Delay in Filing a Power of Attorney(POA): Does it Prejudice a Patent Application?


A quick query for our readers in the know:

Although the Indian patents act requires the filing of a power of attorney (POA) along with the patent application, my understanding is that this can be filed at a later stage as well. And attorneys routinely file this later (after date of filing the application). Is this correct?

Do our readers know what the global practice is in this regard? Do the USPTO, EPO, JPO etc require the power of attorney to be filed on the date of filing of the patent application or later? Or are they generally lax about this and do they permit a later filing (or does their statute or other notification etc permit such later filing of the POA).

And does the same position apply with respect to trademark filings as well?

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

29 comments.

  1. AvatarChirag Tanna

    Each country permits a late filing of the power of attorney, especially because of the procedural requirements laid down to execute a power of attorney for a foreigner to file in a specific country. Filing dates are crucial, and they cannot be delayed, for such matters as filing a power of attorney, whose time stamp is of no significance. A power of attorney is executed by an assignee or an applicant, and they may change hands from time to time what with mergers and acquisitions and sell-buy of firms happening. So, new assignment deeds are created in those instances. And the old authority of power taken off record as the new one replaces it.

    Reply
  2. AvatarD.Bheemeswar

    I do not think so, it can be submitted at the time of exmination also, while it is mandatory for the attorney to show this assignment deed by the inventors. As per rules of the patenting procedures it should be along with the filing the application. As the examination takes later dates and continues for prolonged periods, during which period there shall be some changes either in the specification or claims are allowed so there are no infringement cases. Of course there is no hard and fast rule for this power of attorney deed.

    Reply
  3. AvatarManish Garg

    Generally, when filing a patent or trademark application, it is necessary to submit power of attorney along with the application itself. This is true for India, however while filing PCT application, now it is no longer required to filed power of attorney which was earlier required. But in India, this procedure still holds valid, even in countries like US, EP and JP.

    Reply
  4. AvatarR S PRAVEEN RAJ

    Power of attorney is suppossed to be filed along with the application (or attach a copy of General Power of Attorney). However the Controller can exercise his power under Rule 137 of the patents Rules 2003 for rectifying the irregularity on a petition with the presecribed fee.

    Reply
  5. AvatarAnonymous

    I am an Examiner of Trade Marks working in New Delhi.At the meeting with C.G. on 10th June 2009the issue on filing of power of Attorney at the time of filing of application was discussed. C.G. is very adamant in saying that ‘there should be no examination and issueing of search report for the application which does not have PoA.’
    Second thing is that, Can a power holder (donee) re delegate the same to any other? C.G. is insisting that there should no further delegation. But, most of the Law firm are following the practice that getting the power from the applicant/company in favour of some of the attorneys working in the Law firm and subsequently when the matter comes up for hearing before the registry and the attorney, who had worked in that Firm and whose name had been mentioned in the Power deed, might have left firm. So the Law firm used to provide a authorisation letter engaging a new attorney whose name is no where mentioned in the Power of Attorney Deed.
    Of the two issues the second one is exactly correct what C.G. is insisting. Because the basic principle behind the Power of Attorney is “Delegata protestas non protest deligari”.
    The first issue can be rectified by following the procedure what is being followed in Courts.That is to say the incomplete application should be returned and be informed to be complied with within a specific period.
    In trade marks registry, advocates and agents used to file application with PoA, without PoA, with less valued Stamp duty, without stamp duty,photostat copy of PoA.
    So, in procedural aspect application without PoA act as a big hurdle in the smooth administration.To avoid such things C.G.’s suggestion is correct and will be helpful.
    Will any court of law take up a matter which has been filed by advocate without vakalatnama?

    Reply
  6. AvatarARA

    A late filing of POA does not prejudice a patent application as such.

    Besides one is not required to request extension of time and pay fee for the same in order to file a duly executed POA. At least once I filed POA (but not in India) close to the deadline of putting the application in order for grant and was promptly issued with a notification from the patent office acknowledging the receipt of it.

    In cases of change in agents prosecuting a patent application, the relevant patent office would not know of the change in the agent and address for service, where applicable, and therefore the patent office will continue to send correspondences, including reminders to renew patents in case of granted patents, to the agent already registered with them, which may lead to a loss of critical deadline if such correspondences go unnoticed by the other agent as well. This is especially true where the relevant patent office issues reminders such as reminder for renewing patents so it I believe that it is in the interest of the patent applicant / proprietor to ensure a timely filing of POA with the relevant patent office.

    A prudent practice would therefore require that such a requirement is foreseen, at least where possible, and met with in time.

    Certain patent offices do not require signatures of the relevant parties and allow representative agents to prepare and file a prescribed form on behalf of them, eg Singapore.

    Reply
  7. AvatarShamnad Basheer

    Thank you so much for all your comments. I tend to agree with the comments of the trade examiner. As with a law suit which cannot be filed without a POA, so too trademark and patent applications should be filed with respective POA’s.

    Of course, in cases of emergency, this can be dispensed with. However, the rule ought to be that a POA should be filed with the application. Else the application must be returned. However, this rule must be a written one and communicated to all patent and trademark attorneys and to the public.

    Reply
  8. AvatarAnonymous

    Dear Shamnad,

    I have gone through all the discussion above. I tend to agree with the views mentioned by one of our trademark examiner, specifically the general practise of law firms of redelegating the PoA.

    My query states that if an applicant has filed the application on his own and at the time of hearing if he would like to hire a lawyer to argue his case in front of reigstry, will that be permissible. No law says that the application should be filed with poA, applicant on his own can also file the application.

    If the PTO starts returning the application in absence of poA or it is made compulsary then what about the applicants who cannot bear the cost of hiriring attorneys at the initial stage.

    Regards,

    Reply
  9. AvatarShamnad Basheer

    A dear friend of mine, Monica Datta of Luthra and Luthra writes (in her personal capacity):

    “With respect to trademark filings in India, a power of attorney may be filed subsequently.

    The Act does not explicitly states that a POA is required to be filed along with the application. The application form may be signed by the applicant itself or a ‘duly authorised agent’ of the applicant. The authorization of the agent is done through execution of Form TM-48 or any other form which the Registrar may consider proper and appropriate (Section 145, Rule 21).

    The Registrar routinely raises objections in the examination reports issued by the Trademarks Office prior to the advertisement of the marks regarding filing of POA’s and calling upon the applicant’s agents to file the same.

    Not sure of the legal position globally, but in all cases law firms as a matter of rule ask for POA’s authorizing them prior to filing. But this could well be for abundant caution and because it is in any case required subsequently rather than because of a legal compulsion.”

    She then adds on the above in a subsequent email:

    “On the filing, if you look at the Form TM-1 prescribed under the Trademark Rules you will note that Footnote 10 refers to ‘Signature of the applicant or his agent (legal practitioner or registered trade marks agent or person in the sole and regular employment of the applicant (See Sec. 145)’.

    Section 18(1) which is the prescribed section for the purpose of filing (Form TM-1) does not state any requirement regarding the POA rather it only states that any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. The prescribed manner would take you to Form TM-1 under the Rules which will then take you to Footnote 10 above.

    Section 145 relates to Agents and states that under the Trademarks Act, any act (other than making of an affidavit) may be done by any person by himself or by a person duly authorised in the prescribed manner, who is (a) a legal practitioner, (b) a person registered as a trade marks agent or (c) a person in the sole and regular employment of the principal.

    Under the Act, Rule 21 prescribes execution of Form TM-48 or any other form as the Registrar may deem sufficient and proper for the purpose of authorization for an agent under Section 145. Form TM -48 or an appropriate POA is required to be filed typically along with the filing of the application.

    However, the point is that it is not mandatory to file the POA at the time of making the application. Ideally the POA should predate or at least be of the date on which the application is filed to ensure that at the time of making the applicant the agent had the authority to do so.

    To my mind, there would be nothing stopping a person even giving a subsequent authorization to an agent ratifying the acts of the agent since the general rule is that substantive rights cannot be defeated on account of technical defects. However, I would need to read the general law on authorizations for that. In any case, filing of the POA is a procedural requirement and in absence of any explicit provision requiring filing of the POA at the time of filing of the application, barring any subsequent filing would not be within the bounds of law.

    Like I mentioned before, the Registrar regularly calls upon applicants to file POA’s at the stage of examination of an application. Even if the applicant fails to file the POA at most the Registrar may delay the application for want of non fulfillment of a requirement however, the Registrar on this ground alone cannot stop the registration process or refuse to take the same on record subsequently.”

    Reply
  10. AvatarShamnad Basheer

    Thanks very much Monica,

    From your response, it would appear that there is nothing wrong with the CG passing an order barring this subsequent filing of the POA. Since the act does not clearly spell out when a POA is meant to be filed. Rather, as you suggest, it merely states that the application form may be signed by the applicant itself or a ‘duly authorised agent’ of the applicant.

    I like your point on general agency rules—you’re right that under general legal principles, a principal can always ratify earlier acts of the agent.

    So under existing norms, it is perfectly legal to submit a late POA. However, if the CG issues a written notification mandating synonymous filing of the POA with application, this will have to be adhered to. And the trademark and patent application filing process would mirror what happens whilst filing law suits.

    Of course, in emergency situations, the office ought to grant some latitude to the lawyer. And as Praveen Raj suggests, the Controller can exercise his power under Rule 137 of the patents Rules 2003 for rectifying the irregularity on a petition with the prescribed fee.

    Reply
  11. AvatarAnonymous

    Thank You Mr.Shamnad Basheer for agreeing with my(Trade Marks Examiner on contract basis) comments.
    Herewith i take it to your knowledge and to initiate a debate on “Can a hearing officer without having legal qualification (L.L.B)take hearing?”
    It is happening in Indian Trade Marks registries. All the contract examiners even though qualified and with the backing of legal qualification are not allowed to take hearing. But the official who have been promoted (from Asst.,LDC.,UDC.,) to Examiner on regular basis are allowed to take hearing and make the applications ABA.
    Please initiate a debate.

    Reply
  12. AvatarARA

    Not all jurisdictions require filing of POA for TM and Design filing. POAs or equivalents are filed when there is a change in the agent.

    Reply
  13. AvatarARA

    Practically speaking, POAs or its equivalents serve the following:

    1. notify the patent office of address for service so that the patent office can direct its correspondences to it

    2. notify the patent office of the name and address of the representatives

    3. puts everyone’s records in order, whereby everyone involved or interested in the subject matter is duly informed of the relevant details

    4. Finally, the above brings a lot of certainity to the system

    so a timely filing of POAs or equivalents should be favoured…but the requirements should not be so harsh that it come in the way of obtaining a valid filing date.

    Reply
  14. AvatarPrasad

    Insisting on the POA at the time of filing of Applications could lead to a lot of practical difficulties to the Applicants and the Attorneys.

    For example, let us see how a National Phase Application through the PCT route is filed in India.

    An Applicant (typically, let us say a company in the US) would have a US law firm handling this. The US law firm contacts a law firm in India sometime near the 31 month deadline. If the law firm in India has already done some work for the US company (as distinct from the US law firm), a GPOA could be already existing (Note that an earlier Form 26 won’t be useful) and filing can proceed without delay.

    However, if a POA has to be obtained from the US company, it takes a long time and may prevent the filing itself as the 31 month deadline cannot be extended under any provision.

    It may also be noted that even for filing Proof of Right of the Applicant to make the Application (assignment etc), 6 months from the date of filing has been provided.

    Therefore, a similar period (from the date of filing) may be specified for filing POAs/other documents.

    Reply
  15. Avatarmonika

    EPO does not require authorisations to be submitted by European Patent Attorneys who are on the list of auhtorised representatives. However, if a legal representative (such as a UK solicitor) wants to represent a party at the EPO then an authorisation is needed. However, the EPO may require any representative to provide evidence of authorisation – this is generally relevant in case of transfer of rights or in opposition proceedings where authorisation may not be clear.

    USPTO requires the inventors ( who are applciants in the US) to sign a POA but this can be submitted after filing an application usually in response to a notice to file missing parts.

    I believe the Japanese patent office also does not need a POA ( have not come across one in national pahse filings in Japan)

    Reply
  16. AvatarARA

    Singapore scenario:

    TM and Design applicants in Singapore are not required to file a separate form appointing their agents at the time of filing their applications with the respective registries, rather the main form itself requires applicants to provide address for service in Singapore. The name and address mentioned therein are taken as that of authorised representative. So there is no separate form to that effect, and therefore no fees either – the system works well both for the applicants as well as for the office, and for those preparing the paperwork for the purpose of filing. One needs to file a separate form only when there is a change in the agent or while representing parties during litigation – it is a real win-win scenario 🙂

    Reply
  17. AvatarARA

    and, for patent applications in Singapore, applicant’s instructions to a agents are taken as the applicant’s authorization of the agent to represent them at the Registry of Patents and upon receipt of such instructions, the contacted representatives may appoint themselves as the applicant’s agents by way of preparing, signing, and filing a prescribed form (Patents Form 41) on behalf of the applicant with the Registry of Patents.

    Representatives, subject to payment of a small fee, need to file the form on the first occasion when representing the applicant in a particular matter. The prescribed form is quite flexible allowing the applicants to use it the way they want: practically speaking the applicants can appoint different agents for different stages or aspects of work. The form includes provision for providing address for service. Though main form too includes name and address of the representative.

    Reply
  18. AvatarIndianIPR.com

    Shamand

    This is in reply to issues raised by Anon (Patent Examiner). Especially the C G Views that there can be no further delegation and the maxim quoted by him:

    1. Order 3 rule 4 (5) CPC deals with the power of the pleader to appoint another pleader to prosecute the case before court.

    2. Chapter V Rule 1 of the Delhi High Court Rules specifies the rights of a pleader appointed by a party.

    3. The Delhi High court in Berjesh Goyal & Anr Vs Daily Foods (India) decide on 30.01.2009 has ruled as follows:

    Manmohan , J

    ” this Court is of the opinion that there is no bar on a Pleader duly authorized by a party under a vakalatnama to engage another pleader to plead the case on his or her behalf. The power to “plead” would include within its scope and ambit, the right to examine witnesses, to conduct admission & denial, to seek adjournments and to address arguments etc., as may be authorized. Such pleader however would not have the power to compromise a case, withdraw a case or do any other act which may compromise the interest of his or her client. In procedural matters it is not only expedient but also in the interest of speedy delivery of justice that young lawyers who work with pleaders duly authorized by clients are permitted to appear in matters. This is necessary for speedy disposal of cases and also as an encouragement to the younger professionals who are in the initial /formative years of practice. [Para 9]”

    4. In view of the above legal position the maxim quoted will not be applicable.

    5. The last question proposed and formulated …… will the court allow any pleader without vakalatnama………., is also answered in the above stated Delhi HC judgement.

    6. In view of the legal position, let the CG formulate a clear guidelines in this regards so as to be easy for all. But the above stated provisions of law and rules as well above Delhi HC judgement, are clearly borne in mind.

    7. I am sure Shamnad CG, whom you refer as BULLET, will do the needful.

    Reply
  19. AvatarAshish

    Dear all,
    The actions taken by an agent are enforceable, even if he is only representing his principal without written Power of Attorney (POA). The principal can ratify the action from a retrospective date. This is per various case laws decided and under Power of Attorney Act.
    Even the Form 26 of Indian Patents Act, also indicates that “I hereby give assent to the action already taken by the said person in the above matter.
    Therefore Power of Attorney can be submitted later on, provided actions of grant are ratified from retrospective date.
    As per my knowledge, I understand, however the system in USA, whenever any POA is revoked or assigned to another agent, that earlier agent has to be informed.

    Ashish Sharma

    Technical Adviser ( Patents)
    Global IPR Law Consultants (India)

    Reply
  20. AvatarSy

    Dear Shamnad or others

    I am sorry for asking such a naive question. I am neither a patent agent nor have any law background, but someone who aspires to be.

    If you file F-26(form of authorization of patent agent) is it not sufficient? Do you still need to file POA? I think both of them have the same purpose? I shall be thankful if someone clarifies.

    Reply
  21. AvatarPrasad

    With Shamnad’s permission, I will state that everyone should be free to ask any questions that they may have. That is the whole purpose of having discussions. There is no need to be apologetic.

    As far as I know, Form 26 is used for “A matter or Proceeding”. A General POA can be executed once and used for any number of matters, again and again.

    Now I have my own question to ask:Can we word Form 26 to do what a GPOA can do? Has somebody done that ever?

    Reply
  22. Avatarnish154

    First the answer to Sy’s quetion. Dear Sy, form 26 and POA is one and the same thing..However, if the applicant is a foriegner, you need to gt the form 26 (or POA) stamped and where the applicant is indian, you need to prepare the form 26 (POA) on a stamp paper of appropriate value.

    Now to quetion of “Prasad”, we attended the meeting taken up by the Technical HEad at PO to discuss some of these issues related to POA in which one point of concern was whether GPOA are legally allowed at all (though many law firms still follow it). There’s nothing mentioned in the Act about allowing (or even not allowing) GPOA but the CG has concerns regarding that. He wants POA to be case specific (as in Form 26). Prasad, i don’t think you can change the format of form 26..We can’t (and infact should not) use arbitrary standards…this could create a lot of discrepency in the system.Afterall, we also have to take care of the proper functioning of the PO system.

    I was searching through the Act to find out if its mentioned somewhere that POA can be filed anytime until the final date (as is the general practice) but i could not find any such instance. Ideally, PO is right in every way to ask for POA but that can’t be equated to a vakalatnama (i feel). Here the clients are usually foreign and it takes time to get the POA from them. Moreover process of stamping takes time. PO must take into consideration such factors and then set up a suitable timeline for filing the POA.

    Reply
    1. AvatarSrinivas

      Is it mandatory to file form-26 (Giving authorization with-in the company to a particular person) on a stamp paper?

      I have seen many cases where applicants filed on a plain Form-26 (with out stamp paper).

      Can you pl clarify.

      Reply
  23. AvatarAnonymous

    Thank you for all your comments. Where do you get the stamping of TM-48 of international marks done that are proposed to be used in India. I note from one comment that Indian TM-48’s can be taken on a stamp paper. Please advise.

    Reply
  24. AvatarAnonymous

    Will some one advise the value of stamp paper required for Form 26 (POA)? And how much value of stamp is required to be put, incase the applicant is a foreigner?

    Same are my question with regard to Form 21 (POA) wrt Design Application under Section 43 of Design Act. The form itself says – to be stamped under the Indian Stamp Act.

    One of my friends filed for a patent last week with POA on plain paper. I suppose, he can still submit the POA on stamp paper without his application being affected.

    Please advise.

    Reply
  25. AvatarAnonymous

    Yes, the questions posed by above Anon are pertinent. I have been myself searching for the answers to these questions for about 6 months now. I made an inquiry with the Indian Patent Office some weeks ago. The Examiner on the other end told that he himself was not aware but advised that I could feel free to put up a stamp paper of any value upto Rs. 100/-. He also added that IPO does not reject the applications on account of such shortcomings. But it is good to know what needs to be provided as per law. Perhaps the answer lies in Indian Stamp Paper Act. Any advice?

    Reply
  26. Avataryunus

    as per Indian stamp act,STAMP value may be used from Rs 20 to 50. But Rs.50 is can serve general purpose. 2ndly…power of authority can be of any formate mentontioning basic ingredients of the Form-26/TM-48 as envasiged within the form that could clearly identify the person authorized, person giving authority and subject matter to be authorized. POA can be filed on or after filing date of applicaton but one should retify the act done. Sub delegation can be done by the attorney if he has power in that respect. Morover, in business transaction delegation of authority is very common for distribution of task.

    Reply
  27. AvatarAnonymous

    As discussed above and asked, I think it will be good and helpful to all if I quote here rule 135, the patent act, which states-“The authorization of an agent for the purposes of the Act and these rules shall be filed in Form 26 or in the form of a power of attorney within a period of three months from the date of filing of such application or document, failing which no action shall be taken on such application or documents for further processing till such deficiency is removed.”

    Reply
  28. AvatarAnonymous

    “nishi154” explains very well about Form26 and POA being the same. It is mentioned that if the applicant is a foreigner, you need to get the form 26 (or POA) stamped and where the applicant is Indian, you need to prepare the form 26 (POA) on a stamp paper of appropriate value.

    Can someone answer my following queries?

    What is the exact procedure to be followed if the applicant is a foreigner, say from New Zealand and want to retain a Patent Agent in India for filing his invention in India? Does he need to get his authorization validated by any authority in NZ before sending the same to his Patent Agent in India? How does the Patent Agent get the document stamped and for what value?

    Reply

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