There is often a situation where you may be stuck and you want to replace the Patent agent/Attorney that you used to file the Patent application earlier, these reasons could be:
- Non-responsiveness or delayed response
- Performance/Cost issues
- Winding up of practice
- Conflict of interest
- Inability to handle the matter due to other circumstances
In such situations, what steps could be followed to appoint a fresh agent is what we discuss in this article.
A patent application can be filed and managed either by the Applicant directly or through a patent attorney or agent. The role of a patent attorney or agent begins with drafting the patent application to ensure it provides the broadest possible protection for the invention. Since a patent is a techno-legal document, it is advisable for the Applicant to engage a patent attorney or agent with both technical and legal expertise. However, if you have large portfolio of patents to be managed it is advisable to approach a Law firm that has multiple agents/attorneys and online docketing system to manage due dates and formal requirements associated with your Patent cases.
In the situation wherein Applicant decides to change their patent attorney, it is essential to obtain and transfer all relevant files and documents to the new attorney. Some of these documents may be available online if the application is published, however if the application is not published all documents like Form 2, Signed Copy of Form 1, Signed copy of POA are required to be transferred. It is to be kept in mind that online documents may be in PDF format and their editable .doc files need to be transferred from former to later agent/attorney Additionally, the change of representation must be formally communicated to the Patent Office. According to Rule 135(2) of the Patents Rules, 2003, any service of documents related to the proceeding made to the agent is considered service upon the Applicant. Therefore, updating the representative details with the Patent Office is crucial to ensure that all official correspondence reaches the Applicant through their new patent attorney or agent.
The importance of appointing a patent agent or attorney is highlighted by various provisions of the Patents Act. Rule 5 of the Patents Rules, 2003 requires individuals involved in proceedings and patentees to provide an address for service, including a postal address and email address within India. Additionally, patent agents or attorneys must furnish the Controller General with a mobile number registered in India.
As a matter of ethics we recommend that any pending/admitted dues of the previous agent must be paid off, prior to initiating such transfer proceedings.
As per the Manual of Patent Office Practice and Procedure, 2019, a Power of Attorney (POA) must be submitted by the incoming agent. This new POA submitted by the incoming agent will have a sentence “I/We, hereby revoke all previous authorizations, if any, in respect of same matter or proceeding”. Thus, upon filing of this POA the powers of the old agent will be revoked and new agent powers will take effect.
The new agent must audit the files immediately before or after the transfer and in case where there are non-compliances and/or negligence, they must be corrected. Negligence by a patent agent or attorney can have serious consequences, as seen in the case of European Union v. Union of India. In this instance, the Court condoned a delay in responding to the First Examination Report, acknowledging that the Applicant had no intention of abandoning the application and was actively engaging with their agent. The delay occurred due to the patent agent’s mistake, which could have resulted in the Applicant losing exclusivity over their invention. This case underscores the critical need for diligence and responsibility in patent prosecution.
Once the new agent comes on record it becomes the responsibility of the new incoming agent to progress the case further.
