MPEP 402.06
Attorney or Agent Withdraws

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

Previous: §402.05(b) | Next: §402.07

402.06    Attorney or Agent Withdraws [R-07.2015]

37 C.F.R. 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent.

*****

  • (b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.

37 C.F.R. 11.116  Declining or terminating representation.

  • (a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:
    • (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
    • (2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
    • (3) The practitioner is discharged.
  • (b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:
    • (1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
    • (2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
    • (3) The client has used the practitioner’s services to perpetrate a crime or fraud;
    • (4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
    • (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
    • (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
    • (7) Other good cause for withdrawal exists.
  • (c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.
  • (d) Upon termination of representation, a practitioner shall 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. The practitioner may retain papers relating to the client to the extent permitted by other law.

See MPEP § 402.05(a) for applicant revocation of power of attorney in applications filed on or after September 16, 2012. For revocation of power of attorney in applications filed before September 16, 2012, see MPEP § 402.05(b) for revocation by the applicant and MPEP § 402.07 for revocation by the assignee. See 37 CFR 11.116 for information regarding permissive and mandatory withdrawal. When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request. Among several scenarios addressed in 37 CFR 11.116(b), subsections (5) and (6) permit withdrawal when after reasonable warning the client fails to compensate the practitioner, or when the representation "has been rendered unreasonably difficult by the client." When preparing a request for withdrawal for such reasons, the practitioner should also be mindful of 37 CFR 11.106, which requires a practitioner to maintain the confidentiality of client information (except in limited circumstances). Where withdrawal is predicated upon such reasons, the practitioner, rather than divulging confidential or secret information about the client, should identify the reason(s) for requesting to withdraw as being based on "irreconcilable differences." An explanation of and the evidence supporting "irreconcilable differences" should be submitted as proprietary material in accordance with MPEP § 724.02 to ensure that the client’s confidences are maintained.

In the event that a notice of withdrawal is filed by the attorney or agent of record, the file will be forwarded to the appropriate official for decision on the request. The withdrawal is effective when approved rather than when received.

Each attorney of record must sign the notice of withdrawal, or the notice of withdrawal must contain a clear indication of one attorney signing on behalf of himself or herself and another. A withdrawal of another attorney or agent of record, without also withdrawing the attorney or agent signing the request is a revocation, not a withdrawal.

Pursuant to 37 CFR 11.116(c), when terminating a representation a practitioner must provide notice to, or request permission from, a tribunal when required by applicable law. Pursuant to 37 CFR 11.116(d), a practitioner is required to 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.

The Request for Withdrawal As Attorney or Agent and Change of Correspondence Address forms (PTO/SB/83 or PTO/AIA/83, available at www.uspto.gov/patent/patents-forms ) provide a section wherein practitioners may certify the completion of activities necessary for the request to withdraw from representation to be granted. A Request for Withdrawal As Attorney or Agent may alternatively be filed as a Web-based e-petition (see www.uspto.gov/patents-application-process/applying-online/ epetitions/epetitions-faqs for more information). When the correspondence address will change as a result of withdrawal, the withdrawing practitioner(s) must request that the Office direct all future correspondence to (i) the first named inventor or assignee that has properly made itself of record pursuant to 37 CFR 3.71 (for applications filed before September 16, 2012), or (ii) the applicant (for applications filed on or after September 16, 2012) or (iii) the assignee of record (for proceedings involving issued patents). Practitioners may do so by specifying either the correspondence address of, or the address associated with the Customer Number of, any appropriate party as specified above. Withdrawing practitioner(s) cannot change the correspondence address to the address associated with the Customer Number of another law firm, or any other address except as noted above.

As long as the Request is filed prior to the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a), the Office will review the Request and render a decision, even if the decision on the Request is decided after the stated period for reply, after the application is abandoned, or after proceedings have terminated. In contrast, the Office will not decide requests to withdraw from representation as practitioner of record which are filed after the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a). These Requests will be placed in the application but will not be treated on their merits. In a similar situation, a revocation of power of attorney filed after the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for an extension of time under 37 CFR 1.136 will simply be placed in the application file. The only exception will be a revocation and power of attorney accompanied with a petition to revive.

For withdrawal during reexamination proceedings, see MPEP § 2223. Requests for withdrawal filed after a patent has issued will be placed in the file but will generally not be treated on their merits.

The Office will not approve requests from practitioners to withdraw from applications where the requesting practitioner is acting, or has acted, in a representative capacity pursuant to 37 CFR 1.34. In these situations, the practitioner is responsible for the correspondence the practitioner files in the application while acting in a representative capacity. As such, there is no need for the practitioner to obtain the Office's permission to withdraw from representation. However, practitioners acting in a representative capacity, like practitioners who have a power of attorney in the application, remain responsible for noncompliance with 37 CFR 1.56, as well as 37 CFR 11.18, with respect to documents they file.

Form PTO/AIA/83 may be used to request withdrawal of attorney or agent of record.

Form PTO/SB/83 Request for Withdrawl As Attorney or Agent and Change of Correspondence Address Form
Form PTO/SB/83 Request for Withdrawl as Attorney or Agent And Change of Correspondence Address
Privacy Act Statement