Effective May 12, 2008, the USPTO changed its procedure for handling requests for withdrawal from representation in patent applications. The procedure was published in the Official Gazette on April 8, 2008 (1329 O.G. 99). 

Under the new procedure, the USPTO will no longer require that there be 30 or more days between approval date of the request to withdraw and the date a response is due, taking into account possible extensions of time, but the practitioner will be required to make three certifications. 

In particular, the practitioner must certify that he or she has: 

1) given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner 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 (see revised USPTO Form PTO/SB/83). 

The basis for the new procedure is 37 C.F.R. § 10.40(a), which prescribes that a practitioner requesting to withdraw as attorney or agent of record in a patent application must take "reasonable steps to avoid foreseeable prejudice to the rights of the client, including giving due notice to his or her client, allowing time for employment of another practitioner, delivering to the client all papers and property to which the client is entitled, and complying with all applicable laws and rules." 

According to the notice, failure of the practitioner to comply with the requirements (1), (2) and (3) above may subject the practitioner to discipline. In other words, if a request fails in any one of the certification requirements without an explanation, the request will be forwarded to the Office of Enrollment and Discipline for investigation. 

The import of the certifications is clear. Under the first certification, prior to submitting the request for withdrawal, the client must be given notice of intent to withdraw. The notice must be given prior to the due date of the response to any action by the USPTO and the notice must clearly indicate the practitioner's intent to withdraw. 

Pursuant to the second certification, prior to submitting the request for withdrawal, all papers and property of the client must have been delivered to the client. It is important to note that this requirement would appear to preclude a practitioner from exercising any retaining lien that may be permitted under state law. The papers and property to be returned include any unearned fees (should be held in a trust account) and your office file for the client. 

A patent attorney must be careful to comply with the rules of the state in which he or she is licensed with regard to trust accounts and documents that must be returned to the client. Patent agents should follow the same practice as attorneys in the state in which they are practicing. 

While not explicitly set forth in the USPTO disciplinary rules, the Office of Enrollment and Discipline expects patent agents to conform to the same rules regarding trust accounts for documents that must be returned to the client. 

Any notes and/or attorney work product can be removed from the file, but any original correspondence to and from the client or his or her representative and to and from the USPTO belongs to the client. It would be prudent to keep a copy of the file before sending the file to the client in case the Office of Enrollment and Discipline initiates an investigation. 

As for the third certification, before a request for withdrawal is filed, the client must be informed of the “time frame within which the client must respond.” 

The notice does not specifically state what information must be conveyed to the client. However, at a minimum, the client should be informed prior to filing the request for withdrawal of: 

1) the due date of the response; 

2) what must be filed (e.g., arguments traversing rejections in the USPTO action, any amendment, and, where necessary, a petition for an extension of time); 

3) any government fees that are due and must be paid when filing the response; and 

4) the consequences of failing to respond to a USPTO action (e.g., abandonment of the application). 

In addition to the required certifications, the request for withdrawal must include a reason for withdrawal. The USPTO disciplinary rules provide for two types of withdrawal: mandatory (see 37 C.F.R. § 10.40(b)) and permissive (see 37 C.F.R. § 10.40(c)). 

Mandatory withdrawal is required where: 

1) the practitioner knows or it is obvious that the client is initiating action for the purpose of harassing or maliciously injuring a person; 

2) the practitioner knows or it is obvious that the practitioner's continued employment will result in a violation of a disciplinary rule; 

3) the practitioner's mental or physical condition renders it unreasonably difficult for the practitioner to carry out the employment effectively; or 

4) the practitioner is discharged by the client. 

A list of reasons for permissive withdrawal is set forth in 37 C.F.R. § 10.40(c). However, it would appear under the new procedures that the withdrawal will be automatic provided one of the reasons given in 37 C.F.R. § 10.24(c)(1) to (c)(6) is cited and the requisite certifications can be made. 

It should be noted that, if the reason for withdrawal is pursuant to 37 C.F.R. § 10.24(c)(6), which provides that a practitioner may seek to withdraw because the “practitioner believes in good faith, in a proceeding pending before the Office, that the Office will find the existence of other good cause for withdrawal,” the new procedures require the practitioner to explain the basis for this reason in the request for withdrawal. 

In any event, “[i]f the reasons for withdrawal do not conform to one of the mandatory or permissive reasons set forth in 37 CFR 10.40, the Office will not approve the request.” 

The Official Gazette notice did note that certain exceptions may exist where situations in which not all of the certifications are necessary. For example, where a practitioner requesting to withdraw has been discharged by a client, the practitioner is not required to certify that the client has been notified of the practitioner's intent to withdraw. 

However, the notice was quick to point out that “if the practitioner cannot make all of the certifications, an explanation detailing why the certification cannot be made must be included with the [R]equest.” 

The notice further warned practitioners about potential violations of disciplinary rules 37 C.F.R. § 10.23(b)(4) and (b)(5) for “submitting a false certification.” 

The USPTO will act on the request for withdrawal provided it is filed prior to the expiration of a time period for filing a response to an action, taking into account the filing of petitions for extension of time. However, if the request is filed after the application is abandoned or after a patent has issued, the request will be placed in the application, but will not be treated on the merits. 

According to the notice, the only exception to a request on being treated “will be a revocation and power of attorney accompanied with a petition to revive.” Traditionally, when files are transferred to new counsel, new counsel files a revocation and new power of attorney with the USPTO. 

However, the Office of Enrollment and Discipline takes the position that 37 C.F.R. § 10.40(b) mandates that when a practitioner’s employment (i.e., engagement) is terminated by a client, the practitioner is required to file a request for withdrawal even if the file is being transferred to new counsel. The Office of Enrollment and Discipline regards the failure to do so as a violation of disciplinary rule 37 C.F.R. § 10.40(b). 

With respect to any withdrawal, if the practitioner continues to receive communications from the USPTO regarding the client’s application(s), these communications must be forwarded to the client. 

Failure to do so could subject the practitioner to discipline under 37 C.F.R. § 10.23(c)(8): “[f]ailing to inform a client or former client or failing to timely notify the Office of an inability to notify a client or former client of correspondence received from the Office or the client’s or former client's opponent in an inter parties proceeding before the Office when the correspondence (1) could have a significant effect on a matter pending before the Office, (2) is received by the practitioner on behalf of a client or former client, and (3) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified.” 

Finally, under the new procedures, the USPTO will no longer accept correspondence address changes from a practitioner unless the practitioner has a power of attorney in the application or the request for the change in correspondence address includes a power of attorney from the patent applicant or the assignee of the entire interest. 

Also, the USPTO will only accept changes to the most current address of the assignee of the entire interest of the application who properly became of record under 37 CFR 3.71 or, if the application is not assigned, the most current address of the first named inventor. 

The USPTO noted that it will continue to accept fee address and correspondence address changes after a patent has issued for purposes of directing correspondence related to maintenance fee payments or other correspondence after issuance. 

The notice warned practitioners that a practitioner who has not been given a power of attorney in an application, but is only representing a patent applicant under 37 C.F.R. § 1.34, should not request withdrawal because the practitioner is not regarded as an attorney of record. 

The notice cautioned practitioners to verify that they are an attorney or agent of record before filing any request for withdrawal. Requests submitted by practitioners not of record will be forwarded to the Office of Enrollment and Discipline for investigation. 

The new procedure set forth in the Official Gazette notice applies only to national applications. The procedures do not apply to trademark applications or to international applications which are governed by separate rules. 

Practice Tip 

In order to avoid a possible investigation by the Office of Enrollment and Discipline: 

1) practitioners who are not of record in a patent application must not submit requests for change of correspondence address; 

2) practitioners who are of record and requesting withdrawal and change in correspondence address must use the current address for the assignee or the first named inventor; and 

3) practitioners who are of record and requesting withdrawal are cautioned about making false certifications or not explaining why a certification need not be made.