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2804    Representative of Patent Owner [R-11.2013]

Where an attorney or agent files a request on behalf of a patent owner, he or she may act under a power of attorney under 37 CFR 1.32, or in a representative capacity under 37 CFR 1.34. In order to act in a representative capacity under 37 CFR 1.34, an attorney or agent must provide his or her registration number, name, and signature. In order to act under a power of attorney from a patent owner, an attorney or agent must be provided with a power of attorney by the patent owner. Pursuant to 37 CFR 1.32(c) a "power of attorney may only name as representative" either one or more inventors or registered patent practitioners. Thus, an attorney or agent representing a patent owner must be a registered patent practitioner. A patent owner may not be represented during a supplemental examination proceeding or any resulting ex parte reexamination proceeding by an attorney or other person who is not registered to practice before the Office.

Any correspondence from the Office will be directed to the patent owner at the address indicated in the file of the patent for which supplemental examination is requested, pursuant to 37 CFR 1.33(c), regardless of the address of the person filing the request. If the patent owner wishes the Office to direct correspondence regarding the supplemental examination proceeding to an address other than the official correspondence address of record in the file of the patent, then the patent owner must file a change of correspondence address in the file of the patent. A change of correspondence address should also be filed in the supplemental examination proceeding. See MPEP § 2805.

2804.01   Withdrawal of Attorney or Agent [R-11.2013]

For a practitioner to withdraw from representation in a patent, supplemental examination proceeding, or a reexamination proceeding, the Office no longer requires that there be at least 30 days remaining in any running period for response between the approval of a request to withdraw and the expiration date of any running period for response. Instead, pursuant to 37 CFR 11.116(d), a practitioner must take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. “Reasonable notice” should allow for a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period. When the correspondence address changes as a result of the withdrawal, the withdrawing practitioner(s) must request that the Office direct all future correspondence to the patent owner of record. Practitioners may do so by specifying either the correspondence address of the patent owner, or the address associated with the Customer Number of the patent owner. Withdrawing practitioner(s) cannot change the correspondence address to the address associated with the Customer Number of another law firm, or to any address other than that of the patent owner of record. See MPEP §§ 402.06 and 2805.

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Last Modified: 03/27/2014 10:10:35