USPTO News: Change in Procedure for Withdrawing from Representation

    By Donald Zuhn --

The U.S. Patent and Trademark Office announced today that it will be changing its procedure for handling requests from a practitioner of record to withdraw from representation.  The Office also clarified its procedure for handling a request to withdraw from representation made by a practitioner who is not of record, but who has acted in a representative capacity under 37 C.F.R. § 1.34.

Under the Patent Office's revised procedure, the Office is replacing the requirement that there be at least 30 days between an approved request to withdraw and the latest extendable date for responding to a pending Action with a certification from the practitioner of record that the practitioner has:

(1)  given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner intends to withdraw;

(2)  delivered to the client (or the client's representative) 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.

If a practitioner cannot make all of the above certifications, the practitioner must include an explanation detailing why the certification cannot be made with the request to withdraw (e.g., a practitioner that has been terminated by the client may be unable to certify to item 1).

The Office noted that it would be changing Form PTO/SB/83 ("Request For Withdrawal As Attorney or Agent and Change of Correspondence Address") to include a section for making the above certification, and will be amending M.P.E.P. § 402.06 accordingly.  The Notice states that requests filed after an application is abandoned or a patent issues will be placed in the file, but generally will not be treated on the merits.  The Notice also states that in the absence of a power of attorney, the Patent Office will no longer accept practitioner address changes with requests to withdraw.  The revised procedure will take effect on May 12, 2008.

With respect to requests to withdraw from practitioners who are not of record, but are acting in a representative capacity under 37 C.F.R. § 1.34, the Patent Office noted that it will no longer approve of such requests.  The Office explained that such requests are unnecessary since the practitioner was only responsible for the correspondence the practitioner filed.

More information regarding the new procedure can be found in the Notice.