[Patentpractice] PoA/Representation of licensee and licensor?

Wed Jun 11 19:34:13 UTC 2025

This forum is so valued!  It would have taken a LOT of time to track all this information down.

I agree that single-applicant representation is the preferred way to go, albeit more work than a normal owner-assignee representation.  Based on the responses, it seems a preferred practice will be to:

  *   Obtain and record one-pager license summary specifically memorializing Licensee’s right to prepare, file, prosecute, defend, etc. (as covered by the license), to make public record of “sufficient proprietary interest”
  *   Obtain from Licensor a signed agreement acknowledging Firm’s representation only of Licensee for patents and technology specified in the license agreement and that Licensee has opportunity to obtain independent counsel, etc.
  *   Revise PCT application(s) to reflect Licensee as applicant.  My understanding of Paris Article 4 is such that the license agreement’s grant of rights to Licensee should, in this instance, serve as sufficient evidence that licensee is a Successor in Interest for purposes of claiming priority to foreign applications.
  *   Obtain PoA from Licensee
  *   Identify Licensee as applicant (one having sufficient proprietary rights) in any existing and all new U.S. applications claiming priority to Licensor’s PCT and foreign applications.

-Jim

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Hricik via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Wednesday, June 11, 2025 at 8:35 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Hricik <david at hricik.com>
Subject: Re: [Patentpractice] PoA/Representation of licensee and licensor?
What Rick said, and leaving client identity unclear invites a long one.

David Hricik

On Jun 11, 2025, at 11:28 AM, Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com> wrote:

"claims relating to the Patent Rights [i.e., full interest in several existing foreign patents]."  Reading between the lines, there is the possibility that you are taking responsibility for applications in their international phase or even before an international filing. If so, beware of switching applicants, and see 1.46(b)(" person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).").  And, if the international phase claims Paris priority to an earlier filing, beware of diversity of the applicants under Paris article 4C.(4), PCT article 8(2)(a).

 Regarding your question, though, I think a joint representation is an ethics nightmare.

Rick

On Wed, Jun 11, 2025 at 10:11 AM David Boundy via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
I agree with Roger with a small modification.  You could do it either way --
     -- either a joint representation engagement letter, joint Power of Attorney, all the encumberments of a joint representation.
     -- a sole party representation, specifically called out in the engagement letter.
Either way works.  The former will by yucky and inefficient for the rest of time until the patent expires.  The latter will be a pain in the neck in the short term, then smooth sailing.

But the practical implementation of the second one is kinda tricky.  How to designate "applicant" so that an appointment from an assignee is sufficient "person who otherwise shows sufficient proprietary interest in the matter" so that the PTO will recognize you?  I suggest a one-pager from the owner/licensor that basically reiterates the  “be responsible for and shall control the preparation, filing, prosecution, protection, defense and maintenance of all claims relating to the Patent Rights [i.e., full interest in several existing foreign patents] licensed hereunder which are solely applicable to the Field of Use (“Licensee Claims”).” language.  Your licensee wants to record the interest somehow.   So:
    1. get a one-pager parallel to the usual one-page short-form assignment that you get for recording purposes to avoid recording the full agreement.  This one-pager shoudl include the license, any limits on revocation, and the power to control prosecution (that is, all teh terms favorable to your client that you don't want the licensor to renounce).
    2. Get the licensor's signature on that, record it.
    3. Get the Power of Attorney from your licensee.
    4. Change "applicant"  (which typically requires the Change of Applicant, Notice of Recordation, 3.73 Statement, and Power of Attorney filed as a single filing).

On Wed, Jun 11, 2025 at 9:48 AM Masson, Roger M. via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Jim,

I haven’t had this situation in patent prosecution but the representation agreement should spell out that you do not represent Licensor assuming you decide to represent only Licensee, which I would be inclined to go with to avoid issues when the parties disagree on something.

Roger
Masson
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Hinshaw & Culbertson LLP
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, June 10, 2025 10:04 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Jim Larsen <jim at larsen-ip.com<mailto:jim at larsen-ip.com>>
Subject: [Patentpractice] PoA/Representation of licensee and licensor?

Dear Listmates, I have a question of first impression (for me) regarding power of attorney. A new client (Licensee) has, by license agreement, agreed to solely “be responsible for and shall control the preparation, filing, prosecution, protection,
Dear Listmates,

I have a question of first impression (for me) regarding power of attorney.

A new client (Licensee) has, by license agreement, agreed to solely “be responsible for and shall control the preparation, filing, prosecution, protection, defense and maintenance of all claims relating to the Patent Rights [i.e., full interest in several existing foreign patents] licensed hereunder which are solely applicable to the Field of Use (“Licensee Claims”).”  Note: Licensor is currently a part owner of Licensee.

The agreement also requires that Licensor have a chance to review the text of each patent application “relating to Licensee Claims” before filing, and “Licensee shall give Licensor the opportunity to provide comments concerning the preparation, filing, prosecution, protection, defense and maintenance of the Licensee Claims, and shall give reasonable consideration to such comments….”

Acknowledging the potential breadth of “relating to” language, the license agreement was reportedly hard-fought, was executed before we got involved, and is not likely to change.  So, my question regards power of attorney and (joint?) representation.  I think we needn’t represent the Licensor, and Licensor’s “opportunity to provide comments” does not necessarily require us to directly communicate with Licensor.  Is it nevertheless advisable to get POA and conflicts waiver from both Licensor and Licensee? Or, since Licensor is a part owner of Licensee, would POA from and representation of Licensee be sufficient?

I see these and other variations as each having pluses and minuses, but I bet some of you have dealt with a similar situation.  What works best?
Hinshaw & Culbertson LLP is an Illinois registered limited liability partnership that has elected to be governed by the Illinois Uniform Partnership Act (1997).

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