TMEP 604.03: Change of Attorney

This is the October 2015 Edition of the TMEP

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604.03    Change of Attorney

Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, a new qualified practitioner from a different firm is not permitted to represent the applicant or registrant until: (1) the applicant or registrant revokes the previous power of attorney; (2) the applicant or registrant submits a new power of attorney naming the new qualified practitioner; or (3) the previously recognized practitioner files a request to withdraw. 37 C.F.R. §§2.18(a)(7), 2.19(b). Until such action is taken, the new qualified practitioner cannot sign responses to Office actions, authorize issuance of examiner’s amendments or priority actions, expressly abandon an application, authorize a change of correspondence address, or otherwise represent the applicant or registrant.

If an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner from a different firm wishes to take action with respect to the application or registration, the new practitioner must file a revocation of the previous power of attorney or new power of attorney naming the new qualified practitioner, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will accept filings by or correspond with the new practitioner. 37 C.F.R. §2.18(a)(7). The new practitioner may not sign the revocation of the previous power him or herself. See 37 C.F.R. §2.17(c) and TMEP §605.01 regarding requirements for power of attorney, and TMEP §606 regarding revocation of power of attorney.

Absent a revocation or new power, if the new qualified practitioner signs a response, amendment, or request to change the correspondence address, the USPTO will treat this as a document filed by an unauthorized party and follow the procedures in TMEP §§611.05–611.05(c).

For purposes of recognition as a representative of an applicant or registrant, the USPTO considers a power of attorney filed while an application is pending to end with respect to a particular application when the mark is registered, when the application is abandoned, or when ownership changes. 37 C.F.R. §2.17(g)(1). The USPTO considers a power of attorney filed after registration to end when the registration is cancelled or expired or when ownership changes. 37 C.F.R. §2.17(g)(2). If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. Id. TMEP §604.02. In these situations, it is not necessary to file a new power of attorney or revocation of the previous power before a new qualified practitioner may take action. See TMEP §605.04 regarding the processing of powers of attorney filed after registration.

See TBMP §§114-114.08 regarding representation of parties to Board proceedings, and TBMP §§117-117.02 regarding correspondence in Board proceedings.