USPTO Power of Attorney

What a USPTO power of attorney authorizes

A power of attorney under 37 CFR 1.32 gives a named registered patent practitioner the authority to act on the applicant’s or patent owner’s behalf in prosecuting a patent application — responding to office actions, filing amendments, conducting interviews with the examiner, and receiving official correspondence. Without a power of attorney (or the applicant acting pro se), the USPTO will correspond only with the applicant directly, per MPEP §402.

See CASRAI’s related entries on patent prosecution for how this authority fits into the broader application-to-issuance process, and file wrapper (USPTO) for how the power of attorney and its revocations are recorded as part of an application’s official record.

Who may be appointed

Under 37 CFR 1.32(a)(1), a “patent practitioner” means a registered patent attorney or registered patent agent under 37 CFR 11.6. 37 CFR 1.32(c) permits an applicant to appoint: (1) joint inventors acting on each other’s behalf, (2) all patent practitioners associated with a USPTO Customer Number, or (3) up to ten patent practitioners individually named by registration number. A design-only registered practitioner under 37 CFR 11.6(d) may act only in design patent matters, not utility or plant prosecution.

Form PTO/AIA/82

For applications filed on or after September 16, 2012, the standard vehicle is Form PTO/AIA/82, which has three parts: Part A is a transmittal identifying the application, signed by a party proper under 37 CFR 1.33(b); Part B is the actual power of attorney and may also designate the correspondence address, signed by the applicant or patent owner; Part C is an optional listing used to name up to ten practitioners individually by registration number. The Customer Number practice — associating an entire firm’s registered practitioners with a single number — is the more common approach for firms handling volume prosecution, since it avoids re-naming individual practitioners on every application.

Attorney of record vs. correspondence address

These are two distinct concepts that are easy to conflate because Form PTO/AIA/82 Part B can set both at once. The attorney or agent of record is the practitioner with actual legal authority to prosecute the application — to sign responses, make representations to the examiner, and bind the applicant procedurally. The correspondence address, governed separately by 37 CFR 1.33, is simply where the USPTO mails or otherwise transmits official communications about the application. An applicant can have a correspondence address on file (e.g., a Customer Number) without that address belonging to the attorney of record, and conversely a power of attorney does not automatically change the correspondence address unless the filer also completes that section. For institutions managing prosecution across many applications and multiple outside firms, keeping these two fields in sync — so that office actions actually reach the attorney with authority to respond to them — is a recurring administrative task, not a one-time filing.

Revocation

A power of attorney is revoked under 37 CFR 1.36(a) by the applicant or patent owner filing a revocation (typically when appointing a new practitioner, which operates as an implied revocation of the prior appointment as to the application at hand). Revocation becomes effective on the date the USPTO receives the revocation, not the date it is processed or acknowledged — a distinction that matters when an institution is transitioning prosecution between outside counsel firms and needs to know precisely when the prior firm’s authority ended. Where an application has been assigned, an assignee seeking to revoke or appoint a new power of attorney generally must first become of record as the applicant under 37 CFR 1.46(c) before it can act unilaterally.

Why this matters for research institutions

University and hospital technology transfer offices routinely act as the applicant (via assignment) for inventions arising from institutionally supported research, and frequently work with more than one outside patent firm across a portfolio. Confirming exactly who is attorney of record — and whether the correspondence address is current — for each pending application is a basic due-diligence step before a firm transition, a licensing negotiation, or an audit of prosecution status; misdirected office actions due to a stale correspondence address can result in missed statutory deadlines and, in the worst case, abandonment.

Frequently asked questions

Is a USPTO power of attorney the same as a general power of attorney?

No. A general or durable power of attorney executed under state law has no effect before the USPTO. Only a document meeting 37 CFR 1.32’s requirements, naming a qualifying representative under 37 CFR 1.32(c), authorizes someone to prosecute a patent application.

Does filing a new power of attorney automatically revoke the old one?

Appointing a new attorney or agent of record for an application effectively supersedes a prior appointment for that same application, but institutions should still confirm the revocation/appointment was actually received and entered by the USPTO rather than assuming it took effect on the date it was signed or mailed — per 37 CFR 1.36(a), the receipt date controls.

Who can sign the power of attorney — the inventor or the assignee?

It must be signed by the applicant for patent (which may be the inventor or, where an assignee has become the applicant under 37 CFR 1.46) or the patent owner post-issuance. An assignee that has not been made of record as the applicant generally cannot unilaterally appoint or revoke a power of attorney.