602.05 Permissive Withdrawal of Attorney of Record
37 C.F.R. 2.19(b). If the requirements of §10.40 of this chapter are met, an attorney authorized under §10.14 to represent an applicant, registrant or party in a trademark case may withdraw upon application to and approval by the Director.
An attorney may withdraw from representing an applicant or registrant, but may not withdraw in a way that would prejudice the applicant or registrant. In re Legendary, Inc., 26 USPQ2d 1478 (Comm'r Pats. 1992) (attorney's request to withdraw denied where the request was filed on the last day of the period for response to an Office action and attorney stated neither that the applicant was given due notice of the attorney's withdrawal from employment nor that the attorney had delivered all papers and property in his file concerning the prosecution of the application to the applicant). See 37 C.F.R. 10.40 regarding mandatory and permissive withdrawal from employment by an attorney.
To expedite processing, the USPTO recommends that requests to withdraw as the attorney of record prior to registration be filed through TEAS, at http://www.uspto.gov/teas/index.html. Requests to withdraw as attorney cannot be filed through TEAS after registration.
Before registration, a request for permission to withdraw as attorney will be handled by the appropriate managing attorney, or, if a notice of allowance has issued and the application is awaiting the filing of a statement of use, by the Supervisor of the ITU/Divisional Unit. After registration, a request for permission to withdraw as attorney will be handled by the Supervisor of the Post Registration Section of the Office.
A request to withdraw must include the following:
(1) A statement of the reason(s) for the request to withdraw (see 37 C.F.R. 10.40);
(2) A statement that the attorney has given due notice to the applicant or registrant that the attorney is withdrawing from employment and will be filing the necessary papers with the USPTO; and that the applicant or registrant was given notice of the withdrawal at least two months before the expiration of the response period;
(3) A statement that the attorney has delivered to the applicant or registrant all papers and property in the attorney's file concerning the prosecution of the application or registration; and
(4) A statement that the attorney notified the applicant or registrant of any responses that may be due, and of the deadline for response.
A request to withdraw should be filed soon after the representative notifies the applicant or registrant of his or her intent to withdraw. If an applicant or registrant was notified of the attorney's withdrawal from employment at least two months before the expiration of the response period, and the request to withdraw meets all the requirements listed above, the request will be granted. In re Slack, 54 USPQ2d 1504 (Comm'r Pats. 2000).
The request for permission to withdraw should also contain the following:
(1) The application serial number or registration number;
(2) The law office to which the application is assigned, in a pending application;
(3) The name of the examining attorney or Post Registration examiner assigned; and
(4) The present mailing address of the attorney who is withdrawing and the present mailing address of the applicant or registrant.
If filed on paper, the request should be titled "Request for Permission to Withdraw as Attorney of Record."
The managing attorney or supervisor will approve or deny the request, notify the applicant or registrant and the attorney of the approval or denial of the request, and place a record of this notification (i.e., a copy of the written communication or telephone call record) in the record. If the request is approved, the managing attorney or supervisor should ensure that the correspondence address is changed in the USPTO's automated records. It is the responsibility of the managing attorneys or supervisors to establish procedures that permit withdrawal requests to be given priority and acted on promptly.
If the attorney who seeks to withdraw is also the domestic representative, the managing attorney or supervisor should inquire as to whether the attorney intends to withdraw as domestic representative. This inquiry should be made by phone or e-mail, if possible. If the attorney withdraws as domestic representative, the managing attorney or supervisor should ensure that the domestic representative field in TRAM is updated accordingly. See TMEP §604 regarding designations of domestic representative, and TMEP §603.05 regarding correspondence with parties not domiciled in the United States.
If an attorney appointed before registration files a request to withdraw after registration, the USPTO scans an image of the request into the record but does not change the attorney of record in TRAM. See TMEP §§602.01(c) and 1612.The USPTO will not process a request for permission to withdraw in an abandoned application. When an attorney files a request to withdraw in an abandoned application, the USPTO scans an image of the request into the record but does not change the TRAM database. See TMEP §1612.