IP Update, Volume 7, No. 6, June 2004
June 2004
IN THIS ISSUE
- Patents/Prosecution History Estoppel- Federal Circuit Rule En Banc-- Rewriting Dependent Claims into Independent Form Creates Presumption of Prosecution History Estoppel
- Patents/Claim Construction-Relying on Claim Language, Federal Circuit Finds Patent for Detecting B Vitamin Deficiencies Infringed
- Patents/Claim Construction-Court Rejects Patentee’s Prosecution History Estoppel Based Narrow Claim Interpretation
- Licensing/EU Legislations-EU Adopts New Safe Harbour for Licensing of Patents, Know-Howand Software Copyright
Patents/Prosecution History Estoppel
Federal Circuit Rule En Banc-- Rewriting Dependent Claims into Independent Form Creates Presumption of Prosecution History Estoppel
By David M. Beckwith
An en banc panel of the U.S. Court of Appeals for the Federal Circuit held that the Festo presumption of surrender of equivalence applies where the applicant rewrites dependent claims into independent form, canceling the original independent claims that were determined to be unpatentable by the examiner, even though the claim limitations in the dependent claims were never amended. Honeywell International Inc. v. Hamilton Sunstrand Corporation, Case No. 02-1005-1082 (Fed. Cir. June 2, 2004) (Dyk, J.).
Honeywell sued Sunstrand for infringing certain claims directed to an aircraft auxiliary power unit (APU) and, in particular, the means for controlling airflow instability, or “surge,” in the APU. Each of the claims at issue requires the APU to include “inlet guide veins” and requires the operation of the surge bleed valve to be a function of inlet guide vein position. The originally filed independent claims did not include any limitations relating to inlet guide veins or their position; these limitations were contained only in dependent claims. During prosecution, the independent claims were rejected as obvious. The examiner indicated that dependent claims would be allowed if rewritten into independent form, which the applicant did.
The district court denied Sunstrand’s motion for summary judgment on the issue of prosecution history estoppel, and the jury returned a verdict of infringement under the doctrine of equivalence. Both parties appealed.
The cross-appeal was originally heard by a panel of the Federal Circuit, followed by the Court’s sua sponte en banc review of the issue of prosecution history estoppel. The majority of the en banc panel ruled the Festo presumption of surrender applies where there is either a narrowing amendment, or the scope of subject matter is narrowed through a new claim limitation added by amendment. The Court compared the original independent claims with the new independent claims, concluding that the new independent claims included a limitation added by amendment. The Court expressly rejected Honeywell’s argument that the presumption of surrender should not apply because the scope of the rewritten claims themselves had not been narrowed. The fact that the scope of the rewritten claim remained unchanged did not preclude prosecution history estoppel where, by canceling the originally independent claim and rewriting the dependent claims into independent form, the scope of the subject matter claimed in the original independent claim has been narrowed to secure the patent. The Federal Circuit’s focus was on the comparison of the scope of the independent claims as originally drafted and as amended.
Judge Newman dissented, arguing that restating a dependent claim in independent form is not a change in scope when the element added from the dependent claim was not initially contained in the independent claim. Judge Newman reasoned that the antecedent independent claim did not mention any inlet guide vein, and, therefore, the inlet guide vein element was not amended or narrowed at any time during the prosecution. She focused on a comparison between the dependent claim as initially drafted and as rewritten in independent form, rather than the majority’s comparison between the independent claim as originally drafted and the independent claim as amended. The dissent noted the havoc the Court’s majority opinion is likely to inflict on the prosecution process, since it will provide a strong incentive for applicants to file and prosecute far more independent claims than would traditionally be prosecuted using a dependent claim structure. Such change will drive up the cost of prosecution, complicating the job for the examiner and applicant alike.
Practice Note: The Honeywell case, coupled with the recent Federal Circuit decisions in Deering Precision Instruments and Ranbaxy Pharmaceuticals, reflect the Federal Circuit’s preference for bright lines and absolute tests for application of the Festo presumption of surrender. This trio of cases provides a strong incentive to draft claims in independent form, as any instance where a dependent claim is redrafted into independent form, coupled with the cancellation of the antecedent independent claims, will trigger the Festo estoppel.
Relying on Claim Language, Federal Circuit Finds Patent for Detecting B Vitamin Deficiencies Infringed
By Astrid R. Spain
In a lengthy opinion that highlighted claim construction and infringement, but also tackled invalidity, breach of contract, enhanced damages and permanent injunction, the Federal Circuit upheld a ruling that Laboratory Corp.(doing business as LabCorp.) infringed Metabolite’s patent claim for a two-step method of detecting a deficiency of vitamins B12 or folic acid. Metabolite Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings), Case No. 03-1120 (Fed. Cir. June 8, 2004) (Rader, J.) (Schall, J., dissenting-in-part and concurring-in-part).
A vitamin deficiency in either B12 (cobalamin) and folic acid (folate) can cause serious illnesses in humans, but each can easily be treated with vitamin supplements if detected. Based on the discovery of a relationship between elevated levels of total homocysteine and a deficiency in either B12 or folic acid, measurement of total homocysteine can be used to detect the vitamin deficiencies. Metabolite’s U.S. Patent No. 4,940,658 (the `658 patent) claims a total homocysteine test in a two-step method of “assaying” a body fluid for an elevated level of homo-cysteine and “correlating” an elevated level with a vitamin deficiency. LabCorp. originally performed total homocysteine assays under a sublicense of the `658 patent, but the company subsequently switched to an assay developed by Abbott Laboratories and discontinued royalty payments to Metabolite. In response, Metabolite sued LabCorp. for infringement.
Analyzing the claim language (including the preamble), pro-secution history and specification, the Court construed “correlating” to include both a mutual relationship between an elevated homo-cysteine level and a vitamin deficiency and a reciprocal relationship between lack of an elevated homocysteine level and no vitamin deficiency. The Court firmly rejected LabCorp.’s contention that the correlation step required showing of deleterious symptoms or abnormalities to confirm the “correlation.”
Turning to infringement, the Court concluded that LabCorp.’s publications advocating use of the assay to identify a need for, and recommending treatment with, B12/folic acid supplements allowed a reasonable jury to find sufficient intent to induce infringement. Attempts by LabCorp. to invalidate the `658 patent based on a variety of description and prior art issues also were rejected by the Court. Applying governing state law, the Court affirmed the breach of contract finding, stating that LabCorp.’s refusal to pay royalties under the sublicense constituted material breach. In upholding enhanced damages, the Court acknowledged, but did not deem fatal, the district court’s failure to explicitly set forth its rationale for awarding Metabolite enhanced damages based on LabCorp.’s willful indirect infringement. Finally, the Court held that no justification for a permanent injunction is required once infringement is found.
In a partial dissent, Judge Schall argued damages should be recalculated because the claimed method covers only detection of cases in which the patient’s level is elevated, not the 80 percent or more in which the level is not elevated.
Court Rejects Patentee’s Prosecution History Estoppel Based Narrow Claim Interpretation
By Dennis A. Duchene
The U.S. Court of Appeals for the Federal Circuit has held that the ordinary and customary meaning of claim terms may trump even prosecution history distinguishing a prior art reference. W.E. Hall Company, Inc. v. Atlanta Corrugating, LLC, Case No. 03-1417 (Fed. Cir. June 7, 2004) (Gajarsa, J.).
The claim at issue recited an underground pipe with a “plurality of open channels” that, according to the applicant, provided strength and increased hydraulic efficiency. During prosecution, to overcome a prior art reference describing a pipe having channels—but also having a reinforcement element in each channel to close and strengthen the channel—the applicant amended the claim to add the limitation “single piece construction” and to change the open format “comprising” transition term to the partially-closed forms “consisting essentially of.”
Atlanta’s accused pipe included channels containing an “insert element” that closed, but did not strengthen, the channel. To read the partially closed claim on the Atlanta pipe, Hall argued (based on the prosecution history) that “open channel” means a channel without a reinforcement element, but with a non-structural metal insert. Hall further alleged that “single piece construction” means a construction with a single structural element, but also with non-structural elements.
The district court interpreted the term “single piece construction” to mean a pipe having only one piece and found that the prosecution history did not require a departure from the ordinary and customary meaning of the term “open channel,” so as to include “channels that were closed with metal inserts.” The court further held that the partially closed term “consisting essentially of” did not allow the claim to read on a pipe having metal inserts because such inserts would materially affect the properties of the invention.
The Federal Circuit affirmed, finding that, in this case, “the inventor was not his own lexicographer” and that “[w]e therefore rely on the plain and ordinary meaning of the terms.” The Court also noted that prosecution history cannot limit claim scope without clear evidence that the “applicants had disavowed coverage of the relevant subject matter.”
The Federal Circuit found no intrinsic evidence to suggest that “Hall intended to use the terms in a manner other than according to their ordinary meanings” and held the term “open channel” cannot be interpreted to include a non-structural insert which closes, but does not reinforce, the channel. Similarly, the Court found no evidence to interpret the term “single piece construction” to mean a pipe that also includes non-structural pieces.
Practice Note: This case demonstrates the danger of using the partially closed transition term “consisting essentially of,” especially in an apparatus claim. Patent applicants should consider maintaining the open term “comprising” and then adding a minimal claim limitation if necessary to avoid prior art.
Court Reversed for Failing to Consider Post-Issuance Evidence of Unexpected Results
By David A. Gay, Ph.D.
Reversing a summary judgment of invalidity on the ground of obviousness, the U.S. Court of Appeals for the Federal Circuit held that a genuine factual dispute existed because there appeared to be no record of evidence that the prior art taught or suggested the enhanced biomedical effect of a claimed analgesic drug combination. Knoll Pharmaceutical Co., Inc. v. Teva Pharmaceuticals, USA, Inc., Case No. 03-1300 (Fed. Cir. May 19, 2004) (per curiam, Newman, Archer & Prost, JJ.).
Knoll Pharmaceutical Co., Inc. (Knoll) appealed the summary judgment of invalidity of U.S. Patent No. 4,587,252 (the `252 patent), claiming compositions and methods for treating pain using a combination of hydrocodone and ibuprofen that provides a greater analgesic effect than that obtainable by use of either drug alone. Vicoprofen, a composition covered by the `252 patent, is marketed by Knoll as a pharmaceutical for pain relief.
Knoll sued the generic drug maker Teva Pharmaceuticals, USA, Inc. (Teva) for infringing the `252 patent on the basis of Teva’s Abbreviated New Drug Application (ANDA) seeking market authorization for an identical combination of hydrocodone and ibuprofen as found in Vicoprofen. The district court held all claims to be obvious on Teva’s motion for summary judgment because the prior art expressly taught the combination of an opioid with a non-steroidal anti-inflammatory drug (NSAID) and that there was a reasonable expectation of success in combining the narcotic analgesic hydrocodone with the NSAID ibuprofen.
Acknowledging that the prior art appeared to suggest an opioid-NSAID combination, the Federal Circuit concluded the summary judgment to be improper because the prior art failed to show the claimed greater analgesic effect of the claimed combination. The district court’s refusal to consider Knoll’s offer of evidence for unexpected results at trial was considered contrary to the patent’s express recognition of the “surprising” efficacy for the hydrocodone-ibuprofen combination. Clarifying that evidence developed after issuance should not be excluded to defend litigation attacks, the Court reasoned that, at the time of filing, understanding the full range of an invention is not always achieved nor is there a requirement for the invention’s properties and advantages be fully known in order for such evidence to be admissible in support of validity. Contradictory evidence of the failure of others in obtaining opioid-NSAID combinations further reinforced the existence of disputed facts in issue.
No-Tilt: Nintendo Had Implied License from Its Supplier
By Irene Y. Lee
The U.S. Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment decision that a settlement agreement between the patent owner Jacobs and a supplier permitted the supplier to sell infringing devices for use by its manufacturing customers, including the defendant Nintendo. Jacobs v. Nintendo of Am., Inc., Case Nos. 03-1297, 2004 U.S. App. LEXIS 10515 (Fed. Cir. May 28, 2004).
Prior to bringing the underlying lawsuit against Nintendo, Jacobs brought a patent infringement action against Analog Devices, Inc. (Analog) for selling accelerometers for use in tilt-sensitive control boxes. Jacobs charged that the accelerometers infringed upon its U.S. Patent No. 5,059,958 (the `958 patent), and thereafter entered into a settlement and licensing agreement with Analog. In the agreement, Jacobs granted Analog two critical rights: the right to be free from suit based on the `958 patent and the right to sell micromachined accelerometers for use in tilt-sensitive control boxes.
Thereafter, Jacobs brought a patent infringement action against Nintendo, charging infringement of the `958 patent by selling tilt-sensitive control boxes that incorporated the Analog accelerometers. Nintendo moved for summary judgment of non-infringement, asserting its acts were protected by the Jacobs-Analog agreement. The district court agreed, concluding “for Jacobs to bar Analog’s customer Nintendo from using Analog’s accelerometers in the products expressly referred to in the settlement agreement would undermine the provision of the agreement permitting the sale of accelerometers ‘for use in tilt-sensitive control boxes.’” The district court explained that Jacobs should not be permitted to do “through the back door—by suing a customer of Analog—what he cannot do through the front door, i.e., by suing Analog.”
On appeal, Jacobs pressed the argument based upon the non-infringing use doctrine articulated in Met-Coil Systems Corp. v. Korners Unlimited, Inc. According to Jacobs, in order for Nintendo to enjoy an implied license, it had to establish that Analog’s accelerometers had no non-infringing uses. The Federal Circuit distinguished Met-Coil from the present case, explaining that “the doctrine applies when a patentee or its licensee sells an article and the question is whether the sale carries with it a license to engage in conduct that would infringe the patent owner’s rights. In that setting, absent an express agreement between the parties, determining whether the sale conveys with it the implied right to use the article in an infringing manner may depend on whether there is any non-infringing use for the article.” However, the Court concluded that the doctrine does not apply where, as in the present case, the Jacobs-Analog agreement authorized Analog to sell its accelerometers for use in the allegedly infringing control boxes.
Affirming the district court’s grant of summary judgment, the Federal Circuit barred Jacobs from interfering with Analog customers’ right to use the accelerometers for that authorized purpose. The Court found that interpretation in accordance with the basic contract principle that a party may not assign a right, receive consideration for it and then take steps that would render the right commercially worthless.
Trademarks/Likelihood of Confusion
Customer Confusion Found Likely in Cholesterol Medicine
By Michelle C. Burke and Jennifer M. Mikulina
Holding that confusion was likely between the trademarks ADVICOR and ALTOCOR, both of which were used with prescription cholesterol-altering medications, the U.S. Court of Appeals for the Third Circuit reversed the prior decision of the district court and required the district court to enter an expedited order enjoining the marketing and sale of the defendant’s cholesterol-lowering medicine. Kos Pharmaceuticals, Inc. v. Andrx Corporation; Andrx Laboratories, Inc., Case No. 03-3977 (May 24, 2004) (Oberdorfer J.).
Kos Pharmaceuticals began marketing a medication to improve cholesterol levels under the trademark ADVICOR in 2001. Soon thereafter, Kos learned of Andrx’s plans to market a similar medicine under the ALTOCOR name. Kos attempted to dissuade or prevent Andrx’s use of the ALTOCOR mark several times before Andrx actually started marketing ALTOCOR in July 2002. By August 2003, when Kos filed a complaint against Andrx, both companies had already spent tens of millions of dollars on promotion and advertising for these particular medicines, and both ADVICOR and ALTOCOR had been prescribed more than 300,000 times, respectively.
In its complaint, Kos claimed that Andrx’s use of the ALTOCOR mark constituted trademark infringement and unfair competition. Kos also filed an application for a preliminary injunction, which the district court denied. In its denial of the preliminary injunction, the district court offered a limited analysis of the 10 likelihood of confusion factors considered in the Third Circuit, discussing only two of these factors¾which it held to favor Kos. It did not provide any analysis regarding the remaining eight factors, aside from a conclusory statement that the remaining eight factors did not indicate a likelihood of confusion.
The Third Circuit found that “two fundamental errors of law taint the district court opinion: (1) the court used an overly narrow definition of confusion, in effect evaluating the likelihood of misdispensing, rather than confusion; (2) the court did not properly analyze or weigh the [likelihood of confusion] factors.” With regard to the first error, the appellate court criticized the district court for focusing only on confusion related to the misdispensation of medication and ignoring the more appropriate broad confusion considerations, such as overall confusion as to the source of the medicines or deception of any kind. The second error, according to the Third Circuit, was the district court’s failure to consider and weigh each relevant factor to assess the likelihood of confusion. Providing trademark practitioners a wealth of dicta relating to each factor, the Third Circuit went on to discuss each factor in a likelihood of confusion analysis in detail.
Practice Note:It is important to recognize, as the district court failed to do, that the scope of the trademark protection under the Lanham Act goes beyond protection against “the traditional source-of-origin confusion.” Therefore, any evidence that shows there is confusion among vendors, investors or the general public created by a trademark or trade name similar to yours is evidence of actual confusion relevant to your trademark infringement claim.
The IP Value of Business Plans—Protection for the Entrepreneur
By Larry Cohen
The England and Wales High Court recently explained that the elements of a business plan had to be analysed to support an award of damages for professional negligence against the defendant, Mr. Ball’s former lawyers and those who failed to protect his interests in the subject matter of the business plan. Ball v. Druces & Attlee (a law firm) [2004] EWHC 1402 (QB).
A business plan is rarely thought of as being valuable because of the protectable IP rights contained and embodied in it. While such a plan is usually treated as confidential if disclosed through a non-disclosure agreement, it is usually considered as a vehicle to raise money and not as intrinsically valuable in its own right. The basis of the value of the underlying ideas in a business plan is rarely analysed.
Ball was co-founder of The Eden Project, an international award winning environmental tourist attraction near St. Austell, Cornwall England. He and his co-founder developed the concept of the project in a long business plan which was used as the basis for funding. Mr. Ball and his co-founder, Mr. Smit, were the originators of the name and logo for The Eden Project, which, at the time of the alleged breach of duty, had limited value and could have been superseded.
The business plan contained text and spreadsheets from accountants, architectural concepts from an award-winning firm of architects and a general structure from business structure advisors. The underpinning and concept originated from Mr. Ball and his co-founder Mr. Smit.
At an early stage of this project, Mr. Ball retained Druces & Attlee to protect his position and to help establish an appropriate legal entity so that funding could be received. Druces & Attlee established the Eden Trust, which was the eventual recipient of the funding, but did so without protecting Mr. Ball’s legal position. In terms of rewards from the project, as a result of the formation of the trust, Mr. Ball’s position changed from possessor of legal rights to a supplicant to the trust. See Lakeview Computers Plc v. Steadman (CA) (Unreported, November 26, 1999). Some two years earlier the High Court had specifically declared that the trademark rights belonged to the Eden Trust and not Mr. Ball personally (Jonathan Ball v. The Eden Project Limited & The Eden Trust Chancery Division – 11/04/01 – Laddie J.).
Under English trust law, on the founding of the trust, all of Mr. Ball’s rights in the business plan vested in the trust, and his position became unprotected. He was at the mercy of the trustees who were legally bound not to reward past consideration.
Mr. Ball was later removed from the project and subsequently started litigation against the Eden Trust on the grounds that he had not been properly compensated for his work since 1994. Later, Mr. Ball sued Druces & Attlee for negligence. The firm raised the issue of whether Mr. Ball had significant intellectual property rights arising out of the business plan which represented protectable intellectual property.
The defendant argued the limit of the protection was to a name and logo which Mr. Ball had devised, but which, without funding, were of no real value. The trial judge had little difficulty in rejecting that narrow assertion, holding that the intellectual property rights in the business plan consisted not merely of the name and logo, but copyright in drawings for which Mr. Ball would have obtained an exclusive licence to use for the purpose for which they were intended. These rejects extend to the intangible property and material gathered over the 15 months in which they were embarked upon the project. Their creative ideas and work embodied the business plan and in the knowledge of the design team and others were intended to be confidential.
The outlines of the idea were released for public consumption to gain support, but the details were not revealed. This very substantial amount of work and energy by the co-founders amounts to con-fidential proprietary material such as that described by Lord Greene M.R. in Saltman Engineering Company v. Campbell Engineering Company [1948] 65 RPC 203. What makes material, which may be available to everyone, proprietary is the manner in which its use and assembly has been perceived and created by its maker. Such a person has “used his brain and thus produced a result which can only be produced by somebody who goes through that same process.” Saltman at 215.
Accordingly it was held that even though a great deal of the work was done by others, Mr. Ball, as the originator and co-ordinator of the business plan (with Mr. Smit), was entitled to all rights in the whole, and those who contributed were held to have given an unwritten exclusive licence to Mr. Ball (and Mr. Smit), which entitled them to benefit of the whole value of the business plan.
On this rationale, Mr. Ball was awarded about £2.1 million against his former lawyers, before credits for monies already received.
EU Adopts New Safe Harbour for Licensing of Patents, Know-How and Software Copyright
By Cynthia Ngwe
On 27 April 2004, the European Commission (EC) published its new Technology Transfer Block Exemption Regulation (TTBE), together with accompanying guidelines. The TTBE provides a “safe harbour” from the application of EC competition law for certain technology licenses (i.e., patents, know-how, and software copyright licenses).
The old TTBE provided a framework which, if followed carefully by licensing parties, ensured that patent/know-how licenses were automatically protected from competition law compliant and were legal and enforceable. Anti-competitive provisions such as price-fixing clauses were blacklisted and acceptable provisions (e.g., exclusivity grants, minimum royalties and minimum quality specifications) were white-listed. The old TTBE was often criticized, however, for its prescriptive format. According to the commission, “[T]hese new generation regulations represent a shift from the old legalistic and form-based approach to a more economic and effects-based approach, and offer greater flexibility to companies engaged in innovative activities and who do not want to follow standard industry practices.”
A key positive change includes a more liberal approach to grant-backs of intellectual property. Imposing an exclusive license/assignment of improvements on the licensee will not take the whole agreement outside the safe harbour, just that individual provision. Further, an obligation on the licensor to license its improvements to the licensee is not excluded from the new TTBE. Another positive change is the extension to software. Software copyright licensed for the manufacture or provision of specific contract products/services is included within the scope of the new TTBE. This reflects the commission’s keenness to ensure that the converging Information Society markets remain competitive.
The commission’s guidelines direct parties on how to apply EC competition law to multiparty licenses, patent pools and other licensing arrangements falling outside of the new TTBE. The guidelines reflect the commission’s desire to ensure businesses and their legal advisers have as much guidance as possible on the application of EC competition law to commercial arrangements, particularly given the abolition of the notification/individual exemption system from 1 May 2004.
There are also several changes that may adversely affect existing licensing programs:
Stricter Treatment of IP Licenses Between Competitors
Certain restrictions commonly found in reciprocal cross-licensing arrangements between competing companies will not fall within the new TTBE (e.g., restrictions on field of use in reciprocal cross-licenses which may have the effect of restricting activities to technical fields/territories/products reserved to the other licensee). Licenses containing such provisions will need to be analyzed under EC competition law from first principles.
The Inclusion of Market Share Thresholds
Competitors will only benefit from the new TTBE if their combined market share does not exceed 20 percent. Non-competitors’ market shares each need to be 30 percent or less in order fall within the safe harbour. Companies and their legal advisers will now need to define the relevant product markets, and calculate market shares, which may be difficult in certain dynamic technological markets. Further, those companies that may fall below the thresholds will need to monitor their market shares over the life of the license agreement in order to ensure that they do not “move” out of the safe harbour.
Practice Note: The following actions might usefully be taken now to adapt business practices to these changes: prioritization of existing and proposed licensing agreements for compliance audit under EU competition law, based on the new TTBE and guidelines; review of licensing agreements existing on 30 April 2004 to consider whether they fall within the old TTBE and therefore benefit from the transitional rules (i.e., safe harbour until 30 March 2006); and review of whether licensing agreements identified as falling outside the TTBE are likely to meet the criteria for exemption, based on the TTBE Guidelines and economic analysis.
Rules Changes for Assignments and Powers of Attorney
By Lawrence T. Cullen
The U.S. Patent and Trademark Office (USPTO) changed the rules for recording assignments and accepting power of attorney documents. Fed. Reg. Vol. 69, No. 102, 29865-29880. These changes are effective on June 25, 2004.
Under revised rule §3.24(b), the USPTO will no longer return assignment documents, which will be scanned to obtain an electronic image and then destroyed. Accordingly, the USPTO now requires a copy or an extract of the original assignment documents to be submitted. Do not submit the original. The USPTO will also accept an assignment via an electronic submission in Tagged Image File Format (TIFF), as set forth in rule §3.24(a).
New rule §1.32 (c)(2) states that a power of attorney may name registered practitioners associated with a customer number. The comments with the rules suggest that any number of registered practitioners may be associated with a customer number. The comments also explain that using the customer number to associate the registered practitioners with the power of attorney will “eliminate the undue processing burden on the Office when a power of attorney naming more than ten patent practitioners is submitted in patent applications.” The comments also advise to “specify in a power of attorney, that each of the patent practitioners associated with a customer number have a power of attorney.”
New rule §1.32 (c)(3) states that a power of attorney may only list ten or fewer registered patent attorneys or registered patent agents. If greater than ten practitioners are named in a power or attorney, the power of attorney must be accompanied by a separate paper indicating which ten practitioners are to be recognized by the USPTO. The comments with the rule change suggest that a power of attorney that does not follow these rules may not be recognized.
The customer number will be used to designate the correspond-ence address and the fee address and also may be used to change the correspondence address and fee address for a large number of cases. However, the comments accompanying the rules advise that an applicant must provide “in a single document, both a complete typed address and a customer number and request that both be used for the correspondence address.”
The practice of providing an “associate power of attorney” is intended to be replaced with an “Authorization to Act in a Representative Capacity,” new §1.34. The new practice simply requires a registered practitioner to specify a customer’s registration number and name when signing. The comments explain that the associate power of attorney practice will not be necessary since the practitioners who have power of attorney can easily be changed by changing the listing of practitioners with a customer number.
