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Change in Procedure for Requests to Withdraw from Representation In a Patent Application.

Posted in Practice Commentary by Jake Ward on March 18, 2008

The USPTO is revising its procedures for handling requests to withdraw from representation by a practitioner of record in a patent application.  See the official notice here.

Under the revised procedure, the Office will no longer require that there be at least 30 days between a) approval of the request to withdraw as a practitioner of record in a patent application, and b) 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.  Instead, the Patent Office will require the practitioner to certify that he/she/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 failure to do so may subject the practitioner to discipline. See, for example, In re Hierl where a practitioner was suspended from the practice before the USPTO for three months for performing work without approval of the client, not handing over files to a new firm as requested, and improperly continuing to represent the client following termination thereby.

The Patent Office will also no longer accept address changes to a new practitioner filed with a Request, absent the filing of a power of attorney to the new representative.  Form PTO/SB/83 will be modified to indicate that only changes to the address information provided for the assignee of the entire interest, or the address information provided for the first named inventor, will be accepted. The Patent Office hopes that this will 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.

The change in practice becomes effective May 12, 2008.  Appropriate sections of the Manual of Patent Examining Procedure (MPEP) will be revised in due course.

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