[Patentpractice] Sample revival?

Wed May 29 00:32:36 UTC 2024

The OED rules are also "shall inform."
https://www.bitlaw.com/source/37cfr/11_803.html

I'm going to figure out if I can get in touch with prior counsel to get his
side of the story.

Thank you everyone & it's rather disturbing to see so many cases like this.

Judith

On Tue, May 28, 2024 at 4:11 PM Rick Neifeld via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>>
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240528/1cf1905e/attachment.html>