply, a copy of the Office action is being mailed directly to
the address of the inventor first named in the declaration or oath.  Any
reply by applicant(s) should be by way of the remaining practitioner(s)
of record and should include a new correspondence address.

Examiner Note:

1. In brackets 1,3,5 and 7 insert the name of the suspended or excluded
practitioner.

2. In brackets 2, 4 and 8, insert the name of the first named
unsuspended (unexcluded) registered practitioner of record.

3. In bracket 6, insert either --suspended-- or --excluded--.

4. This form paragraph should be used when there is at least one
registered practitioner still of record who has not been suspended or
excluded from practice.  Use one of form paragraphs 4.06 or 4.07 if
there are no remaining registered attorneys or agents of record.

5. The Office action is to be mailed both to the first named registered
attorney or agent of record (who is not suspended or excluded) at the
address currently listed in the Attorney's Roster, and to the inventor
first named in the declaration at his or her current post office address
of record.

---SECTION---408 Telephoning Attorney

Present Office policy places great emphasis on telephone interviews
initiated by the examiner. For this reason, it is not necessary for an
attorney 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 considered effective to
advance prosecution. However, it is desirable for an attorney to call
the examiner if the attorney feels the call will be beneficial to
advance prosecution of the application. See MPEP Section  713.01 and
Section  713.05.

Many attorneys have offices or representatives in the Washington area
and it sometimes expedites business to interview them concerning an
application. When the examiner believes the progress of the application
would be advanced thereby, he or she may call the attorney in the
application by telephone and ask the attorney to come to the Office.

Registered attorneys or agents not of record in a patent application and
acting in a representative capacity under 37 CFR 1.34(a) should not be
telephoned for restriction requirements, approval 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 the applicant or an attorney or agent of
record.

Examiners should place all long distance telephone calls through the FTS
(Federal Telecommunications 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 telephone 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.

SPECIFIC TELEPHONE INTERVIEW SITUATIONS

For restriction of invention, see MPEP Section  812.01.

For multiplicity, see MPEP Section  2173.05(n).

---SECTION---409 Death, Insanity, or Unavailability of Inventor

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 inventor, as specified in 37 CFR
1.42-1.47, and 37 CFR 1.423, MPEP Section  409.01 - Section  409.03(j).

---SECTION---409.01 Death of Inventor

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 attorney given by
the deceased inventor. A new power from the heirs, administrators,
executors, or assignees is necessary if the deceased inventor is the
sole inventor or all powers of attorney in the application have been
terminated (but see MPEP Section  409.01(f)).  See also 37 CFR 1.422.

---SECTION---409.01(a) Prosecution by Administrator or Executor

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
inventor.

37 CFR 1.42 When the inventor is dead.

In case of the death of the inventor, the legal representative
(executor, administrator, etc.) of the deceased inventor may make the
necessary oath or declaration, and apply for and obtain the patent.
Where the inventor dies during the time intervening between the filing
of the application and the granting of a patent thereon, the letters
patent may be issued to the legal representative upon proper
intervention.

One who has reason to believe that he or she will be appointed legal
representative of a deceased inventor may apply for a patent as legal
representative in accordance with 37 CFR 1.42. Proof of the applicant's
authority as legal representative may be filed after the filing date of
the application. If another person is appointed legal representative and
the application has been accorded a filing date, an oath or declaration
executed by the properly appointed legal representative must be
submitted as soon as possible. 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 there
is no will or the will did not appoint an executor and if accompanied by
a certificate 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
administrator.

If the court papers are in a language other than English, an English
translation of such papers is required. The translation need not be
sworn or affirmed.

If a court certificate is not available, then a legal memorandum
prepared and signed by an attorney at law familiar with the law of the
jurisdiction involved may be submitted to demonstrate that the persons
signing the declaration on behalf of the deceased inventor are all the
heirs of the deceased inventor and are authorized to act on behalf of
the deceased inventor. A copy (in the English language) of any statute
or any court decision relied upon should be made of record.

---SECTION---409.01(b) Proof of Authority of Administrator or Executor

37 CFR 1.44 Proof of authority.

In the cases mentioned in Section Section  1.42 and 1.43, proof of the
power or authority of the legal representative must be recorded in the
Patent and Trademark Office or filed in the application before the grant
of a patent.

Whenever because of the death of an inventor the right of applying for
and obtaining 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 or her appointment is
still in full force and effect. Such certificate 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. If the certificate is not in the English
language, an English translation is also required.

Should such certificate of appointment be found to be insufficient for
any reason, there may be required to be filed or recorded a certified
and properly authenticated copy of the letters testamentary or of the
letters of administration so that the scope of authority of the persons
who seek to intervene may be a matter of record in this Office.

It is the responsibility of the examiner of the application to ensure
that proof of authority of the legal representative has been submitted
and to determine whether the proof of authority is sufficient. The proof
of authority may either be recorded or filed in the application.  If
proof of authority is missing from the application, form paragraph 4.05
should be used to notify applicant that proof of authority of the legal
representative must be submitted.

4.05 Representative for Dead or Insane Inventor

Proof of authority of the legal representative under 37 CFR 1.44 has
been omitted and must be provided.

If applicant responds with an indication that the proof of authority
documents have been recorded, then the assignment records should be
checked to determine whether the recorded documents comply with 37 CFR
1.44.

Deficiencies in the proof of authority should be pointed out to
applicant by the examiner in the next Office action in order to avoid
printer rush inquiries. In a national stage application filed under 35
U.S.C. 371, if after reviewing the submitted proof of authority the
examiner ultimately determines that the authority to execute the
application does not lie with the person(s) who executed the oath or
declaration of the inventors on behalf of the deceased inventor, the
application must be forwarded to the PCT Legal Office. See MPEP Section 
1893.01(e).

In the case of foreign executors or administrators, a consular officer
of the United States or a notary public from a member country to the
Hague Convention Abolishing the Requirement of Legalization for Foreign
Public Documents must authenticate the signature of the foreign officer
attesting to the papers submitted as proof of authority. If documents
are authenticated by a notary public in a member country, an apostille
must be used. See MPEP Section  602.04. Unusual situations may be
referred to the Special Program Law Office.

The examiner should acknowledge the filing of sufficient proof of
authority as soon as possible in an Office action by stating that proof
of authority of the legal representative in compliance with 37 CFR 1.44
has been submitted.

---SECTION---409.01(c) After Administrator or Executor Has Been
Discharged

When an administrator or executor has performed his or her 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 or
she may file a new application of the deceased inventor.

---SECTION---409.01(d) Exception in Some Foreign Countries

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 the Federal Republic of Germany where no
existing executor or administrator has been or will be appointed. The
authority of such persons must be proved by an appropriate certificate.
If the certificate is not in the English language, an English
translation thereof is also required.

---SECTION---409.01(e) If Applicant of Assigned Application Dies

Where an applicant, carrying on the prosecution of an application after
assignment, dies, the administrator may carry on the prosecution on
filing letters of administration unless and until the assignee
intervenes (MPEP Section  402.07).

---SECTION---409.01(f) Intervention of Executor Not Compulsory

When an inventor dies after filing an application, the executor or
administrator should intervene, but the allowance of the application
will not be withheld nor the application withdrawn from issue if the
executor or administrator does not intervene.

This practice is applicable to an application which has been placed in
condition for allowance or passed to issue prior to notification of the
death of the inventor. See MPEP Section  409.01.

When a joint inventor of a pro se application dies after filing the
application, the living joint inventors must submit proof that the joint
inventor is dead. Upon submission of such proof, only the signatures of
the living joint inventors are required on the papers filed with the PTO
if the legal representative of the deceased inventor does not intervene.
If the legal representative of the deceased inventor wishes to
intervene, proof of authority complying with 37 CFR 1.44 must be
submitted. See MPEP Section  409.01(b) regarding proof of authority. 
Once the legal representative of the deceased inventor intervenes in the
pro se application, the signatures of the living joint inventors and the
legal representative are required on the papers filed with the PTO.

---SECTION---409.02 Insanity or Other Legal Incapacity

37 CFR 1.43 When the inventor is insane or legally incapacitated.

In case an inventor is insane or otherwise legally incapacitated, the
legal representative (guardian, conservator, etc.) of such inventor may
make the necessary oath or declaration, and apply for and obtain the
patent.

Where no legal representative has been appointed, one must be appointed
by a court of competent jurisdiction for the purpose of execution of the
oath or declaration of the application. MPEP Section  409.01(b) is also
applicable in case of insanity or other legal incapacity of an inventor.

---SECTION---409.03 Unavailability of Inventor

37 CFR 1.47 Filing when an inventor refuses to sign or cannot be
reached.

(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 or herself and the
nonsigning inventor.  The oath or declaration in such an application
must be accompanied by a petition including proof of the pertinent
facts, the fee set forth in Section  1.17(i) and the last known address
of the nonsigning inventor.  The Patent and Trademark Office shall,
except in a continued prosecution application under Section  1.53(d),
forward notice of the filing of the application to the nonsigning
inventor at said address and publish notice of the filing of the
application in the Official Gazette. The nonsigning inventor may
subsequently join in the application on filing an oath or declaration
complying with Section  1.63.

(b) Whenever all of the inventors refuse to execute an application for
patent, or cannot be found or reached after diligent effort, a person to
whom an inventor has assigned or agreed in writing to assign the
invention or who otherwise shows sufficient proprietary interest in the
matter justifying such action may make application for patent on behalf
of and as agent for all the inventors.  The oath or declaration in such
an application must be accompanied by a petition including proof of the
pertinent facts, a showing that such action is necessary to preserve the
rights of the parties or to prevent irreparable damage, the fee set
forth in Section  1.17(i), and the last known address of all of the
inventors.  The Office shall, except in a continued prosecution
application under Section  1.53(d), forward notice of the filing of the
application to all of the inventors at the addresses stated in the
application and publish notice of the filing of the application in the
Official Gazette. An inventor may subsequently join in the application
on filing an oath or declaration complying with Section  1.63.

35 U.S.C. 116 Inventors

When an invention is made by two or more persons jointly, they shall
apply for patent jointly and each make the required oath, except as
otherwise provided in this title. Inventors may apply for a patent
jointly even though (1) they did not physically work together or at the
same time, (2) each did not make the same type or amount of
contribution, or (3) each did not make a contribution to the subject
matter of every claim of the patent.

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. The Commissioner, on proof of the pertinent facts and after
such notice to the omitted inventor as he prescribes, 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 through error a person is named in an application for patent as
the inventor, or through an error an inventor is not named in an
application and such error arose without any deceptive intention on his
part, the Commissioner may permit the application 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 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 invention or
who otherwise shows sufficient proprietary interest in the matter
justifying such action, may make application for patent on behalf of and
as agent for the inventor on proof of the pertinent facts and a show ing
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 Commis sioner deems
sufficient, and on compliance with such regulations as he prescribes.

Application papers submitted pursuant to 37 CFR 1.47 are forwarded by
the Office of Initial Patent Examination (OIPE) to the Special Program
Law Office for determination whether the papers are proper, complete,
and acceptable under 37 CFR 1.47 and for a decision on the petition
under 37 CFR 1.47 before the application is sent to the Examining
Groups. Since an application without an oath or declaration executed by
all of the inventors may be an incomplete application, an examiner
should not mail an Office action in an application without a fully
executed oath or declaration under 37 CFR 1.63 unless the application
has been accorded status under 37 CFR 1.47 by the Special Program Law
Office.

A bona fide attempt must be made to comply with the provisions of 37 CFR
1.47 at the time the oath or decla ration is first submitted. If the
oath or declaration, and evidence submitted with the oath or
declaration, are not found acceptable, the 37 CFR 1.47 applicant will be
notified by the Special Program Law Office of the reasons why the papers
are not acceptable. The 37 CFR 1.47 applicant may request
reconsideration and file supplemental evidence in a case where a bona
fide attempt was made to comply with 37 CFR 1.47 from the outset.

---SECTION---409.03(a) At Least One Joint Inventor Available

37 CFR 1.47(a) and 35 U.S.C. 116, second paragraph, requires all
available joint inventors to file an application "on behalf of"
themselves and on behalf of a joint inventor who "cannot be found or
reached after diligent effort" or who refuses to "join in an
application."

In addition to other requirements of law (35 U.S.C. 111(a) and 115), an
application deposited in the Patent and Trademark Office pursuant to 37
CFR 1.47(a) must meet the following requirements:

(A) All the available joint inventors must (1) make oath or declaration
on their own behalf as required by 37 CFR 1.63 or 1.175 (see MPEP
Section  602, Section  605.01, and Section  1414) and (2) make oath or
declaration on behalf of the nonsigning joint inventor as required by 37
CFR 1.64. An oath or declaration signed by all the available joint
inventors with the signature block of the nonsigning inventor(s) left
blank may be treated as having been signed by all the available joint
inventors on behalf of the nonsigning inventor(s), unless otherwise
indicated.

(B) The application must be accompanied by proof that the nonsigning
inventor (1) cannot be found or reached after diligent effort or (2)
refuses to execute the application papers. See MPEP Section  409.03(d).

(C) The last known address of the nonsigning joint inventor must be
stated. See MPEP Section  409.03(e).

---SECTION---409.03(b) No Inventor Available

Filing under 37 CFR 1.47(b) and 35 U.S.C. 118 is permitted only where no
inventor is available to make application and allows a "person" 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 the application oath or declaration. The
word "person" has been construed by the Patent and Trademark Office to
include juristic entities, such as a corporation. Where 37 CFR 1.47(a)
is available, application cannot be made under 37 CFR 1.47(b).

In addition to other requirements of law (35 U.S.C. 111(a) and 115), an
application deposited pursuant to 37 CFR 1.47(b) must meet the following
requirements:

(A) The 37 CFR 1.47(b) applicant must make the oath required by 37 CFR
1.63 and 1.64 or 1.175. Where a corporation is the 37 CFR 1.47(b)
applicant, an officer (President, Vice-President, Secretary, or
Treasurer) thereof should normally sign the necessary oath or
declaration. A corporation may authorize any person, including an
attorney or agent registered to practice before the Patent and Trademark
Office, to sign the application oath or declaration on its behalf. Where
an oath or declaration is signed by a registered attorney or agent on
behalf of a corporation, either proof of the attorney's or agent's
authority in the form of a statement signed by an appropriate corporate
officer must be submitted, or the attorney or agent may simply state
that he or she is authorized to sign on behalf of the corporation. Where
the oath or declaration is being signed on behalf of an assignee, see
MPEP Section  324. An inventor may not authorize another individual to
act as his or her agent to sign the application oath or declaration on
his or her behalf.  Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976),
In re Striker, 182 USPQ 507 (Comm'r Pat. 1973). Where an application is
executed by one other than the inventor, the declaration required by 37
CFR 1.63 must state the full name, residence, post office address, and
citizenship of the nonsigning inventor. Also, the title or position of
the person signing must be stated if signing on behalf of a corporation
under 37 CFR 1.47(b).

(B) The 37 CFR 1.47(b) applicant must state his or her relationship to
the inventor as required by 37 CFR 1.64.

(C) The application must be accompanied by proof that the inventor (1)
cannot be found or reached after a diligent effort or (2) refuses to
execute the application papers. See MPEP Section  409.03(d).

(D) The last known address of the inventor must be stated. See MPEP
Section  409.03(e).

(E) The 37 CFR 1.47(b) applicant must make out a prima facie case (1)
that the invention has been assigned to him or her or (2) that the
inventor has agreed in writing to assign the invention to him or her or
(3) otherwise demonstrate a proprietary interest in the subject matter
of the application. See MPEP Section  409.03(f).

(F) The 37 CFR 1.47(b) applicant must prove that the filing of the
application is necessary (1) to preserve the rights of the parties or
(2) to prevent irreparable damage. See MPEP Section  409.03(g).

---SECTION---409.03(c) Legal Representatives of Deceased Inventor Not
Available

37 CFR 1.47 should not be considered an alternative to 37 CFR 1.42 or 35
U.S.C. 117 since the language "cannot be found or reached after diligent
effort" has no reasonable application to a deceased inventor. In re
Application Papers Filed September 10, 1954, 108 USPQ 340 (Comm'r Pat.
1955). See 37 CFR 1.42 and MPEP Section  409.01. However, 37 CFR 1.47
does apply where a known legal representative 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 MPEP Section  409.03(e)), and proof of
the power or authority of the legal representative must be established
before the grant of a patent, 37 CFR 1.44. Also, in hardship situations
where time or circumstances do not permit appointment of a legal
representative to make application, 37 CFR 1.47 may apply. In re
Schwarz, 147 USPQ 394 (Comm'r Pat. 1960). In such situations, however,
subsequent joinder of a properly authorized legal representative will
normally be required before the grant of a patent.

---SECTION---409.03(d) Proof of Unavailability or Refusal

Where inability to find or reach a nonsigning inventor "after diligent
effort" is the reason for filing under 37 CFR 1.47, an affidavit or
declaration of facts should be submitted that fully describes the exact
facts which are relied on to establish that a diligent effort was made.

The fact that a nonsigning inventor is on vacation or out of town and is
therefore temporarily unavailable to sign the declaration is not an
acceptable reason for filing under 37 CFR 1.47. Such a petition will be
dismissed as inappropriate.

The affidavit or declaration of facts must be signed, where at all
possible, by a person having firsthand knowledge of the facts recited
therein. Statements based on hearsay will not normally be accepted.
Copies of documentary evidence such as certified mail return receipt,
cover letter of instructions, telegrams, etc., that support a finding
that the nonsigning 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.

In cases where priority under 35 U.S.C. 119 is to be claimed, the 37 CFR
1.47 applicant should explain what efforts, if any, were made during the
Convention year to prepare the application and obtain the inventor's
signature thereon. The period allowed by the Convention year should "be
sufficient for the preparation and deposit of an application . . . (in
the United States) in the form required by the rules." Ex parte Sassin,
1906 C.D. 205 (Comm'r Pat. 1906). Accordingly, 37 CFR 1.47 may not be
used "to save the parties from the consequences of their delay." Ex
parte Sassin, 1906 C.D. 205. Attention is directed to the material in
MPEP Section  608.01 entitled, "Filing of Non-English Language
Applications", for guidance in those instances where a foreign language
specification attached to a declaration executed by all named inventors
is received from abroad by counsel in this country. In those instances
where the nonsigning inventor later becomes available, joinder papers
are best submitted as soon as possible, preferably before the 37 CFR
1.47 application is formally accepted. Such joinder papers should be
filed with a brief explanatory letter requesting that they be
incorporated with the earlier 37 CFR 1.47 application papers. The later
submission of joinder papers is not prejudicial to an earlier filing
date under 37 CFR 1.47 if acceptance of the application under that rule
would otherwise be warranted.

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 refusal 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
(specification, including claims, drawings, and oath or declaration) to
the nonsigning inventor for signature.  A copy of the application papers
should be sent to the last known address of the nonsigning inventor, or,
if the nonsigning inventor is represented by counsel, to the address of
the nonsigning inventor's attorney.

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

When it is concluded by the 37 CFR 1.47 applicant that a nonsigning
inventor's conduct constitutes a refusal, all facts upon which that
conclusion is based should be stated in an affidavit or declaration. If
there is documentary evidence to support facts alleged in the affidavit
or declaration, such evidence should be submitted. Whenever a nonsigning
inventor gives a reason for refusing to sign the application oath or
declaration, that reason should be stated in the affidavit or
declaration.

---SECTION---409.03(e) Statement of Last Known Address

An application filed pursuant to 37 CFR 1.47 must state the last known
address of the nonsigning inventor.

That address should be the last known address at which the inventor
customarily receives mail. See MPEP Section  605.03. Ordinarily, the
last known address will be the last known residence of the nonsigning
inventor. A post office box is insufficient.

Inasmuch as a nonsigning inventor is notified that an application
pursuant to 37 CFR 1.47 has been filed on his or her behalf, other
addresses at which the nonsigning inventor may be reached should also be
given.

---SECTION---409.03(f) Proof of Proprietary Interest

When an application is deposited pursuant to 37 CFR 1.47(b), the 37 CFR
1.47(b) applicant must prove that, as of the date the application is
deposited in the Patent and Trademark Office,

(A) the invention has been assigned to the applicant, or

(B) the inventor has agreed in writing to assign the invention to the
applicant, or

(C) the applicant otherwise has sufficient proprietary 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 37 CFR 1.47(b) application
was assigned to the 37 CFR 1.47(b) applicant prior to the date the
application is deposited in the Patent and Trademark Office. A statement
under 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP
Section  324).  An assignment of an application and any "reissue,
division, or continuation of said application" does not itself establish
an assignment of a continuation-in-part application. In re Gray, 115
USPQ 80 (Comm'r Pat. 1956). An assignment to a 37 CFR 1.47(b) applicant
for the sole purpose of obtaining a filing date for a 37 CFR  1.47(b)
application is not considered an assignment within the meaning of 35
U.S.C. 118 and 37 CFR 1.47(b).

When an inventor has agreed in writing to assign an invention described
in an application deposited pursuant to 37 CFR 1.47(b), a copy of that
agreement should be submitted. If an agreement to assign is dependent on
certain specified conditions being met, it must be established by
affidavit or declaration that those conditions have been met. A typical
agreement to assign is an employment agreement where an employee
(nonsigning inventor) agrees to assign to his or her employer (37 CFR
1.47(b) applicant) all inventions made during employment. When such an
agreement is relied on, it must be established by the affidavit or
declaration of a person having firsthand knowledge of the facts that the
invention was made by the employee while employed by the 37 CFR 1.47(b)
applicant.

If the invention has not been assigned, or if there is no written
agreement to assign, the 37 CFR 1.47(b) applicant must demonstrate that
he or she otherwise 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
memorandum 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 37 CFR 1.47(b)
applicant. The facts in support of any conclusion that a court would
award title to the 37 CFR 1.47(b) applicant should be made of record by
way of an affidavit or declaration of the person having firsthand
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 English language) of a statute (if other than the United
States statute) or a court decision (if other than a reported decision
of a federal court or a decision reported in the United States Patents
Quarterly) relied on to demonstrate a proprietary interest should be
made of record.

---SECTION---409.03(g) Proof of Irreparable Damage

Irreparable damage may be established by showing that a filing date is
necessary to (A) avoid an imminent statutory bar (35 U.S.C. 102) or (B)
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 constitute
the bar should be identified. If a claim for priority is involved, the
prior application or applications should be identified. A diligent
effort to prepare the application and obtain the inventor's signature to
the oath or declaration must be made (see MPEP Section  409.03(d)) even
if the application is being filed to avoid a bar or to claim priority.

Preservation of the rights of the parties may be demonstrated by a
showing that the inventor may reasonably be expected to enter into
competition with the 37 CFR 1.47(b) applicant, or that a firm plan for
commercialization of the subject matter of the application has been
adopted.

---SECTION---409.03(h) Processing and Acceptance of a 37 CFR 1.47
Application

A filing date is assigned to an application deposited pursuant to 37 CFR
1.47 provided the requirements of 37 CFR 1.53(b) are complied with. A
filing receipt will be sent to the applicant and the application will be
forwarded to the Office of Patent Legal Administration, Special Program
Law Office, for consideration of the petition filed under 37 CFR 1.47.

When papers deposited pursuant to 37 CFR 1.47 are found acceptable, the
Special Program Law Office enters a memorandum or letter to that effect
in the file.  A notice will be published in the Official Gazette
identifying the application number, filing date, the title of the
invention and the name(s) of the nonsigning inventor(s). The Patent and
Trademark Office will notify the nonsigning inventor(s) or, if the
inventor is deceased, the legal representative(s), of the filing of an
application under 37 CFR 1.47 by sending a letter to the last known
address of the nonsigning inventor(s) or legal representative(s).

---SECTION---409.03(i) Rights of the Nonsigning Inventor

The nonsigning inventor (also referred to as an "inventor designee") may
protest his or her designation as an inventor. The nonsigning inventor
is entitled to inspect any paper in the application, order copies
thereof at the price set forth in 37 CFR 1.19, and make his or her
position of record in the file wrapper of the application.
Alternatively, the nonsigning inventor may arrange to do any of the
preceding through a registered patent attorney or agent.

While the Patent and Trademark Office will grant the nonsigning inventor
access to the application, inter partes proceedings will not be
instituted in 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm'r Pat.
1955). A nonsigning inventor is not entitled to a hearing (Cogar v.
Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972)), and is not
entitled to prosecute the application if status under 37 CFR 1.47 has
been accorded, or if proprietary interest of the 37 CFR 1.47(b)
applicant has been shown to the satisfaction of the Patent and Trademark
Office.

A nonsigning inventor may join in a 37 CFR 1.47 application. To join in
the application, the nonsigning inventor must file an appropriate 37 CFR
1.63 oath or declaration. Even if the nonsigning inventor joins in the
application, he or she cannot revoke or give a power of attorney without
agreement of the 37 CFR 1.47 applicant.

The rights of a nonsigning inventor are protected by the fact that the
patent resulting from an application filed under 37 CFR 1.47(b) and 35
U.S.C. 118 must issue to the inventor, and in an application filed under
37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that
he or she would have if he or she had joined in the application. In re
Hough, 108 USPQ 89 (Comm'r Pat. 1955).

If a nonsigning inventor feels that he or she is the sole inventor of an
invention claimed in a 37 CFR 1.47 application naming him or her as a
joint inventor, the nonsigning inventor may file his or her own
application and request that his or her application be placed in
interference with the 37 CFR 1.47 application. If the claims in both the
nonsigning inventor's application and the 37 CFR 1.47 application are
otherwise found allowable, an interference may be declared.

---SECTION---409.03(j) Action Following Acceptance of a 37 CFR 1.47
Application

After an application deposited pursuant to 37 CFR 1.47 is found
acceptable by the Special Program Law Office, the examiner will act on
the application in the usual manner. Papers filed by an inventor who did
not originally join in the application, and papers relating to its 37
CFR 1.47 status, will be placed in the file wrapper.

In the event joinder papers are filed, the oath or declaration under 37
CFR 1.63 will be placed in the application file.

When the examiner determines that a 37 CFR 1.47 application, or either a
continued prosecution application (CPA) filed under 37 CFR 1.53(d) or a
file wrapper continuing application filed under former 37 CFR 1.62
thereof, is allowable, he or she must check the file wrapper or the PALM
bib-data sheet to make sure that the phrase "Rule 47" appears under the
filing date. If the phrase "Rule 47" does not appear under the filing
date, the examiner must write in black ink the phrase "Rule 47" under
the filing date. The examiner will then prepare the application for
allowance in accordance with MPEP Chapter 1300. It will not be necessary
to forward the application to the Special Program Law Office.

Patents granted on applications accepted under 37 CFR 1.47 will have an
indication on the face of the patent that the application was filed
under 37 CFR 1.47, regardless of whether proper joinder of the
previously nonsigning inventor has been made.

An application filed under 37 CFR 1.47 can be published as a Statutory
Invention Registration.

---SECTION---410 Representations to the Patent and Trademark Office

37 CFR 1.4(d)(2) provides that the presentation to the Office (whether
by signing, filing, submitting, or later advocating) of any paper by a
party, whether a prac titioner or nonpractitioner, constitutes a
certification under 37 CFR 10.18(b), and that violations of 37 CFR
10.18(b)(2) may subject the party to sanctions under 37 CFR 10.18(c). 
Thus, by presenting a paper to the Office, the party is making the
certifications set forth in 37 CFR 10.18(b), and is subject to sanctions
under 37 CFR 10.18(c) for violations of 37 CFR 10.18(b)(2), regardless
of whether the party is a practitioner or nonpractitioner.  A
practitioner violating 37 CFR 10.18(b) may also be subject to
disciplinary action in lieu of or in addition to sanctions under 37 CFR
10.18(c) for violations of 37 CFR 10.18(b).

37 CFR 10.18(b) provides that, by presenting any paper to the PTO, the
party presenting such paper is making two certifications: (1) the first
certification is that the statements made therein are subject to the
declaration clause of 37 CFR 1.68; (2) the second certification is the
certification required for papers filed in a federal court under Rule
11(b) of the Federal Rules of Civil Procedure.

The first certification has permitted the PTO to eliminate the separate
verification requirement previously contained in 37 CFR 1.6, 1.8, 1.10,
1.27, 1.28, 1.48, 1.52, 1.55, 1.69, 1.102, 1.125, 1.137, 1.377, 1.378,
1.804, 1.805, 3.26, and 5.4 for statements of facts by persons who are
not registered to practice before the PTO. As statements submitted to
the PTO by any person are now, by operation of 37 CFR 10.18(b)(1),
verified statements, a separate verification requirement is no longer
necessary.  The PTO, however, has retained the requirement for a
statement to be submitted under oath or declaration (37 CFR 1.68) in a
number of sections (e.g., 37 CFR 1.63, 1.130, 1.131, 1.132, 1.494(e),
1.495(f), and 5.25).

The second certification is based upon Rule 11(b) of the Federal Rules
of Civil Procedure (1993).  This provision is promulgated pursuant to
the Commissioner's authority under 35 U.S.C. 6(a) to establish
regulations for the conduct of proceedings in the PTO, and is intended
to discourage the filing of frivolous papers by practitioners or
non-practitioners in the PTO.  Rule 11(b) of the Federal Rules of Civil
Procedure provides:

Representations to Court.  By presenting to the court (whether by
signing, filing, submitting, or later advo cating) a pleading, written
motion, or other paper, an attorney or unrepresented party is certifying
that to the best of the person's knowledge, information and belief,
formed after an inquiry reasonable under the circumstances, --

   (1) it is not being presented for any improper purpose, such as to
harass or to cause unnecessary delay or needless increase in the cost of
litigation;

   (2) the claims, defenses, and other legal contentions therein are
warranted by existing law or by a nonfrivolous argument for the
extension, modification, or reversal of existing law or the
establishment of new law;

   (3) the allegations and other factual contentions have evidentiary
support or, if specifically so identified, are likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery; and

   (4)  the denials of factual contentions are warranted on the evidence
or, if specifically so identified, are reasonably based on a lack of
information or belief.

Fed. R. Civ. P. 11(b)(1993). 

37 CFR 10.18(b)(2) tracks the language of Fed. R. Civ. P. 11(b).  The
advisory committee notes to Fed. R. Civ. P. 11(b) provide, in part,
that:

[Fed. R. Civ. P. 11(b) and (c)] restate the provisions requiring
attorneys and pro se litigants to conduct a reasonable inquiry into the
law and facts before signing pleadings, written motions, and other
documents, and prescribing sanctions for violations of these
obligations.  The [1993] revision in part expands the responsibilities
of litigants to the court, while providing greater constraints and
flexibility in dealing with infractions of the rule.  The rule continues
to require litigants to "stop-and-think" before initially making legal
or factual contentions.  It also, however, emphasizes the duty of candor
by subjecting litigants to potential sanctions for insisting upon a
position after it is no longer tenable and by generally providing
protection against sanctions if they withdraw or correct contentions
after a potential viola tion is called to their attention.

   The rule applies only to assertions contained in papers filed with or
submitted to the court.  It does not cover matters arising for the first
time during oral presentations to the court, when counsel may make
statements that would not have been made if there had been more time for
study and reflection.  However, a litigant's obligations with respect to
the contents of these papers are not measured solely as of the time they
are filed with or submitted to the court, but include reaffirming to the
court and advocating positions contained in those pleadings and motions
after learning that they cease to have any merit.  For example, an
attorney who during a pretrial conference insists on a claim or defense
should be viewed as "presenting to the court" that contention and would
be subject to the obligations of [Rule 11(b)] measured at that time.
Similarly, if after a notice of removal is filed, a party urges in
federal court the allegations of a pleading filed in state court
(whether as claims, defenses, or in disputes regarding removal or
remand), it would be viewed as "presenting"-- and hence certifying to
the district court under Rule 11--those allegations.

   The certification with respect to allegations and other factual
contentions is revised in recognition that sometimes a litigant may have
good reason to believe that a fact is true or false but may need
discovery, formal or informal, from opposing parties or third persons to
gather and confirm the evidentiary basis for the allegation. Tolerance
of factual contentions in initial pleadings by plaintiffs or defendants
when specifically identified as made on information and belief does not
relieve litigants from the obligation to conduct an appropriate
investigation into the facts that is reasonable under the circumstances;
it is not a license to join parties, make claims, or present defenses
without any factual basis or justification. Moreover, if evidentiary
support is not obtained after a reasonable opportunity for further
investigation or discovery, the party has a duty under the rule not to
persist with that contention. [Rule 11(b)] does not require a formal
amendment to pleadings for which evidentiary support is not obtained,
but rather calls upon a litigant not thereafter to advocate such claims
or defenses.

   The certification is that there is (or likely will be) "evidentiary
support" for the allegation, not that the party will prevail with
respect to its contention regarding the fact.  That summary judgment is
rendered against a party does not necessarily mean, for purposes of this
certification, that it had no evidentiary support for its position.  On
the other hand, if a party has evidence with respect to a contention
that would be sufficient to defeat a motion for summary judgment based
thereon, it would have sufficient "evidentiary support" for purposes of
Rule 11.

   Denials of factual contentions involve somewhat different
considerations. Often, of course, a denial is premised upon the
existence of evidence contradicting the alleged fact.  At other times a
denial is permissible because, after an appropriate investigation, a
party has no information concerning the matter or, indeed, has a
reasonable basis for doubting the credibility of the only evidence
relevant to the matter. A party should not deny an allegation it knows
to be true; but it is not required, simply because it lacks
contradictory evidence, to admit an allegation that it believes is not
true.

   The changes in [Rule 11(b)(3) and (4)] will serve to equalize the
burden of the rule upon plaintiffs and defendants, who under Rule 8(b)
are in effect allowed to deny allegations by stating that from their
initial investigation they lack sufficient information to form a belief
as to the truth of the allegation.  If, after fur ther investigation or
discovery, a denial is no longer warranted, the defendant should not
continue to insist on that denial. While sometimes helpful, formal
amendment of the pleadings to withdraw an allegation or denial is not
required by [Rule 11(b)].

   Arguments for extensions, modifications, or reversals of existing law
or for creation of new law do not violate [Rule 11(b)(2)] provided they
are "nonfrivolous."  This establishes an objective standard, intended to
eliminate any "empty-head pure-heart" justification for patently
frivolous arguments.  However, to the extent to which a litigant has
researched the issues and found some support for its theories even in
minority oinions, in law review articles, or through consultation with
other attorneys should certainly be taken into account in determining
whether [Rule 11(b)(2)] has been violated.  Although arguments for a
change in law are not required to be specifically so identified, a
contention that is so identified should be viewed with greater tolerance
under [Rule 11]. Amendments to the Federal Rules of Civil Procedure at
50-53 (1993), reprinted in 146 F.R.D. 401, 584-87.  The "inquiry
reasonable under the circumstances" requirement of 37 CFR 10.18(b)(2) is
identical to that in Fed. R. Civ. P. 11(b).  The Federal courts have
stated in regard to the "reasonable inquiry" requirement of Fed. R. Civ.
P. 11:

In requiring reasonable inquiry before the filing of any pleading in a
civil case in federal district court, Rule 11 demands "an objective
determination of whether a sanctioned party's conduct was reasonable
under the circumstances." In effect it imposes a negligence standard,
for negligence is a failure to use reasonable care.  The equation
between negligence and failure to con duct a reasonable precomplaint
inquiry is . . . that "the amount of investigation required by Rule 11
depends on both the time available to investigate and on the proba
bility that more investigation will turn up important evidence; the Rule
does not require steps that are not cost-justified." Hays v. Sony Corp.
of Am., 847 F.2d 412, 418, 7 USPQ2d 1043, 1048 (7th. Cir.
1988)(citations omitted)(decided prior to the 1993 amendment to Fed. R.
Civ. P. 11, but discussing a "reasonable under the circumstances"
standard).

37 CFR 1.4(d)(2) and 10.18 do not require a practitioner to advise the
client (or third party) providing information of this certification
effect (or the sanctions applicable to noncompliance), or question the
client (or third party) when such information or instructions are
provided.  When a practitioner is submitting information (e.g., a
statement of fact) from the applicant or a third party, or relying upon
information from the applicant or a third party in his/her arguments,
the Office will consider a practitioner's "inquiry reasonable under the
circumstances" duty under 37 CFR 10.18 met so long as the practitioner
has no knowledge of information that is contrary to the information
provided by the applicant or third party or would otherwise indicate
that the information provided by the applicant or third party was so
provided for the purpose of a violation of 37 CFR 10.18 (e.g., was
submitted to cause unnecessary delay).

Nevertheless, it is highly advisable for a practitioner to advise a
client or third party that any information so provided must be reliable
and not misleading. The submission by an applicant of misleading or
inaccurate statements of facts during the prosecution of applications
for patent has resulted in the patents issuing on such applications
being held unenforceable. See, e.g. , Refac Int'l Ltd. v. Lotus
Development Corp., 81 F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. 1996);
Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d
1182, 25 USPQ2d 1561 (Fed. Cir 1993);  Rohm & Haas Co. v. Crystal Chem.
Co., 722 F.2d 1556, 200 USPQ 289 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984); Ott v. Goodpasture, 40 USPQ2d 1831 (D.N. Tex. 1996); 
Herman v. William Brooks Shoe Co., 39 USPQ2d 1773 (S.D.N.Y. 1996); 
Golden Valley Microwave Food Inc. v. Weaver Popcorn Co., 837 F. Supp.
1444, 24 USPQ2d 1801 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed. Cir.
1993)(table), cert. denied, 511 U.S. 1128 (1994). Likewise, false
statements by a practitioner in a paper submitted to the Office during
the prosecution of an application for patent has resulted in the patent
issuing on such application also being held unenforceable. See General
Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 30 USPQ2d 1149
(Fed. Cir. 1994)(false statement in a petition to make an application
special constitutes inequitable conduct, and renders the patent issuing
on such application unenforceable).

In addition, an applicant has no duty to conduct a prior art search as a
prerequisite to filing an application for patent. See Nordberg, Inc. v.
Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir.
1996);  FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5
USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co.,
835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American
Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ
763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
The "inquiry reasonable under the circumstances" requirement of 37 CFR
10.18 does not create any new duty on the part of an applicant for
patent to conduct a prior art search. See MPEP 609; cf.  Judin v. United
States, 110 F.3d 780, 42 USPQ2d 1300 (Fed. Cir 1997)(the failure to
obtain and examine the accused infringing device prior to bringing a
civil action for infringement violates the 1983 version of Fed. R. Civ.
P. 11). The "inquiry reasonable under the circumstances" requirement of
37 CFR 10.18, however, will require an inquiry into the underlying facts
and circumstances when a practitioner provides conclusive statements to
the Office (e.g., a statement that the entire delay in filing the
required reply from the due date for the reply until the filing of a
grantable petition pursuant to 37 CFR 1.137(b) was unintentional).

37 CFR 10.18(c) specifically provides that violations of 37 CFR
10.18(b)(1) may jeopardize the validity of the application or document,
or the validity or enforceability of any patent, trademark registration,
or certificate resulting therefrom, and that violations of any of 37 CFR
10.18(b)(2)(i) through (iv) are, after notice and reasonable opportunity
to respond, subject to such sanctions as deemed appropriate by the
Commissioner, or the Commissioner's designee, which may include, but are
not limited to, any combination of:

(A) holding certain facts to have been established;

(B) returning papers;

(C) precluding a party from filing a paper, or presenting or contesting
an issue;

(D) imposing a monetary sanction;

(E) requiring a terminal disclaimer for the period of the delay; or

(F) terminating the proceedings in the Patent and Trademark Office.

The Office has amended 37 CFR 1.4(d)(2) and 10.18 with the objective of
discouraging the filing of frivolous or patently unwarranted
correspondence in the Office, not to routinely review correspondence for
compliance with 37 CFR 10.18(b)(2) and impose sanctions under 37 CFR
10.18(c).

Where the circumstances of an application or other proceeding warrant a
determination of whether there has been a violation of 37 CFR 10.18(b),
the file or the application or other proceeding will be forwarded to the
Office of Enrollment and Discipline (OED) for a determination of whether
there has been a violation of 37 CFR 10.18(b). In the event that OED
determines that a provision of 37 CFR 10.18(b) has been violated, the
Commissioner, or the Commissioner's designee, will determine what (if
any) sanction(s) under 37 CFR 10.18(c) is to be imposed in the
application or other proceeding.  In addition, if OED determines that a
provision of 37 CFR 10.18(b) has been violated by a practitioner, OED
will determine whether such practitioner is to be subject to
disciplinary action (see 37 CFR 1.4(d)(2) and 10.18(d)).  That is, OED
will provide a determination of whether there has been a violation of 37
CFR 10.18(b), and if such violation is by a practitioner, whether such
practitioner is to be subject to disciplinary action; however, OED will
not be responsible for imposing sanctions under 37 CFR 10.18(c) in an
application or other proceeding.

37 CFR 10.18(d) provides that any practitioner violating the provisions
of this section may also be subject to disciplinary action. 37 CFR
10.18(d) (and the corresponding provision of 37 CFR 1.4(d)(2)) clarifies
that a practitioner may be subject to disciplinary action in lieu of, or
in addition to, the sanctions set forth in 37 CFR 10.18(c) for
violations of 37 CFR 10.18.

