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|Top of Notices (389) December 25, 2012||US PATENT AND TRADEMARK OFFICE||Print This Notice 1385 CNOG 2990|
|Legal Procedures||Referenced Items (382, 383, 384, 385, 386, 387, 388, 389)|
(389) Practitioner's Responsibility to Avoid Prejudice to the Rights of a Client/Patent Applicant Under 37 CFR Part 10, a practitioner is responsible for taking reasonable steps to avoid foreseeable prejudice to the rights of a client/patent applicant. This responsibility exists in all circumstances including those where the practitioner is operating through a corporate liaison or foreign agent and has no direct contact with the client/patent applicant, who in most cases is the one being represented. This notice is intended to clarify the appropriate course of action for a practitioner to follow when the practitioner is operating through such a corporate liaison or foreign agent. In such arrangements, the registered practitioner may rely upon the advice of the corporate liaison or the client/patent applicant's foreign agent as to the action to be taken so long as the practitioner is aware that the client/patent applicant has consented after full disclosure to be represented by the liaison or agent. It will be assumed by the Patent and Trademark Office that the client/patent applicant has an agreement with the liaison or agent, arrived at after full disclosure, to be represented by the liaison or agent. Registered practitioners, if they wish, however, may maintain a copy of the agreement in this regard between the client/patent applicant and the liaison or agent in practitioner's file of the application or other proceeding before the Office. If there is, in fact, no such agreement between the client/patent applicant and the liaison or agent, the registered practitioner must communicate to the client/patent applicant. In circumstances where the practitioner is aware that there is an agreement between the client/patent applicant and the liaison or agent, the practitioner may fully rely upon the advice of the liaison or agent as to the wishes of the client/patent applicant. For example, if the registered practitioner is instructed by the client/patent applicant's liaison or agent to allow an application to go abandoned rather than to respond to an Office action within a set period for response, the practitioner may properly do so without any further notice to the client/patent applicant. It is assumed that withdrawal from employment by a practitioner will remain a relatively rare occurrence, particularly in view of this clarification. This notice should not be taken to require or encourage withdrawal. If a practitioner should decide to withdraw, however, the practitioner must take reasonable steps to avoid foreseeable prejudice to the rights of the client/patent applicant including allowing time for employment of another practitioner (37 CFR 10.40). Therefore, at least thirty days would be required between the date of approval by the Office of the withdrawal and the later of the expiration date of the response period or the expiration date of the period which can be obtained by a petition for extension of time and fee under 37 CFR 1.136(a). This is necessary so that the client/patent applicant would have sufficient time to obtain other representation or to take other action. If a period has been set for response and the period may be extended without a showing of cause pursuant to 37 CFR 1.136(a) by filing a petition for extension of time and fee, the practitioner will not be required to seek such extension of time for withdrawal to be approved. In such a situation, however, withdrawal will not be approved unless at least thirty days would remain between the date of approval and the last date on which such a petition for extension of time and fee could properly be filed. Dec. 10, 1987 DONALD J. QUIGG Assistant Secretary and Commissioner of Patents and Trademarks [1086 OG 457]