Brief Summary
Effective May 12, 2008, the U.S. Patent and Trademark Office (“USPTO”) has revised its procedures for requests to withdraw from representation by a practitioner of record in a national patent application. Among other things, the changes remove the 30-day filing requirement.

Complete Summary
The pre-existing USPTO procedure governing requests to withdraw from representation by a practitioner of record in a national patent application required, inter alia, that there be at least 30 days between approval of the request to withdraw as a practitioner of record in the application and the latter of (a) the expiration date of a time period for reply or (b) the expiration date of the period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a). In addition, the practitioner had to provide reasons for withdrawal and a forwarding address for subsequent correspondence.

The revised procedure deletes the 30-day requirement. Instead, the USPTO will require practitioners to make certain certifications prior to withdrawal. Pursuant to 37 CFR 10.40, the USPTO will require a practitioner to certify that he or she has:

1. given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner intends to withdraw from employment;
2. delivered to the client or a duly authorized representative all papers and property (including funds) to which the client is entitled; and
3. notified the client of any responses or replies that may be due and when they are due.

The practitioner must also provide the client with adequate time to file a reply and must take reasonable steps to avoid foreseeable prejudice to the client, which may include, but need not be limited to, sufficient notice to allow the client time to employ another practitioner. Although there are some exceptions, a practitioner generally will not be allowed to withdraw unless and until all the certifications have been made. If a practitioner cannot make all the certifications, an explanation detailing why any certifications cannot be made must be included with the request to withdraw.

If a request to withdraw is filed prior to the expiration of a time period for reply, or the expiration date of the period that can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a), the USPTO will review the request and render a decision. Where, however, the request is filed after an application is abandoned or after a patent has been issued, the request will be placed in the application but will not be formally ruled upon.

Significance of Changes
These procedures clarify the obligations of practitioners who wish to withdraw from representation.

For more information, click here. 

This alert has been prepared by Hinshaw & Culbertson LLP to provide information on recent legal developments of interest to our readers. It is not intended to provide legal advice for a specific situation or to create an attorney-client relationship.

Upcoming Events

Hinshaw & Culbertson LLP and The Hildebrandt Institute Present: The Three-Part Law Firm Risk Management Virtual Seminar Series

Two Remaining Seminars:

May 15, 2008: Third Party Claims for Lawyers: Is There Life After Stoneridge

July 16, 2008: Impaired and Poorly Behaving Partners: Managing the Risks 

Third Party Claims for Lawyers: Is There Life After Stoneridge

May 15, 2008, Noon-1:30 pm EST

Speakers
Rebecca Lambreth, Partner, Duane Morris LLP
Anthony Davis, Partner, Lawyers for the Profession® Practice Group, Hinshaw Culbertson LLP

Program Overview
One of the most important (and disturbing) developments in law firm risk management in recent years has been the increased willingness of plaintiff’s lawyers, government agencies, and courts to hold lawyers and law firms culpable for the actions or omissions of their clients. We have seen these so-called “third party claims” in a wide variety of contexts, from securities fraud cases to abusive tax shelter claims to cases involving circumstances of deepening insolvency. In January, the Supreme Court handed down its decision in Stoneridge Investment Partners v. Scientific-Atlanta, a case that affirms the limited ability of plaintiffs in securities fraud cases to reach lawyers and other providers of services to defendant companies. 

This virtual seminar will bring together two highly knowledgeable and experienced practitioners to discuss these and related issues.

Topics to Include

• The circumstances under which lawyers can still be held liable for the actions or omissions of their clients; 
• Potential liability for lawyers as third-party defendants in securities fraud cases after Stoneridge, and whether the “aiding and abetting” claim still has relevance;
• The seriousness of the threat of lawyers being held liable for the actions of their clients in deepening insolvency circumstances; 
• What lawyers and law firms can do to protect themselves against such claims going forward; 
• Red flags” in this area that firm managements should pay attention to.

REGISTER NOW or call 866-872-5840

Impaired and Poorly Behaving Partners: Managing the Risks

July 16, 2008, Noon-1:30 pm EST

Speakers
Thomas L. Browne, Lawyers for the Profession® Practice Group, Hinshaw Culbertson LLP
Tom H. Luetkemeyer, Lawyers for the Profession® Practice Group, Hinshaw Culbertson LLP
Dr. Larry R. Richard, Vice President and Head of the Leadership & Organization Development Practice Group, Hildebrandt International

Program Overview
Dealing with “problem” partners has always been a challenge for law firm leaders. In recent years, however, it has also become a serious area of risk exposure as state bars, regulatory agencies, clients, and plaintiff’s lawyers have been increasingly willing to charge firms with accountability for the “lack of supervision” often evidenced in such behaviors. In this virtual seminar, you will hear three experts ? two professional responsibility lawyers and one lawyer/psychologist ? describe the nature of these risks and offer some practical advice on dealing with these problems. 

Topics to Include

• Ways of identifying “problem” partners before the problems cause serious damage;
• Methods for dealing with impaired or poorly behaving partners that protect the interests of the partners and the firm;
• Circumstances in which “problem” partners must be reported to the local bar;
• Understanding the psychological issues that can give rise to problems and how to short-circuit them;
• Discussing “problem” partner issues with clients; and
• Managing the damage to the firm when and if problems become public.

REGISTER NOW or call 866-872-5840

Who Should Attend

• Law Firm General Counsel or Firm Counsel
• Director of Research
• Risk Management Partner
• Chairs of Ethics and Conflicts Committees
• Directors of Professional Responsibility and Directors of Conflicts
• Managing Partners
• Executive Directors and Chief Operating Officers
• Senior Insurance Industry Executives with Responsibility for Lawyers Professional Liability Insurance