Patent Law

USPTO Reivises Procedure for Withdrawing from Patent Applicant Representation

By William F. Heinze

Starting May 12, 2008, the U.S. Patent and Trademark Office (Office) has revised its procedures for handling requests to withdraw from representation by a practitioner of record in a patent application. Under the revised procedure, the Office will no longer require that there be at least 30 days between approval of the request to withdraw as a practitioner of record (Request) in a patent application and the later of the expiration date of a time period for reply or the expiration date of the period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a). Instead, pursuant to 37 CFR 10.40, the Office will require the practitioner(s) to certify that he, she or they have:

1. given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner(s) intends to withdraw from employment;
2. delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and
3. notified the client of any replies that may be due and the time frame within which the client must respond.

The Request for Withdrawal As Attorney or Agent and Change of Correspondence Address (Form PTO/SB/83) will be changed to provide a section wherein practitioners may certify the completion of the above-listed activities necessary for the request to withdraw from representation to be granted. The failure to do so may subject the practitioner to discipline. See, e.g., In re Hierl, http://www.uspto.gov/web/offices/com/sol/foia/oed/disc/D2006-19.pdf.

Certain exceptions, however, may exist. For example, a practitioner requesting to withdraw because they have been terminated by the client may not be required to certify to above item (1). However, if the practitioner cannot make all of the certifications, an explanation detailing why the certification cannot be made must be included with the Request.

Provided the Request is filed prior to the expiration of a time period for reply or the expiration date of the period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a), the Office will review the Request and render a decision. However, any Request that is filed after an application is abandoned or after a patent has issued will be placed in the application but generally will not be treated on the merits.

The Office will also no longer accept address changes to a new practitioner or law firm filed with a Request, absent the filing of a power of attorney to the new representative. The Form PTO/SB/83 will be modified to indicate that the Office will only accept changes to the most current address information provided for the assignee of the entire interest who properly became of record under 37 CFR 3.71 or, if no assignee of the entire interest has properly been made of record, the most current address information provided for the first named inventor. This change has been made in order to avoid subsequent correspondence being directed to an incorrect address or to a practitioner who has not been appointed as practitioner of record by the applicant.

According to the Notice,

On many occasions, the submitted Requests provided either no reason requesting
withdrawal or a reason that did not conform with 37 CFR 10.40(b) or (c). The practitioner requesting withdrawal as the practitioner of record from an application often requested a change of address to either a law firm whose practitioner(s) had not been appointed by the applicant or assignee in accordance with 37 CFR 1.32(b) or to an assignee who had not established ownership and the right to take action in accordance with 37 CFR 3.71. The Office also has been unable to approve requests because less than thirty (30) days remained between approval of withdrawal and the later of the expiration date of a time period for reply or the expiration date of the period which could be obtained by a petition and fee for extension of time under 37 CFR 1.136(a). For these reasons, the Office has decided to modify its procedures.

Full post as published by I/P Updates on March 18, 2008 (boomark / email).