I am not a US citizen. I filled an application in USPTO through an Attorney based in US. I do not have any intent to go further for examination,office action etc with this attorney, because I would like to transfer this to another attorney .

So my question is what all documents should I collect from the first attorney after he files the application in USPTO.

Also I would like that this transfer should go smoothly without any conflict with the first Attorney. So is there any thing that should be mentioned in the Power of Attorney ,such as " This PoA is granted only for filing the application" something like this ...

  • Ask the new attorney to contact the first for any documentation needed.
    – Soren
    Commented Aug 18, 2014 at 14:48

3 Answers 3


Any client has the right to change attorneys at will. However, before you fire your present attorney I am wondering why you are continuing with this attorney to file the application? You should carefully think about why you are switching attorneys? Please answer the following questions:Do you have a contract with your current attorney? Will changing attorneys be detrimental to your application? Are you unhappy with your lawyer's performance- do you feel he does not understand your case (if so, why let him file it and why do you think your new attorney will have a better understanding?) You say you are not a US citizen but your current attorney is. Is the attorney you are planning to switch to a US attorney or from your country? Knowing this will help provide a more focused answer. But if you are determined to change attorneys, you should review your contract with the current attorney and check to be sure whether it addresses steps to be taken for terminating the relationship. Your new attorney, if you have hired one, should see the contract. You should ask him if he/she will take the responsibility for getting your files from your old attorney. When you are ready to sever your relationship with your old attorney, you should send a certified/registered letter to him clearly stating you are terminating the relationship and that all pending matters will be handled by the new attorney. Set a deadline for transfer and the means for how they will be transferred. Without knowing further details (ie any money owed, was there a contingency fee, etc.)

  • What it I want continue patent prosecution by myself? How difficult it would be to get you attorney to handle all documents and change customer number?
    – Pol99
    Commented Oct 19, 2015 at 17:04

Bear in mind that a very common response to allegations of infringement is an "inequitable conduct" defense, which basically says that the inventor OR the patent lawyer withheld material information from the patent examiner. You really want to be on good terms with any lawyer who had a part in prosecuting the patent. I doubt that a good lawyer would commit perjury just to get even (i.e. "yeh, I knew about that prior art but we withheld it on purpose"), but why take the risk?

I've switched lawyers on many of my patent applications, but I've always done it with respect and courtesy. Lawyers understand that clients sometimes want to or need to switch, so as long as you handle it kindly, you should avoid problems.


I switched patent attorneys when my first attorney failed to pay a maintenance fee even though I paid him the money for the fee. (Not only that, but sent in the wrong forms, and paid the amounts for different fees.) I used the US Patent Office's Public PAIR website to discover his errors. He did not even tell me about his errors!


When I looked up other patent applications made by this attorney, I discovered he had a habit of making mistakes and then charging his clients for the cost of fixing his own mistakes. That's not only unprofessional, but is considered unethical in many countries and US states. (Why should I pay to fix somebody else's mistake? And when an attorney charges his clients to fix his own mistakes, he has a conflict of interest.)

Here are some things you should consider when you switch attorneys.

  1. Will your old attorney charge you to send copies of your paperwork to your new attorney? (Some do and some don't.)
  2. Do you have any fees you must pay or documents you must send to the patent office while your patent application is transferred from one attorney to another?
  3. Do you need to file an ethics complaint with the US PTO or your State Bar against your old attorney? (Filing an ethics complaint may make your old attorney far less cooperative in transferring your case to another attorney.)

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