Do you need a new attorney? Why and how to change your representative

As explained in article "Do you need a patent attorney?", some applicants are required by the patent law, i.e. the EPC to appoint a representative and communicate with the European Patent Office (EPO) through this representative.*

Although in this article you can learn about the European rules, most of its content is relevant outside of Europe as well.

During the patenting procedure you are allowed to change your representative.

Why to change your representative?

There might be several reasons why you should look for a new attorney.

A good patent attorney should always look out for his client's best interest. He should not persuade you to file a patent application without discussing your overall plan and the main reason for wanting a patent. You should always be well informed about the next step, the upcoming fees and your options. Furthermore, your patent attorney should understand both your invention and your position in order to reach the broadest protection possible. Since missing deadlines can easily lead to the loss of your application, it is very important that you are able to communicate with your patent attorney smoothly. You should be able to reach your attorney easily, and expect responses to your emails and calls within a reasonable amount of time.

If you intend to change your patent attorney just because you find the professional fees too high, think twice. Of course, you can check the service fees of other firms and make sure that you are not overpriced. Also, make sure that the fee structure is transparent. However, please remember that patent attorney services are generally costly due to the skills and knowledge required. Do not expect to receive free legal advice from patent attorneys, because you have to pay for their time. One option to decrease the costs is for the patent attorney to do less work, but in that case the quality of your application will be much lower. Thus, you have to be very careful when choosing an attorney simply because he provides the lowest fees.

If, for any reasons you cannot trust your patent attorney and/or you are dissatisfied with his/her services, you should think about appointing a new representative. However, remember to keep your relationship with your original representative professional, and ask him to send you all the documents relevant to your application. Do not forget to settle any outstanding invoices and inform him that you will appoint another attorney to handle your case in the future.

How to change your representative?

It is strongly advised to first look for a new patent attorney and only proceed with changing your representative after you have an agreement with your new patent attorney. This way, you can make sure that all communications from the patent office will reach you continuously. Furthermore, it is important that you always have an appointed representative registered at the EPO so that your application will not be refused. So, it is advised to discuss your case with your new patent attorney and ask him/her to take over the representation once you are ready to change attorneys officially. 

When discussing your invention and case with your new patent attorney, you do not need to ask him to sign a confidentiality agreement. Patent attorneys are required by law to keep all information – that they are told in confidence in the exercise of their duties – confidential.

Your representative will assist you with changing your representative, you do not personally need to take any steps at the EPO. Your newly appointed representative might ask you to sign a Power of attorney form and will file a request for change of applicant's representative at the EPO. (If the earliest representation was not yet terminated, your attorney will have to file an authorisation, which is otherwise not always required.) When registering a new patent attorney at the EPO, no official fees occur.

* This is defined in Art. 133(2) EPC.
"Natural or legal persons not having their residence or principal place of business in a Contracting State shall be represented by a professional representative and act through him in all proceedings established by this Convention, other than in filing a European patent application; the Implementing Regulations may permit other exceptions."
Read the full legal text here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023