Preface
This brief note is not legal advice and is for educational purposes only.
Brief Discussion
There may come a time when you and your client need to part ways. The most common is the client is no longer paying and you want to get out. There are a number of things as the attorney or agent that you must do before parting ways.
- Give the client reasonable notice (we recommend at least 30 days) before the expiration of a response period that you intend to withdraw from representation.
- Deliver to the client or their new agent/attorney all papers, email, and documents regarding the matter AND refund any monies the client has in excess of billings.
- Notify the client of any responses due and the deadline to respond.
If the client is unwilling to sign a change in attorney form then:
For trademarks for Revocation, Appointment, Change, and Request for Withdrawal as Attorney of Record go here: https://www.uspto.gov/trademarks-application-process/filing-online/using-teas-attorney-withdrawal-replacement-and
For patents use form PTO/AIA/83 (or the online equivalent). Here are what the
37 CFR 11.116 reasons mean (and note that you can check more than one) [comments added]:
- 11.116(a)(1) - The representation will result in violation of the USPTO Rules of Professional Conduct or other law.
- 11.116(a)(2) - The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client.
- 11.116(a)(3) - The practitioner is discharged.
- 11.116(b)(1) - Withdrawal can be accomplished without material adverse effect on the interests of the client. [Normally this one is checked.]
- 11.116(b)(2) - The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent.
- 11.116(b)(3) - The client has used the practitioner’s services to perpetrate a crime or fraud.
- 11.116(b)(4) - A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement.
- 11.116(b)(5) - The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled.
- 11.116(b)(6) - The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client. [Client not paying.]
- 11.116(b)(7) - Other good cause for withdrawal exists. (You must explain on the form.)
NOTE: If you use the online form PTO/AIA/83 to withdraw make sure you download a copy of the IFW (Image File Wrapper) BEFORE you complete the form, because as soon as you hit the enter key you are locked out of Private Pair (learned the hard way:).
Conclusion
Done properly you and the client can parts ways and you as the attorney/agent can indicate the reason for the split.
