When you're ready to sever the relationship with your old lawyer, send a certified or registered letter that clearly states you are terminating the relationship, and that the lawyer is to cease working on any pending matters. Don't get into details about why you're firing the lawyer; it's not relevant. In the letter, request all of your files.
Full Answer
Warning: If you are trying to respond to the office action without the help of a patent attorney, then you need to be careful that you do not amend the specification or the claims or make arguments that will unduly narrow your claims so that they would be easy to design around.
An office action is a document prepared and sent by an examiner at the USPTO about any issues with your patent application. It is only one step in the overall process at the Patent Office . The office action will be sent to the person listed in the correspondence section of the Application Data Sheet that was submitted with the patent application.
This means that ½ of all patent applications are allowed and issued as a patent after most of them are initially rejected. Once again, be positive and know that you are not necessarily at the end of the road. In fact, you may have just begun the real part of the examination stage of the patent process.
After a final office action, a written response must be filed with a Request for Continue Examination and the appropriate extensions of time before the end of the six-month deadline. Otherwise, the patent application will go abandoned. Alternatively, you can also file a continuation patent application.
The agency must receive the document before the patent is issued or published; otherwise, USPTO officials may not recognize the application in time to deem it abandoned. To abandon your patent application to prevent its publication, submit a "declaration of express abandonment" through a petition (Form PTO/SB/24A).
(a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given.
Note that if you receive a Non-Final Office Action and you reply with amendments to the claims, if the Patent Examiner needs to find a new prior art or present new reasoning for the rejection, the Patent Examiner may still issue a Final Office Action, except in a limited number of circumstances.
How to respond to an office action?Step 1: don't abandon your patent application (Don't despair)Step 2: Determine due date to respond to the office action.Step 3: Identify types of issues in the office action. ... Step 4: Understand your response options. ... Step 5: Final versus a non-final office action.More items...
In the U.S., any person can ask the U.S. Patent and Trademark Office (USPTO) to re-examine an approved patent. If prior art or publications show that your claims are not new, the USPTO may invalidate, or revoke, your patent, which means that your rights are surrendered.
For patent application, the Power of Attorney (POA) is a legal document that allows anapplicant for a patent to grant an agent or another person the authority to act on the applicant's behalf, e.g., to file and prosecute a patent application with the Patent Office.
How much does a complex patent Office Action response cost? The cost of a complex Office Action response ranges from $1,800 to $2,800 at our firm, not including USPTO fees. If an Examiner Interview is advisable, expect another $600 for conducting the interview and reporting results thereafter.
The cost of responding to each office action can be $ 1,500 to $ 4,500. Once the patent is allowed, you have several weeks to pay the issue fee to the U.S. Patent and Trademark Office. That fee is $ 960 (or $ 480 for a small entity).
six monthsGenerally, you have six months to reply to a trademark Office Action. If you fail to respond, you risk abandoning your application. If you abandon your application, you will have to start the trademark registration process over again.
An Office action made by the examiner where the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment.
You essentially have four options for trying to overcome a likelihood of confusion refusal:Submit arguments and evidence against the rejection.File a Petition for Cancellation against the cited registration.Seek a consent and coexistence agreement with the owner of the cited registration.More items...
You should challenge any conclusion of obviousness that does not explain how the problem was known in the field or how the prior art or other relevant evidence suggested the solution. Be aware that even if the prior art clearly recognized the problem, it may not have suggested the solution.
Oftentimes, amendments to the claims are made when responding to a rejection based on novelty or obviousness. Even if you don’t think that the examiner is correct, you may still have to amend the claims. The reason is that it is difficult if not impossible to actually convince an examiner or someone else of anything. Rather, a useful perspective is that you are really providing new information (i.e., narrowing of the claim scope) so that the examiner can make a new decision. In this way, the examiner is not having to be convinced of anything.
The rejection is just the opinion of the examiner. Of course, the examiner’s opinion matters the most but that does not mean that you do not have options. See Step 4, below, on what you can do to respond to the office action and convince the examiner to change his or her mind.
The proper perspective on rejections is important so that you do not get depressed thinking about it. If this is the first office action and your patent application has been rejected, the rejection in and of itself is not a reason to abandon the patent application process.
Step 1: don’t abandon your patent application (Don’t despair) Step 2: Determine due date to respond to the office action. Step 3: Identify types of issues in the office action. Types of issues: Formalities versus Substantive issues versus an Action on the Merits. Identifying issues related to formalities.
Issues dealing with the form of the patent application refer to the formalities of submitting a patent application. Examples of these include: 1 Restriction requirement: i.e., more than one invention is being claimed 2 Drawing objections: e.g, if figures have light lines that cannot be reproduced 3 Claim objections: e.g., a term in the claims do not have the proper antecedent basis support 4 Specification objections: e.g., the patent specification may be missing a description to one or more of the drawings
The rate of rejection on the first office action is about 90%, whereas the allowance rate for utility patent applications run around 50% to 60%.
Many inventors feel as if an examiner doesn’t understand the invention because in the inventor’s mind there is only one invention not two or more. Inventors need to understand that the examiner is more likely right than wrong.
An Office action is written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner. Examples of Office actions include a restriction ...
The USPTO transacts business in writing. Applicants may submit replies to Office actions: by facsimile to the USPTO's Official Fax Number ( 571-273-8300 ); or. by hand-carry to USPTO's Alexandria, Virginia Customer Service Window.
A notice usually sets a two-month time period to correct the deficiency unless it accompanies an Office action.
Examples of Office actions include a restriction requirement, a non-final Office action, and a final Office action. Notice of Allowability. If the patent examiner determines that all of the pending claims in the patent application are allowable (e.g., eligible to receive a patent), then a Notice of Allowability (USPTO Form PTOL-37) will be mailed.
Most replies to Office actions (official letters) must be received within 6 months from the mailing date on the Office action. Office actions in almost all instances set a shortened period within which a response can be filed without having to pay extension of time fees. The shortened period is typically either two or three months, depending on the type of Office action. In certain circumstances, the Office action will specify a different response period. There are no extensions beyond the 6-month statutory time period for reply other than notices that do not have a statutory time period for reply. If an applicant does not submit an acceptable timely response to an Office action, the application will be held abandoned.
There are no extensions beyond the 6-month statutory time period for reply other than notices that do not have a statutory time period for reply. If an applicant does not submit an acceptable timely response to an Office action, the application will be held abandoned.
Will changing lawyers be detrimental to my case or legal issue? Changing a lawyer in the middle of an active litigation is like changing pilots in the middle of a flight. It will take time for the new attorney to get familiar with the file, particularly if the case is complex. In addition to potential delays, this process might also cost you money, since your new attorney will bill you for the time spent performing that review and getting up to speed. Also consider the immediate state of your case. Is there an upcoming appearance, hearing, or motion deadline? If so, your new attorney might not have time to adequately prepare.
This might be due to the lawyer being new to the practice, venturing outside his or her primary area of expertise , or just not being as sharp as you'd like.
Lawyers depend on their legal fees to earn a living, so most attorneys are motivated to do a good job and make their clients happy.
The attorney is unprofessional. For example, the attorney wastes time in meetings, does not appear to be prepared for court, seems very disorganized, or in the worst-case scenario, seems to be mishandling your funds or documents. The attorney does not communicate with you.
If any fees were paid in advance and the work hasn't been done, ask for a refund of the fees. Also, ask for an itemized bill listing all pending fees and expenses. If yours is a contingency case, your new attorney will pay your old attorney from any money that you ultimately recover.
If you are a party to litigation, confirm that your new lawyer will notify the court as to your change in representation. When you meet with new lawyers, don’t bad-mouth your old one. Remember, the legal community can be small, and you may be speaking about someone’s close friend or former colleague.
If you feel that your lawyer simply doesn’t understand your goals and aspirations, you are not obligated to continue to the relationship . If, upon reflection, you think you have a valid beef with your attorney, first talk to him or her about the problem.
There are patent examiners that can and do inspire this level of venomous hatred. Whatever the wrong perpetrated by the examiner ceases to matter, however, when a response like this is filed. No one who could have helped will lift a finger, and this inventor is finished at the Office. This is not the way to proceed. Maintaining decorum at all costs is absolutely essential. A response like this does nothing to help, period.
Whatever one might think of patent examination quality, there is absolutely no call for using foul language to berate examiners in an Office Action Response. It is one thing to point out that it seems clear that an examiner has not read what the applicant has submitted, but it is quite another to call the examiner and the examiner’s supervisor a “f**king a**hole.”
On September 19, 2016, a pro-se inventor filed an Office Action Response that will go down in the annals of Patent Office history right up there with the Are You Drunk Examiner? response filed several years ago.
Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message. Tags: famous inventors, inventor, office action, patent, patent examiner, patent examiners, patent prosecution, patents. ...
Gene Quinn is a Patent Attorney and Editor and President & CEO of IPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting ...
The inventor did not like being told that his claims would violate the laws of Physics, which lead to a two-page discussion about the ambiguity of the term “laws of Physics.”. Interestingly, the inventor took issue with something that would have been an interesting argument but for him going completely off the rails.
Stack Exchange network consists of 178 Q&A communities including Stack Overflow, the largest, most trusted online community for developers to learn, share their knowledge, and build their careers.
Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on the principal's behalf.
Ask Patents is a question and answer site for people interested in improving and participating in the patent system. It only takes a minute to sign up.
Asking for help, clarification, or responding to other answers.
I don't believe so. Patent practitioners have a registration number which is publicly searchable at the USPTO (as you have found). However, I do not believe there is any way to search by customer number.
However, in practice this should not happen. Ethically, an attorney can only act on your instructions. They cannot make decisions on your behalf.
In fact, the ALJ was so troubled by the patent attorney’s misconduct that he recommended the imposition of a six-month suspension–six times greater than the one-month suspension proposed by the OED Director.
The Schroeder opinion reminds us once again that we as lawyers have a duty of civility and professionalism. One can be an effective advocate without behaving like a complete jackass. The practice of law is a profession. As professionals, we are required to maintain a level of respect and decorum in our dealings with each other, tribunals, and third parties.
The ALJ found that Schrader had engaged in “undignified or discourteous” conduct before the Office, in violation of 37 C.F.R. Section 10.89 (c) (5) . The ALJ further concluded that Schroeder’s tirades amounted to disreputable or gross misconduct and conduct prejudicial to the administration of justice.
In doing so, it has also created a new menace. Today, the most dangerous four-letter word in the English language may very well be ‘send.’” Of course, as the ALJ noted, “the ability to file documents electronically to USPTO does not absolve patent practitioners of their responsibility to consider their words carefully before they press that final button. “
The USPTO pulled the “ response” as an improper filing. The patent application subsequently went abandoned.
Once again, Schroeder’s idea of a “response” to the office action was to attack the patent examiner:
included in a free dictionary online called www.USPTOexaminerswhoaremorons.com. In it, sure enough, a picture and name of the current examiner was found. Not surprisingly, enumerated synonyms include the following: “Down’s Syndrome, idiot, lazy, incompetent, blind, stupid, worthless.”