<div dir="ltr"><div>The OED rules are also "shall inform." <a href="https://www.bitlaw.com/source/37cfr/11_803.html">https://www.bitlaw.com/source/37cfr/11_803.html</a></div><div><br></div><div>I'm going to figure out if I can get in touch with prior counsel to get his side of the story.</div><div><br></div><div>Thank you everyone & it's rather disturbing to see so many cases like this.<br></div><div><br></div><div>Judith<br></div></div><br><div class="gmail_quote"><div dir="ltr" class="gmail_attr">On Tue, May 28, 2024 at 4:11\u202fPM Rick Neifeld via Patentpractice <<a href="mailto:patentpractice@oppedahl-lists.com">patentpractice@oppedahl-lists.com</a>> wrote:<br></div><blockquote class="gmail_quote" style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex"><u></u>
<div bgcolor="#FFFFFF">
<font face="Times New Roman">Judith - <br>
<br>
1. I think you are obliged to file a BAR complaint. I recall
without checking, that not doing so would be a BAR violation. (At
least in Virginia and probably most jurisdictions including PTO
OED).<br>
2. I assume your situation is similar to one that occurred in
2003. In that situation, a foreign firm approached me to find
out status on one of their client's cases, and it turned out upon
investigation that the US patent attorney failed to communicate
office actions and abandonments over a significant period of time
in many cases. I won't provide the application numbers or copy of
petition. But I will outline the contents of the factual
assertions in the petitions, one per application of course, and
this outline may help you.<br>
<br>
Petitions were titled as petitions under 1.137(b) for revival due
to unintentional abandonment<br>
<br>
<br>
My petitions all include three sections. I. Relief Requested. II.
Statement of Material Facts. III. Reasons why the petition
should be granted.<br>
<br>
<b>In the fact section.</b><br>
<br>
I outlined and quoted the email chain of communications from the
German attorney and the person from their client company that
became my joint client.<br>
<br>
The format is as follows:<br>
<br>
___________<br>
On 11/22/2005, at 5:43 AM, I received an email from (the German
patent attorney" stating:<br>
<br>
[quote]<br>
<br>
This email included a prior email to him from email address
[address] stating that:<br>
<br>
[quote; basically what their client said, asking about case
status]<br>
<br>
On 11/22/2005, at 12:16 PM, I sent a responsive email to [...]<br>
<br>
<br>
[quote, reporting my review of the status of application numbers
provided to me in the earlier email]<br>
<br>
<br>
On Wednesday 11/13/2005, at ... I received an email from [the
German patent attorney]<br>
_________________________<br>
<br>
You can just copy and paste the email exchanges into the facts
section which lays out the relevant facts. If you had verbal
discussion with you client, you can follow the same format,
Keeping in chronological, and summarizing each discussion. The
goal here is to show that you required assertion that the
abandonment was unintentional and that all time consumed since the
client became aware of the abandonment was not intentional
delay. So that you cannot be accused of improper conduct by
asserting the abandonment was unintentional, and so that the
petitions examiner will grant the petition.<br>
<br>
Include your multiple email to existing counsel and include that
you received no response and include his new professional
association and apparent change of professional practice.<br>
<br>
And include that you have submitted a copy of the petition to OED
as a BAR complaint.<br>
<br>
<br>
<b>In the Reasons Section</b><br>
<br>
<br>
You make the required assertion that the entire delay was
unintentional. You conclude that the facts relating to discovery
of the unintentional abandonment led you to conclude that the
client had no intent to abandon. You conclude that the showing of
actions taken since discovery show that the all time since
discovery does not constitute intentional delay to revive. That
is diligence to revive.<br>
<br>
If true, you point out that record counsel has failed to
communicate with you, and in any case your investigation found
that the client had no intent to abandon the application.<br>
<br>
<br>
<br>
Some old schoolers might say you should file a declaration from
the client. But the PTO should take your assertion of facts, as
true, since petitions are ex parte processes and your signature is
a certification of factual accuracy. And therefore you do not
need to submit a declaration from your client to have the PTO take
your factual assertions as true.<br>
<br>
</font>Best regards, Rick Neifeld, Ph.D., Patent Attorney
<div>
<p>
Neifeld IP Law PLLC<br>
9112 Shearman Street, Fairfax VA 22032-1479, United States<br>
Office: 1-7034150012<br>
Mobile: 1-7034470727<br>
Fax: 1-5712810045<br>
Email: <a href="mailto:richardneifeld@gmail.com" target="_blank">richardneifeld@gmail.com</a><br>
Web: <a href="https://neifeld.com/" target="_blank">https://neifeld.com/</a><br>
This is a confidential communication of counsel. If you are not
the intended recipient, delete this email and notify the sender
that you did so.</p>
</div>
<div>On 5/28/2024 3:22 PM, Judith S via
Patentpractice wrote:<br>
</div>
<blockquote type="cite">
<div dir="ltr">
<div>Thank you everyone!</div>
<div><br>
</div>
<div>As far as I can tell the attorney still exists but now is
practicing in a different field. We have sent multiple emails
to him at all addresses. The last email indicated we would
file a bar complaint. I have not gotten anything back from
him, not even an acknowledgement of our communications. I will
probably be calling his office.</div>
<div><br>
</div>
<div>I will not file a complaint without doing my best to talk
to him first and figure out what happened here.<br>
</div>
<div><br>
</div>
<div>Judith<br>
</div>
</div>
<br>
<div class="gmail_quote">
<div dir="ltr" class="gmail_attr">On Tue, May 28, 2024 at
12:10\u202fPM Bruce Young <<a href="mailto:bruce@youngtogether.com" target="_blank">bruce@youngtogether.com</a>>
wrote:<br>
</div>
<blockquote class="gmail_quote" style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex">
<div>
<div lang="EN-US">
<div>
<p class="MsoNormal"><span style="font-size:11pt">Judith,</span></p>
<p class="MsoNormal"><span style="font-size:11pt"> </span></p>
<p class="MsoNormal"><span style="font-size:11pt">I had
a similar situation a few years ago. See 62/512,345.
It should be visible in PatentCenter but if not, let
me know and I can send you a copy of the petition I
submitted. (Don\u2019t worry about the returned mail \u2013
you can see in the document that the envelope had no
address visible. I got the decision through PAIR. I
my particular case, my client had paid him to
prepare and file a provisional application, which
the attorney did, but he never paid the filing fee
to the USPTO. He never reported that to the client
and never reported that it had gone abandoned. He
even later filed a non-provisional claiming benefit
to the provisional (after it had been abandoned)
before ceasing all communication with them.</span></p>
<p class="MsoNormal"><span style="font-size:11pt"> </span></p>
<p class="MsoNormal"><span style="font-size:11pt">I
reported the practitioner (an attorney) to the OED
and he lost his right to practice before the USPTO.
I don\u2019t know if there was reciprocal action by the
Kansas Bar. When I investigated after this client
came to me telling me that their previous attorney
had disappeared, I discovered that he had ghosted
several clients. And in fact, the OED action listed
noted two different clients in their action.
</span></p>
<p class="MsoNormal"><span style="font-size:11pt"> </span></p>
<p class="MsoNormal"><span style="font-size:11pt">-Bruce
Young</span></p>
<p class="MsoNormal"><span style="font-size:11pt">(712)
541-9822</span></p>
<p class="MsoNormal"><span style="font-size:11pt"> </span></p>
<div style="border-width:1pt medium medium;border-style:solid none none;border-color:rgb(225,225,225) currentcolor currentcolor;padding:3pt 0in 0in">
<p class="MsoNormal"><b><span style="font-size:11pt;font-family:"Calibri",sans-serif">From:</span></b><span style="font-size:11pt;font-family:"Calibri",sans-serif">
Patentpractice <<a href="mailto:patentpractice-bounces@oppedahl-lists.com" target="_blank">patentpractice-bounces@oppedahl-lists.com</a>>
<b>On Behalf Of </b>Judith S via Patentpractice<br>
<b>Sent:</b> Tuesday, May 28, 2024 1:44 PM<br>
<b>To:</b> For patent practitioners. This is not
for laypersons to seek legal advice. <<a href="mailto:patentpractice@oppedahl-lists.com" target="_blank">patentpractice@oppedahl-lists.com</a>><br>
<b>Cc:</b> Judith S <<a href="mailto:judith.a.s@gmail.com" target="_blank">judith.a.s@gmail.com</a>><br>
<b>Subject:</b> [Patentpractice] Sample revival?</span></p>
</div>
<p class="MsoNormal"> </p>
<div>
<div>
<p class="MsoNormal">Hi All,</p>
</div>
<div>
<p class="MsoNormal"> </p>
</div>
<div>
<p class="MsoNormal">I have a small client that came
to me with some abandoned cases they hope to
revive. Their prior counsel has disappeared -- he
has been completely unresponsive. So I cannot get
anything from him. (I am filing a bar complaint,
because this is unconscionable -- one was
abandoned because of failure to respond to a
Missing Parts for $80 for a late declaration
surcharge.)</p>
</div>
<div>
<p class="MsoNormal"> </p>
</div>
<div>
<p class="MsoNormal">They thought they were coming
to me with pending applications.</p>
</div>
<div>
<p class="MsoNormal"> </p>
</div>
<div>
<p class="MsoNormal">Some of the earlier filings
have been abandoned for more than two years, and
they requested that I file a petition to revive
with a statement. I have not done that before, and
was wondering if anyone had a good example or
article about it since the new rules.</p>
</div>
<div>
<p class="MsoNormal"> </p>
</div>
<div>
<p class="MsoNormal">Thank you!</p>
</div>
<div>
<p class="MsoNormal"> </p>
</div>
<div>
<p class="MsoNormal">Judith</p>
</div>
</div>
</div>
</div>
</div>
</blockquote>
</div>
<br>
<fieldset></fieldset>
</blockquote>
<br>
</div>
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</blockquote></div>