(376) 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]
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