[Patentpractice] Sample revival?

Tue May 28 23:11:23 UTC 2024

Judith -

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).
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.

Petitions were titled as petitions under 1.137(b) for revival due to 
unintentional abandonment

My petitions all include three sections. I. Relief Requested. II. 
Statement of Material Facts.  III.  Reasons why the petition should be 
granted.

*In the fact section.*

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.

The format is as follows:

___________
On 11/22/2005, at 5:43 AM, I received an email from (the German patent 
attorney" stating:

[quote]

This email included a prior email to him from email address [address] 
stating that:

[quote; basically what their client said, asking about case status]

On  11/22/2005, at 12:16 PM, I sent a responsive email to [...]

[quote, reporting my review of the status of application numbers 
provided to me in the earlier email]

On Wednesday 11/13/2005, at ... I received an email from [the German 
patent attorney]
_________________________

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.

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.

And include that you have submitted a copy of the petition to OED as a 
BAR complaint.

*In the Reasons Section*

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.

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.

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.

Best regards, Rick Neifeld, Ph.D., Patent Attorney

Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: richardneifeld at gmail.com
Web: https://neifeld.com/
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.

On 5/28/2024 3:22 PM, Judith S via Patentpractice wrote:
> Thank you everyone!
>
> 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.
>
> I will not file a complaint without doing my best to talk to him first 
> and figure out what happened here.
>
> Judith
>
> On Tue, May 28, 2024 at 12:10 PM Bruce Young <bruce at youngtogether.com> 
> wrote:
>
>     Judith,
>
>     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’t worry
>     about the returned mail – 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.
>
>     I reported the practitioner (an attorney) to the OED and he lost
>     his right to practice before the USPTO. I don’t 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.
>
>     -Bruce Young
>
>     (712) 541-9822
>
>     *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com>
>     *On Behalf Of *Judith S via Patentpractice
>     *Sent:* Tuesday, May 28, 2024 1:44 PM
>     *To:* For patent practitioners. This is not for laypersons to seek
>     legal advice. <patentpractice at oppedahl-lists.com>
>     *Cc:* Judith S <judith.a.s at gmail.com>
>     *Subject:* [Patentpractice] Sample revival?
>
>     Hi All,
>
>     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.)
>
>     They thought they were coming to me with pending applications.
>
>     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.
>
>     Thank you!
>
>     Judith
>
>
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