I tend to think of the USPTO as being significantly more rule-burdened (i.e. bureaucratic) than the ILPTO. This is, perhaps, a natural outgrowth of the USPTO being a significantly larger organization – something like 8,000 employees rather than the fewer than 300 at the ILPTO – although there are also cultural factors at play. And it’s reflected in the voluminous MPEP, weighing in at hundreds of pages (maybe over 1000 now, I haven’t looked at a print version in years), versus the ILPTO’s examination guidelines, which are probably still under 100 pages total.
Whatever the reasons, this normal difference between the two offices means that those cases in which the USPTO is easier to deal with than the ILPTO to jump out like a blotch of red paint on a white canvas. And one such difference is the question of who can file papers in a patent application.
You might think that at the USPTO, a power of attorney is required to file papers, but in most cases it’s not. Instead, the USPTO is extremely reasonable: per rule 1.33(b) any registered practitioner can file papers in an application, as long as that practitioner is acting in a representative capacity per rule 1.34, which states:
“When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.”
In other words, the USPTO assumes that a practitioner’s livelihood is of sufficient importance that the practitioner won’t file a paper that he’s not authorized to file. So the USPTO doesn’t require a power of attorney.
Of course, it’s still best to file a POA, for reasons that are beyond the scope of this blog post. And for certain actions, like filing a terminal disclaimer under rule 1.321, or expressly abandoning an application that is not being abandoned with the filing of a continuation application per rule 1.138(b), a POA is required. Presumably that’s because these actions irreversibly affect an applicant’s or patentee’s rights.
Nevertheless, the ability of a practitioner to generally file papers in the absence of a POA is extremely sensible. It’s also extremely convenient, especially when it’s coupled with the ability to file things electronically. To give one example, if a practitioner takes over a case, and there’s a looming deadline to file a response, the applicant and practitioner can focus on the response, without also having to worry just then about getting the necessary signatures for a POA and getting the USPTO to accept the POA (which isn’t always as trivial as one might think).
Contrast this with the way the ILPTO operates. Although a POA is not required for the initial filing of an application by a registered practitioner, the ILPTO subsequently requires the submission of a POA, and the ILPTO’s electronic filing system – which for four years now all registered practitioners have been required by Rule to use – will not allow a practitioner to file a paper in an application in which he is not the practitioner of record (except for things in which he represents an adverse third party, e.g. third party observations or a notice of opposition).
There are additional issues with how the ILPTO EFS is administered that will be subject of subsequent blog post. Suffice it for now to say that preventing practitioners from filing papers in applications in which they are not of record is a sub-optimal arrangement. Israeli practitioners are no less concerned about their license to practice than their colleagues in the USA, so prohibiting practitioners from filing papers until they are officially appointed as counsel in a particular patent application is an unnecessary bit of paternalism that is, at the end of the day, economically inefficient.
Curiously, there is one glaring exception to the requirement that a practitioner be of record in an application or patent in order to file papers in that application or patent: the payment of maintenance fees. Maintenance fees for an Israel patent are due within 3 months of the grant of the patent for years 0-6, and then at 6, 10, 14 and 18 years from the filing date. By Rule, the ILPTO must send a notice to the patentee’s local address for service before each fee is due, and after payment is received it sends a renewal certificate to that same address. The ILPTO will let any registered practitioner pay the maintenance fee, and it doesn’t require a new power of attorney for this, or even a change of address.
It’s not uncommon that applicants with large patent portfolios, having patent family members in many jurisdictions, will engage a maintenance fee payment company to monitor and attend to those maintenance fee payments. By agglomerating the patents of many payors, those companies can in principle negotiate lower rates from local counsel for attending to maintenance fee payments than if each patentee itself tried to negotiate rates. Those companies then typically engage a small number local firms, possibly only one in smaller jurisdictions, to handle all of their maintenance fee payments in each jurisdiction.
Because the ILPTO allows third parties to pay maintenance fees, and does not require a new POA, the result is that many practitioners are told by their clients, “Don’t docket maintenance fees”, but then continue to receive notices from the ILPTO that fees are due and that fees have been paid. This places such practitioners in a quandary: are they to send reminders of upcoming fees or reports of paid fees to clients who have already told them not to do so, and thus in effect told them, “We won’t pay you for such reminders or reports”? Why should they be obligated to waste their time that way? But if they don’t report, are they in dereliction of a duty toward their client?
“OK”, you might say, “so why doesn’t a practitioner in that situation just withdraw from representation?” There are several answers to that.
One answer is that the practitioner who prosecuted the case may have other cases from the same client, and withdrawing from representation in one case might risk alienating the client and result in loss of an entire portfolio of work.
Another answer is that the practitioner may not want to withdraw from representation, and the patentee may want the practitioner to remain as counsel of record. For example, if the patent is later the subject of a cancellation action, or is involved in litigation, both the patentee and the practitioner may want the practitioner to remain involved in the case.
A third answer, with respect to patentees that are not domiciled in Israel, is that the view of the ILPTO is that failure to maintain an address for service in Israel results in cancellation of the patent. See Commissioner’s Circular no. 010/2012, update no. 7, paragraph 44. For such patentees, a practitioner’s withdrawal from representation might result in loss of the patent, at least as far as the ILPTO is concerned.
Now let’s circle back around to the USA. The same considerations that cause patentees to entrust their maintenance fee payments to a third party that apply in Israel likewise apply in the USA. So how does the USPTO handle this? Easy. It enables a patentee to have a separate address for service for maintenance fees only. So notices of missed payments, or notices that a payment has been made, can be sent to one party, while the address for service for all other correspondence remains as it was, e.g. the firm that prosecuted the patent.
It would be extremely helpful to patentees and practitioners alike if the Israel PTO would implement the same sort of system, allowing patentees to list a different address for maintenance fee payments. Then reminders of upcoming fees and renewal certificates could be sent to the party that is actually responsible for them.
There is an alternative that might be easier for the ILPTO to implement, but less desirable, namely to require a power of attorney from the party paying the maintenance fee. But as noted above, the patentee may want the practitioner who prosecuted to the case to remain the practitioner for substantive matters. And getting the necessary signatures, and recording a new POA, would add to the patentee’s cost of maintaining the patent. So this “solution” is really a non-starter.