How to Prepare the Power of Attorney for a Patent Application. Episode 27

Power of Attorney

In the past few episodes, and in those that follow, I’m covering documents you may need at the time of filing your patent application. One of those documents is the Power of Attorney. A Power of Attorney (POA) allows someone else to act on your behalf. If you’re the sole inventor filing a patent application on your own and handling all correspondence with the United States Patent and Trademark Office (USPTO), you don’t need a power of attorney—because no one else is acting on your behalf.

When Do You Need a Power of Attorney?

One instance where you may need a power of attorney, even if you don’t have an attorney, is if your patent application has multiple inventors. If there is more than one inventor, one inventor might be designated as the primary applicant, responsible for handling all patent office matters. In this case, the other joint inventors must authorize this individual to act on their behalf by signing a Power of Attorney form.

The USPTO provides a simple one-page form called PTO/AIA/81, which can be filled out to grant this authority. If you don’t use this form—or create your own version—the USPTO requires that all inventors sign every correspondence sent to the patent office. This can be inconvenient, so it’s generally best for one inventor to have the authority to sign documents on behalf of all inventors, and this requires a Power of Attorney.

How to Fill Out the Power of Attorney Form (PTO/AIA/81)

If you look at PTO/AIA/81, you’ll see that the top right section includes fields for:

• Application number,

• Filing date,

• First named inventor,

• Art unit, and

• Examiner name and title.

However, you don’t need to fill in the application number, filing date, art unit, or examiner name because you won’t have those yet at the time of filing.

You’ll also see a checkbox that states: “I appoint the following joint inventor(s).” This part can be confusing. You can list all inventors’ names if you want every inventor to have authority to correspond with the USPTO. Alternatively, you can list only one inventor, designating that individual as the sole representative.

There’s also a section regarding a customer number. You probably don’t have a customer number, as these are typically used by patent attorneys or large companies. Instead, you’ll need to fill in the name, address, email, and phone number of the person who will be handling USPTO correspondence. The USPTO only mails correspondence to one designated address, so it’s important to list the correct contact person.

Further down the form, you’ll see a section where the person granting the power of attorney (the inventor giving authority) must sign their name and include the date.

Important Details for Multiple Inventors

Each inventor must fill out their own Power of Attorney form if one inventor is being designated as the primary applicant. For example, if there are five joint inventors and they agree that one inventor will handle all correspondence with the USPTO, then four inventors must complete separate forms listing that one designated inventor. The fifth inventor—the one handling the correspondence—does not need to complete a form.

All inventors must list the same person as the designated representative and provide the same correspondence address.

Using an Attorney for a Power of Attorney

If you’re working with a patent attorney, they should be the one preparing the Power of Attorney for you. The USPTO has several Power of Attorney forms, including AIA/80, 81A, 81B, 81C, 82, and forms in other languages. However, if you’re filing on your own, PTO/AIA/81 is usually sufficient.

If your situation is more complex, such as involving assignments, multiple inventors, or a corporate entity, you should consult a patent attorney to determine the appropriate form.

Special Rule for Companies and Assigned Inventions

One important caution is that if you assign your invention to a company—even if it’s your own one-person company—then only a registered patent attorney or patent agent can represent the company before the USPTO.

For example:

• If you are filing the application as an individual inventor, you can handle the application yourself.

• However, if you assigned the invention to a corporation or LLC, and the company is the applicant, you must hire a registered patent attorney or agent to prosecute the application.

So, if you were planning to assign your invention to a company but wanted to handle the application yourself, be aware that you may need a patent attorney. I’m not saying you shouldn’t assign your invention—but you should understand the consequences before doing so.

I’m Adam Diament, and until next time, keep on inventing!