Justification for Nonmaterial/Nonsubstantive Change

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Representative and Address Provisions
OMB CONTROL NUMBER 0651-0035
(September 2012)

Background
The United States Patent and Trademark Office (USPTO) is submitting this request to
update information collection 0651-0035, “Representative and Address Provisions.”
The USPTO is submitting seven new forms in this collection related to power of attorney
and change of correspondence address:
(1)
(2)
(3)

(4)
(5)
(6)
(7)

Power of Attorney to Prosecute Applications Before the USPTO (PTO/AIA/80)
Power of Attorney to One or More of the Joint Inventors and Change of
Correspondence Address (PTO/AIA/81)
Reexamination or Supplemental Examination – Patent Owner Power of
Attorney or Revocation of Power of Attorney with a New Power of Attorney
and Change of Correspondence Address for Reexamination or Supplemental
Examination and Patent (PTO/AIA/81B)
Transmittal for Power of Attorney to One or More Registered Practitioners
(PTO/AIA/82A)
Power of Attorney by Applicant (PTO/AIA/82B)
Change of Correspondence Address (Application) (PTO/AIA/122)
Change of Correspondence Address (Patent) (PTO/AIA/123)

Section 4 of the Leahy-Smith America Invents Act (AIA) amends 35 U.S.C. 118 to
change the practice regarding the filing of an application by a person other than the
inventor. First, 35 U.S.C. 118 is amended to provide that a person to whom the inventor
has assigned, or is under an obligation to assign, the invention may make an application
for patent. Second, 35 U.S.C. 118 is amended to provide that a person who otherwise
shows sufficient proprietary interest in the matter may make an application for patent on
behalf of and as agent for the inventor on proof of the pertinent facts and a showing that
such action is appropriate to preserve the rights of the parties. The changes to
35 U.S.C. 118 in the AIA are effective on September 16, 2012, but apply only to patent
applications filed on or after September 16, 2012.
The changes to 35 U.S.C. 118 impact who may give a power of attorney and who may
change a correspondence address. The USPTO currently provides forms (e.g.,
PTO/SB/80, PTO/SB/81, PTO/SB/122, PTO/SB/123) for giving a power of attorney and
changing a correspondence address. For consistency with the change in practice
concerning who may be an applicant for patent, the USPTO is providing new forms for
giving power of attorney and changing the correspondence address.

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0035
(continued)

The changes to 35 U.S.C. 118 in the AIA do not apply to applications filed prior to
September 16, 2012. Thus, the USPTO plans to provide new forms for use with
applications filed on or after September 16, 2012, but still continue to make the existing
power of attorney and change of correspondence address forms (legacy forms)
available until applications filed prior to September 16, 2012, are no longer pending
before the USPTO.
Summary of Changes
In order to accommodate the revised procedure, the following forms are added to this
information collection:

PTO/AIA/80: Power of Attorney to Prosecute Applications Before the USPTO:
This form is nearly identical to the current PTO/SB/80 and may be used by an assignee
to give a power of attorney to registered practitioners (either by individual name(s) or to
those registered practitioners who are associated with a customer number). The
reference to ``3.73(b)'' in PTO/SB/80 has been changed to ``3.73(c)'' in PTO/AIA/80 for
consistency with the change to 37 CFR 3.73, and the instruction as to who may
complete the accompanying statement under 37 CFR 3.73(c) has been updated in
PTO/AIA/80 for consistency with newly added 37 CFR 3.73(d).

PTO/AIA/81: Power of Attorney to One or More of the Joint Inventors and
Change of Correspondence Address: This form is similar to the current PTO/SB/81,
except that it is specifically designed to (i) be filed by pro se inventors (i.e., prosecuting
the application without a registered patent practitioner) who are identified as the
applicant in the corresponding application and (ii) give power to one or more of the joint
inventors.

PTO/AIA/81B: Reexamination or Supplemental Examination – Patent Owner
Power of Attorney or Revocation of Power of Attorney with a New Power of Attorney
and Change of Correspondence Address for Reexamination or Supplemental
Examination and Patent: This form is similar to the current PTO/SB/81B, except that it
may be used for either a reexamination or supplemental examination proceeding.

PTO/AIA/82A and B: Transmittal for Power of Attorney to One or More
Registered Practitioners/Power of Attorney by Applicant: Taken together, new forms
PTO/AIA/82A and B are similar to the current PTO/SB/81, except that they are
specifically designed to (i) be filed by the applicant for patent, taking into account the
changes in practice concerning who the applicant for patent may be, and (ii) give power
to one or more registered practitioners.

PTO/AIA/122: Change of Correspondence Address (Application): This form is
nearly identical to the current PTO/SB/122. The instruction as to who may complete
and sign the PTO/AIA/122 has been updated for consistency with the changes to
37 CFR 1.33.

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JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0035
(continued)


PTO/AIA/123: Change of Correspondence Address (Patent): This form is nearly
identical to the current PTO/SB/123. The instruction as to who may complete and sign
the PTO/AIA/123 has been updated for consistency with the changes to 37 CFR 1.33.
Changes in Burden
The proposed addition of these seven forms will not result in a substantive change in
the burden for this collection. The seven new forms proposed to be added to this
collection require only information that is currently collected via this collection (e.g., via
forms PTO/SB/80, PTO/SB/81, PTO/SB/122, PTO/SB/123).

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