(149)           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 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 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
though 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.

May 25, 1988                                                DONALD J. QUIGG
                                       Assistant Secretary and Commissioner
                                                  of Patents and Trademarks

                                [1091 TMOG 26]