(409) Responsibilities of Practitioners Representing
Clients in Proceedings Before
The Patent and Trademark Office
This notice is intended to remind practitioners of certain aspects of
their responsibilities in representing clients in proceedings before
the Office. The Notice is also intended to supplement the discussion
set forth in the Official Gazette Notice published at 1086 Official
Gazette 457 (Jan. 12, 1988) entitled "Practitioner's Responsibility
to Avoid Prejudice to the Rights of a Client/Patent Applicant" and to
amplify and supersede the Helpful Hint published at 1084 Official
Gazette 34 (Nov. 24, 1987) titled "Correspondence Address and/or Fee
Address of Maintenance Fees."
Part 10 of title 37, Code of Federal Regulations, sets forth the
Patent and Trademark Office (PTO) Code of Professional
Responsibility. Each attorney or agent who practices before the PTO
is subject to the rules set forth in Part 10 and should carefully
study the rules promulgation originally published at 50 Federal
Register 5158 (Feb. 6, 1985) and at 1052 Official Gazette 4 (Mar. 5,
1985) and reproduced as item number 172 in the Consolidated Listing
of Official Gazette Notices, published at 1086 Trademark Official
Gazette 3 (Jan. 5, 1988).
Practitioner's Client
During the promulgation of Part 10, 37 CFR, several individuals
suggested that "it may be difficult to determine the identity of the
'client'. . ., particularly in corporate patent departments." The
response to that suggestion was that "[t]he PTO will presume that
practitioners know the identities of their clients . . .." 50 Federal
Register 5163 (Feb. 6, 1985); 1086 Trademark Official Gazette 356
(Jan. 5, 1988). For example, in a patent application, practitioner's
client is ordinarily the inventor who gives practitioner a power of
attorney to prosecute the application (37 CFR 1.31). A practitioner
may represent only the assignee of the entire interest in a patent
application if the assignee has filed a power of attorney and the
assignee is conducting the prosecution of the application to the
exclusion of the inventor. (37 CFR 1.32).
In the promulgation of Part 10, 37 CFR, a commenter raised a question
of who is the client when an application is filed on behalf of an
individual, but the individual's assignee pays practitioner's bill.
The question was answered in the following manner:
"Practitioners are expected to know the identities of their clients.
If a practitioner is hired by a corporation and wishes to make that
fact plain on the record of a patent application, the practitioner
may file an assignment and a power of attorney signed by the
assignee. If a dispute should then occur between the individual and
the assignee, the record would be clear that the assignee is the
client." 50 Federal Register 5164 (Feb. 6, 1985); 1086 Trademark
Official Gazette 357 (Jan. 5, 1988).
In some instances, practitioners deal with a corporate liaison or
foreign agent. Such arrangements do not automatically change the
person whom practitioner represents, e.g., the inventor or trademark
owner. The fact that a U.S. practitioner receives instructions from
the inventor or trademark owner through a foreign attorney or agent
does not change the fact that the client is still the inventor or
trademark owner rather than the foreign attorney or agent. See
Strojirenstvi v. Toyoda, 2 USPQ 2nd 1222 (Comm'r Pat. 1986), which at
1223 cited Yetter Manufacturing Co. v. Hiniker Co., 213 USPQ 119, 120
(D. Minn. 1981) for the principle that "when attorney served as local
counsel for a law firm representing Hiniker Co., the attorney
represented Hiniker and not the law firm" and also cited Toulmin v.
Becker, 105 USPQ 511 (Ohio Ct. App. 1954) for the principle that "foreign
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patent agents or attorneys were not clients of U.S. patent attorney."
The PTO expects practitioners to know the identities of their
clients and to take reasonable steps to avoid foreseeable prejudice
to the rights of their clients.
Obtaining Instructions Through Persons Other Than The Client
In practice, it is common for instructions relating to the
application of an inventor or trademark owner, who is the client of
the U.S. practitioner, to be passed to the U.S. practitioner
through intermediaries, such as corporate liaisons or foreign agents.
Clearly, a client may choose to use a corporate liaison or a foreign
agent to convey instructions, etc., to a practitioner. In such an
arrangement, the practitioner may rely upon instructions of, and
accept compensation from, the corporate liaison or the foreign agent
as to the action to be taken in a proceeding before the Office so
long as the practitioner is aware that the client has consented to
have instructions conveyed through the liaison or agent. See 37 CFR
10.68(a) and (b). An agreement between the client and the liaison or
agent establishes an agency relationship between the liaison or agent
and the client such that the U.S. practitioner can rely upon the
liaison or agent as the representative of the client for the purpose
of communicating the client's instructions about the proceeding
to the U.S. practitioner. The PTO will assume that the client has an
agreement with the liaison or agent to be represented by the liaison
or agent. It is the responsibility of the client to notify the practi
tioner that the agency relationship between the client and the liaison
or agent has ceased to exist and that instructions from the liaison or
agent should no longer be accepted.
A practitioner could secure evidence that such an agreement exists by
having a patent or trademark applicant sign a statement to that
effect at the same time that the power of attorney is executed. For
example, the following language could be inserted in an oath, declaration,
or power of attorney form:
"The undersigned hereby authorizes the U.S. attorney or agent named
herein to accept and follow instructions from as to any action to
be taken in the Patent and Trademark Office regarding this
application without direct communication between the U.S. attorney or
agent and the undersigned. In the event of a change in the persons
from whom instructions may be taken, the U.S. attorney or agent named
herein will be so notified by the undersigned."
Without an agency relationship between the liaison or agent and the
client, a practitioner would be bound by 37 CFR 10.68(b) to "not
permit a person who recommends, employs, or pays the practitioner to
render legal services for another, to direct or regulate the
practitioner's professional judgment in rendering such legal
services."
Practitioner's Responsibility to a Client After the Client's Patent
Issues or Trademark is Registered
The Office has received inquiries from practitioners as to their
responsibilites to a client (patent or trademark applicant) after the
client's patent was issued or trademark has been registered. In
response thereto, it is pointed out that a power of attorney given
during prosecution of a patent or trademark application is considered
to be viable after the patent is issued or the trademark is
registered. See 50 Federal Register 5164 (Feb. 6, 1985); 1086
Trademark Official Gazette 357 (Jan. 5, 1988). While the Office
considers such a power of attorney to be viable for purposes of the
practitioner taking actions in proceedings before the Office if
practitioner and the client so desire, the existence of the power of
attorney to file and/or prosecute the application through issuance of
the patent or registration of the trademark does not establish
whether practitioner has a responsibility, and a dutaffirmatively in
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a proceeding before the Office on behalf of the client after the
patent issues or the trademark is registered.
Practitioner's responsibility to take affirmative action in a
proceeding before the Office after the patent issues or the trademark
is registered depends upon whether practitioner still has a
practitioner-client relationship with the client which has continued
after the patent issued or trademark is registered. The mere
existence of the power of attorney to file and/or prosecute the
application through issuance of the patent or registration of the
trademark would not establish such a practitioner client relationship
in the absence of other facts establishing such a relationship since
the purpose for which the power of attorney was originally given has been
accomplished.
Practitioner's Responsibility to a Former Client
While practitioner may no longer have a practitioner-client
relationship with a client and therefore has no duty to represent the
client in a proceeding before the Office, a practitioner nevertheless
has certain obligations to a former client. These obligations are
placed upon practitioner by the Office rules and are necessary for
the proper conduct of proceedings before the Office. Under 37 CFR
10.23(c)(8), practitioners have a duty to inform a client or former
client or timely notify the Office of an inability to notify a client
or former client of certain correspondence received from the Office
and also from the client's or former client's opponent in an inter
partes proceeding before the Office. Practitioners have an obligation
whether the client is a present client or a former client. Included
among the items of correspondence of which practitioners have the
obligation to inform clients or former clients are notices regarding
maintenance fees, reexamination proceedings, and institution of inter
partes patent and trademark proceedings.
Address to Which Correspondence is Sent Regarding Patent Maintenance
Fees and Reexamination Proceedings
Under 37 CFR 1.33(d), a "correspondence address" or a change thereto
may be filed with the Office during the enforceable life of a patent.
This "correspondence address" will be used in any correspondence
relating to maintenance fees unless a separate "fee address" has been
specified solely for maintenance fee purposes as provided by 37 CFR
1.363. Practitioners who do not wish to receive correspondence
relating to maintenance fees must change the correspondence address
in the patented file or provide the PTO with a fee address to which
the correspondence should be sent. It is not required that a practitioner
file a request for permission to withdraw pursuant to 37 CFR 1.36 solely
for the purpose of changing the correspondence address in a patent even
through a withdrawal of a practitioner would change the correspondence
address.
Since 37 CFR 1.33(c) specifies that all notices, official letters and
other communications for the patent owner or owners in a
reexamination proceeding will be directed to the attorney or agent of
record in the patent file, a request for permission to withdraw
pursuant to 37 CFR 1.36 must be filed in the patent if the attorney
or agent of record does not desire to receive correspondence relating
to reexamination. For information on requests to withdraw, see the
discussion in the Jan. 12, 1988 Official Gazette Notice cited above.
Contact Points For Information
If a practitioner has questions about the conduct of, or requirements
relating to a particular proceeding before the Office, those
questions should be directed to the particular area of the Office
responsible for the proceeding. If practitioners have questions
about their responsibilities to their clients, those questions should
be directed to the Office of Enrollment and Discipline. The telephone
number of that Office is (703) 557-2012.
DONALD J. QUIGG
May 25, 1988 Assistant Secretary and Commissioner
of Patents and Trademarks
[1091 OG 26]