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 subagent 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. 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. 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.
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.
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.
For withdrawal of attorney or agent in the national stage, see MPEP § 402.06.