Change in or Revocation of the Appointment of an Agent or a Common Representative

PCT Rule 90

Agents and Common

Representatives

*****

90.6 Revocation and Renunciation

(a) Any appointment of an agent or common representative may be

revoked by the persons who made the appointment or by their successors in

title, in which case any appointment of a sub-agent under

Rule

90.1(d)

by that agent shall also be considered as

revoked. Any appointment of a sub-agent under

Rule

90.1(d)

may also be revoked by the applicant

concerned.

(b) The appointment of an agent under

Rule

90.1(a)

shall, unless otherwise indicated, have the

effect of revoking any earlier appointment of an agent made under that

Rule.

(c) The appointment of a common representative shall, unless

otherwise indicated, have the effect of revoking any earlier appointment of

a common representative.

(d) An agent or a common representative may renounce his

appointment by a notification signed by him.

(e)

Rule

90.4(b)

and (c) shall apply,

mutatis

mutandis

, to a document containing a revocation or

renunciation under this Rule.

37 CFR 1.455 Representation in international applications.

(a) Applicants of international applications may be represented

by attorneys or agents registered to practice before the United States

Patent and Trademark Office or by an applicant appointed as a common

representative (

PCT Art. 49

,

Rules

4.8

and

90

and §

11.9

). If applicants have not appointed an attorney

or agent or one of the applicants to represent them, and there is more than

one applicant, the applicant first named in the request and who is entitled

to file in the U.S. Receiving Office shall be considered to be the common

representative of all the applicants. An attorney or agent having the right

to practice before a national office with which an international application

is filed and for which the United States is an International Searching

Authority or International Preliminary Examining Authority may be appointed

to represent the applicants in the international application before that

authority

to be the common

representative of all the applicants. An attorney or agent having the right

to practice before a national office with which an international application

is filed and for which the United States is an International Searching

Authority or International Preliminary Examining Authority may be appointed

to represent the applicants in the international application before that

authority. An attorney or agent may appoint an associate attorney or agent

who shall also then be of record (

PCT Rule 90.1(d)

). The

appointment of an attorney or agent, or of a common representative, revokes

any earlier appointment unless otherwise indicated (

PCT Rule 90.6(b) and

(c)

).

(b) Appointment of an agent, attorney or common representative

(

PCT

Rule 4.8

) must be effected either in the Request

form, signed by applicant, in the Demand form, signed by applicant, or in a

separate power of attorney submitted either to the United States Receiving

Office or to the International Bureau.

(c) Powers of attorney and revocations thereof should be

submitted to the United States Receiving Office until the issuance of the

international search report.

(d) The addressee for correspondence will be as indicated in

section

108

of the Administrative Instructions.

The appointment of an agent or a common representative can be revoked.

The document containing the revocation must be signed by the persons who made the

appointment or by their successors in title. The appointment of a sub-agent may also be

revoked by the applicant concerned. If the appointment of an agent is revoked, any

appointment of a sub-agent by that agent is also considered revoked. Also, as an agent

may not be appointed by Customer Number Practice in the international phase (see

MPEP

§ 1807

), an appointment of an agent may not be revoked by

reference to a Customer Number.

The appointment of an agent for the international phase in general

automatically has the effect, unless otherwise indicated, of revoking any earlier

appointment of an agent

gent is also considered revoked. Also, as an agent

may not be appointed by Customer Number Practice in the international phase (see

MPEP

§ 1807

), an appointment of an agent may not be revoked by

reference to a Customer Number.

The appointment of an agent for the international phase in general

automatically has the effect, unless otherwise indicated, of revoking any earlier

appointment of an agent. The appointment of a common representative similarly has the

effect, unless otherwise indicated, of revoking any earlier appointment of a common

representative.

Renunciation of an appointment may be made by means of a notification

signed by the agent or common representative. The applicant is informed of the

renunciation by the International Bureau.

The rules for signing and submission of a power of attorney set forth in

PCT Rule 90.4(b)

and (c)

also apply to a revocation or renunciation of an

appointment. See

PCT

Rule 90.6(e)

.

U.S. attorneys or agents wishing to withdraw from representation in

international applications may request to do so. To expedite the handling of requests

for permission to withdraw as attorney, the request should be submitted to the

International Bureau or to the receiving Office at Mail Stop PCT and should indicate the

present mailing addresses of the attorney who is withdrawing and of the applicant. The

Office will not accept address changes to a new practitioner or law firm absent the

filing of a power of attorney to the new representative. Because the United States

Patent and Trademark Office (USPTO) does not recognize law firms, 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 another

he

Office will not accept address changes to a new practitioner or law firm absent the

filing of a power of attorney to the new representative. Because the United States

Patent and Trademark Office (USPTO) does not recognize law firms, 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 another.

In accordance with

37 CFR 11.116

, the USPTO will

usually require the practitioner(s) to certify that he, she or they have: (1) given

reasonable notice to the client, prior to the expiration of the reply period, that the

practitioner(s) intends to withdraw from employment; and (2) delivered to the client or

a duly authorized representative of the client all papers and property (including funds)

to which the client is entitled. Furthermore, as

37 CFR

11.116

permits withdrawal from representation before the Office

for reasons set forth in

37 CFR 11.116(a) and (b)

, if the

reasons for withdrawal do not conform to one of the mandatory or permissive reasons set

forth in

37

CFR 11.116

, the Office will not approve the request.

The Office will not approve requests from practitioners to withdraw

from applications where the requesting practitioner was not appointed in a power of

attorney but 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

permission of the Office to withdraw from representation.

Practitioners should note that the International Bureau will not record

a change in the agent if the requested change is received by it after the expiration of

30 months from the priority date. See

PCT Rule 92bis

.

Where a request to withdraw from representation is filed with the USPTO after the

expiration of this time period, the request may not be treated on the merits

hdraw from representation.

Practitioners should note that the International Bureau will not record

a change in the agent if the requested change is received by it after the expiration of

30 months from the priority date. See

PCT Rule 92bis

.

Where a request to withdraw from representation is filed with the USPTO after the

expiration of this time period, the request may not be treated on the merits.

For withdrawal of attorney or agent in the national stage, see

MPEP §

402.06

.

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