Law Firm As Agent: Pct Possibilities And Practicalities

The role of a law firm as an agent is a complex issue. While law firms can provide registered agent services to clients, there are risks involved. These risks include the possibility of default judgments against the client, attorney malpractice insurers denying coverage, and state penalties for non-compliance with jurisdictional filing requirements. In addition, the United States Patent and Trademark Office (USPTO) does not recognize law firms, and each attorney of record must sign the notice of withdrawal. Furthermore, some insurers may require a clause preventing attorneys from acting as registered agents due to the potential harm to clients from default judgments. On the other hand, a law firm acting as an agent can offer benefits such as facilitating the receipt of service of process and ensuring compliance with various jurisdictional laws. PCT patent attorneys, for instance, guide clients through the Patent Cooperation Treaty (PCT) procedure, offering legal advice and helping with patent searches and applications.

Law firms don't qualify as agents

While it may seem like a natural choice for a law firm to provide registered agent services to its clients, there are several reasons why law firms don't qualify as agents. Firstly, registered agents play a crucial role in ensuring businesses comply with various jurisdictional laws and requirements, maintaining their good standing. However, when a law firm acts as a registered agent, certain risks emerge, which can be broadly categorized into two types.

The first category encompasses risks that have always existed, but some law firms may be unaware of them. These include the risk of default judgments against the client, attorney malpractice insurers denying coverage for claims related to registered agent services, and state penalties against the client for non-compliance with jurisdictional filing requirements. The second category of risk involves the potential for the client to sue the attorney or law firm acting as the registered agent. This could occur if the client claims they never received proper or timely notification of a legal process and alleges fault on the part of the attorney or law firm.

In the case of Sadr v. NCL (Bahamas) Ltd., the California Court of Appeal ruled that acting as a registered agent is a non-legal task. This ruling highlights the potential for insurance coverage issues, as standard lawyers' professional liability insurance policies may not cover errors or omissions when an attorney serves as a registered agent. Additionally, some insurers may require a clause prohibiting attorneys from acting as registered agents due to the potential for serious harm to the client in the event of a default judgment.

Furthermore, the United States Patent and Trademark Office (USPTO) does not recognize law firms, which creates additional complexities. When a U.S. attorney or agent wishes to withdraw from representation in international applications, each attorney of record must sign the notice of withdrawal, or there must be a clear indication of one attorney signing on behalf of another. This requirement underscores the challenges in considering a law firm as an agent, as the USPTO mandates individual attorney involvement in such processes.

Applicants can be represented by attorneys or agents

Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office (USPTO) or by an applicant appointed as a common representative. The appointment of an attorney or agent must be effected either in the Request form, signed by the applicant, in the Demand form, signed by the applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.

The appointment of an attorney or agent revokes any earlier appointment unless otherwise indicated. Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report. 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.

An attorney or agent may appoint an associate attorney or agent who shall also then be of record. Any appointment of a sub-agent may also be revoked by the applicant concerned. The appointment of an agent shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent. An agent or a common representative may renounce their appointment by a notification signed by them.

A person having the right to practice before the national Office with which the international application is filed may be appointed by the applicant as their agent to represent them before the receiving Office, the International Bureau, the International Searching Authority, any Authority specified for supplementary search and the International Preliminary Examining Authority. A person having the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority may be appointed by the applicant as their agent to represent them specifically before that Authority. An agent appointed under paragraph (a) may, unless otherwise indicated in the document appointing them, appoint one or more sub-agents to represent the applicant as the applicant's agent.

The risks of a law firm acting as a registered agent

A law firm acting as a registered agent for its clients comes with a set of risks that need to be carefully considered. Firstly, there is the risk of default judgments against the client, which could result in a lawsuit against the law firm if the client claims they did not receive the notice. This is particularly important when the law firm moves or the attorney acting as the registered agent is no longer with the firm, as the client may allege fault on the attorney for not forwarding the notice properly or in a timely manner.

Secondly, attorney malpractice insurers may deny coverage for claims involving registered agent services, leaving the law firm exposed to financial risk. It is crucial to review professional liability insurance policies, as they often exclude coverage for registered agent activities or contain vague language.

Thirdly, state penalties may be assessed against the client for non-compliance with jurisdictional filing requirements. This could occur if the law firm acting as the registered agent fails to update its registered office address with the state when it relocates, leading to potential administrative dissolution or revocation. The client may expect the law firm to bear the cost of any state fees associated with the filing, which can be challenging if the firm is not charging for the service.

Furthermore, acting as a registered agent can be time-consuming and costly for law firms, especially if they do not have the right resources. It is important to consider the additional responsibilities, such as ensuring compliance with various jurisdictional laws and requirements, and maintaining up-to-date information with the state.

To mitigate these risks, law firms can consider outsourcing registered agent services to third-party commercial providers specializing in providing professional registered agent services. By utilizing technology-driven solutions, law firms can reduce risks, regain valuable time and resources, and maintain visibility into their clients' important legal documents.

The process of appointing an agent

According to PCT Rule 4.8, the appointment of an agent, attorney, or common representative must be made by the applicant signing either the request or demand form or a separate power of attorney. This power of attorney must be submitted to either the United States Receiving Office or the International Bureau. The applicant may also be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office (USPTO) or by an applicant appointed as a common representative.

It is important to note that the appointment of an agent or common representative revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)). Additionally, any appointment of a sub-agent under Rule 90.1(d) may be revoked by the applicant. The agent or common representative may also renounce their appointment by providing a signed notification.

In the case of U.S. attorneys or agents wishing to withdraw from representation in international applications, they must submit a request to the International Bureau or the receiving Office at Mail Stop PCT, including their present mailing address and that of the applicant. The USPTO will not recognize a change in the agent if the request is received after 30 months from the priority date (PCT Rule 92bis).

While it may seem convenient for a law firm to provide registered agent services to its clients, there are certain risks involved. These risks include the possibility of default judgments against the client, attorney malpractice insurers denying coverage for claims related to registered agent services, and state penalties for non-compliance with jurisdictional filing requirements. Additionally, the standard lawyers' professional liability insurance policies may not cover errors or omissions when an attorney acts as a registered agent. Therefore, it is essential for law firms to carefully consider these risks before deciding to act as registered agents for their clients.

Revoking the appointment of an agent

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)). The appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by the applicant, in the Demand form, signed by the applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau. Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.

The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier appointment of a common representative. An agent or a common representative may renounce their appointment by a notification signed by them. An applicant 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. Any appointment of a sub-agent under Rule 90.1(d) may also be revoked by the applicant concerned. 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.

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.

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.

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