Q) Representation Ceases (MPEP 400, Suspended Practitioner)

by patentbar on May 10, 2007 · 25 comments

in Exam Questions

Test takers report two questions involving suspended practitioners.  

Question 1 –

Specifically, the question asked where PTO is supposed to send an office action if the concerned patent attorney/agent is suspended.  Answer – The USPTO will NOT correspond with suspended practitioners.  Correspondence will be mailed to the applicant or another practitioner designated by the applicant.

MPEP 4.06 Attorney/Agent Suspended

The instant application contains a power of attorney to [1] who has been [2] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Accordingly, the Office action is being mailed to you as the inven­tor.

[4.06]Sole Practicioner/Sole Inventor – The Office action is to be mailed only to the inventor at his/her current address of record.

[4.07] Attorney/Agent Suspended (Sole Practitioner, Joint Inventors) – The Office action is to be mailed only to the inventor first named in the declaration at his or her current address of record.

[4.08] Attorney/Agent Suspended (Plural Practitioners) – The Office action is to be mailed both to the first named reg­istered attorney or agent of record (who is not suspended or excluded) at the address currently listed in the Attorney’s Roster, and to the inventor first named in the declaration at his or her cur­rent address of record.

See also CFR 10.158 (2) Within 30 days of entry of the order of suspension or exclusion, surrender a client’s active Office case files to (i) the client or (ii) another practitioner designated by the client.

Question 2 –

There us a question on suspended practitioners.  It is a “which one is incorrect” type of question.  Know that the USPTO will not “ad litem” appoint a new practitioner if the one in the power of attorney is suspended (note: MPEP search for ad litem produces nothing).  Ad litem is a term used in law to refer to a party appointed by a court to act in a lawsuit on behalf of another party—for instance, a child or an incapacitated adult—who is deemed incapable of representing (him/her)self.

{ 25 comments… read them below or add one }

1 mdavis68No Gravatar January 28, 2010 at 9:35 am

105 Suspended or Excluded Practitioner Cannot Inspect [R-2]

U.S. Patent and Trademark Office (USPTO) employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it *>is< one in which said attorney or agent is the applicant. Power to inspect given to such an attorney or agent will not be accepted.

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2 JBagNo Gravatar March 12, 2010 at 2:21 am

Note:

402.02 Appointment of Associate Attorney or Agent [R-3]
**>Effective June 25, 2004, the associate power of attorney practice has been eliminated. The Office no longer accepts a power of attorney signed by a principal to name an associate power of attorney. An appointment of an associate power of attorney filed on or after June 25, 2004 will not be accepted.< See also MPEP § 406.

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3 BeckerNo Gravatar May 17, 2011 at 3:11 pm

I got this question 5/16/2011.

Had to do with two practioners who were named POA. One gest suspended, what happens? I think the answer was something about sending a duplicate to the inventor, but the inventor needing to reply to the OA through the non-suspended pratcitioner. Check me though. I could be wrong.

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4 DannyNo Gravatar September 13, 2011 at 11:26 pm

you are correct. There must be a duplicate to the inventor, and the remaining attorneys should be the one to bring the reply. MPEP 407

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5 SarahNo Gravatar May 18, 2011 at 3:42 pm

Got this today 5/18/11

This was an “all of the following are allowed EXCEPT ”

2 practitioners, one suspended for 3 months(whose address was correspondence address).

Answers involved sending an action to the first named inventor, the last known address of the other attorney, and a few other things, all of which are OK. The wrong thing (and thus the CORRECT answer) involved:

“The PTO will go ahead and send the office action to the suspended practitioner because he is only suspended for 3 months and by the time he would reply his 3 months suspension would be up.”

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6 KenNo Gravatar October 9, 2011 at 8:01 am

Got Sarah’s variant on 10/8. Chose the same answer as she did :)

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7 maggieNo Gravatar October 23, 2011 at 9:17 pm

2 practitioners, one suspended for 3 months (whose address was correspondence address). Which of the following are allowed EXCEPT:
(A) sending an action to the first named inventor,
(B) Send to the last known address of the OTHER attorney
(C) Send to the suspended practitioner because he is only suspended for 3 months and by the time he would reply his 3 months suspension would be up
(D)??????
(E) ???

Answer (C)

¶ 4.08 Attorney/Agent Suspended (Plural Practitioners)

The present application was filed containing a power of attorney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].

[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.

As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the inventor first named in the declaration or oath. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.

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8 maggieNo Gravatar October 23, 2011 at 9:28 pm

From: MPEP 407 Suspended or Excluded >Patent< Practitioner [R-5] – In Chapter 400 Representative of Inventor or Owner

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9 JamecamNo Gravatar October 30, 2011 at 10:29 pm

I got a variant of this question on 10/29/2011.

The facts stated that two practitioners were named in the power of attorney. One was suspended. The address for the other practitioner was not supplied in the application. The question asked to whom the PTO should send the next office action.

The answer choices included:
(1) send the papers to the suspended practitioner because the suspension was not permanent.
(2) send the papers to the other named practitioner at the address listed in that attorney’s registration with the PTO
(3) send the papers to the inventor and instruct him to supply the address of the other named practitioner in the next reply

I chose option (3).

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10 maggieNo Gravatar November 15, 2011 at 3:56 pm

I think the answer is (2)

The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. As a correspondence address, other than to is not of record, this Office action is being mailed to at his/her last known address as listed on the register of patent attorneys and agents.

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11 maggieNo Gravatar November 15, 2011 at 3:58 pm

in addition: To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the inventor first named in the declaration or oath.

12 JamieNo Gravatar July 19, 2012 at 4:47 pm

I agree with Maggie. (2) is correct answer.
The purpose of sending a copy to first named inventor is to ensure the paper is received timely. The Office communicate with non-suspended attorney at last known address as listed on the registering record.

13 KillianRedNo Gravatar March 17, 2012 at 5:48 pm

Got this on 3/17/12

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14 GDBNo Gravatar April 18, 2012 at 6:49 pm

Not sure what the answer is because MPEP 407 says to send it to practitioner at last address AND to send it to inventor. Any reply should be by the non-suspended practitioner and should include a current address. See below:

Ҧ 4.08 Attorney/Agent Suspended (Plural Practitioners)
The present application was filed containing a power of attorney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].
[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.
As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the inventor first named in the declaration or oath. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.
Examiner Note:
1.In brackets 1, 3, 5 and 7 insert the name of the suspended or excluded practitioner.
2.In brackets 2, 4 and 8, insert the name of the first named unsuspended (unexcluded) registered practitioner of record.
3.In bracket 6, insert either –suspended– or –excluded–.
4.This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice. Use one of form paragraphs 4.06 or 4.07 if there are no remaining registered attorneys or agents of record.
5.The Office action is to be mailed both to the first named registered attorney or agent of record (who is not suspended or excluded) at the address currently listed in the Attorney’s Roster, and to the inventor first named in the declaration at his or her current address of record.”

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15 KeenerNo Gravatar May 18, 2012 at 3:20 pm

Agree. Form paragraph 4.08 Attorney/Agent Suspended (Plural Practitioners) clearly states a copy was sent to the registers address of the non-suspended practitioner and the first inventor.

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16 GDBNo Gravatar April 19, 2012 at 6:56 pm

Got this 19/04/12

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17 Nick KNo Gravatar April 24, 2012 at 11:54 am

Got on 4/24/2012

Two practitioners, one suspended, was a what can you do except question. I chose send to suspended examiner because suspension is only 3 months and by time he gets it he will be unsuspended. Clearly right answer from the list.

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18 RTNo Gravatar May 11, 2012 at 12:32 pm

Got it 5-10-12

Wrong: Send it to him since he was just suspended for 3 months.

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19 KeenerNo Gravatar May 18, 2012 at 3:18 pm

RT- Did the question ask for the improper action and you chose send it to the suspended practitioner as the improper?

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20 MarioNo Gravatar July 19, 2012 at 10:02 am

Had a question 7/18/2012 about who the office will communicate with if the only practitioner is suspended. The question said all are correct except?

Not sure of all the answer choices but only one said that they would communicate with the practitioner.

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21 MT40No Gravatar July 27, 2012 at 6:43 pm

So basically if a practitioner is suspended the USPTO won’t communicate with her. Depending on the variation of the question the answer can be found in MPEP under 407Suspended or Excluded >Patent< Practitioner [R-5] as stated above.

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22 HSUNo Gravatar July 27, 2012 at 10:36 pm

Got this one on 7/27/12. A multiple inventors sole practitioner situation. Don’t remember if it is an “Except” question. But one of the choices mentions something like signed by “all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants”. (under 4.07). Could this be the answer?

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23 StonNo Gravatar August 13, 2012 at 9:35 pm

Got this one on 8/13/2012

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24 ElleNo Gravatar August 22, 2012 at 8:12 pm

Got Question #2. The USPTO will not ad litem appoint a representative.

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25 ZNo Gravatar March 31, 2013 at 2:54 pm

Got Question #1 on 3/30/13.

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