Maintenance Fee Reminders as Indicia of On-Going Attorney-Client Relationships

There's a split in the law (even in the USPTO) on whether a lawyer who calendars or sends maintenance fee reminders creates an on-going attorney-client relationship with the recipient/patent owner.  This is highly significant since, for example, a lawyer who represents a client cannot be adverse to it, at all, and "adversity" has a very unwieldy definition in all areas, but especially patent practice.  (In addition, in some states an on-going attorney-client relationship tolls the running of the statute of limitations.)

So, what do you think of this language, for an engagement letter, say, to help avoid misunderstanding?

"If a patent is granted to you as a result of our prosecution, you must periodically pay maintenance fees or the patent will lapse, perhaps rendering it worthless.  Generally, fees will be due 3½, 7½, and 11½ years after the date of issuance.  We will send to your last known address maintenance fee reminders as a service, even though our attorney-client relationship has concluded, but only if you request us in writing to do so when we forward any patent to you.  If you do not ask us in writing to do so, we strongly suggest that you either hire a commercial service to do this for you, or place reminders of maintenance fees in more than one calendaring system.  Failure to docket maintenance fees can result in the loss of patent rights."

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

10 thoughts on “Maintenance Fee Reminders as Indicia of On-Going Attorney-Client Relationships

  1. 6

    False marking was on the verge of being a major driver to litigation and the enforcement of the privelege of marking.

    Many forget that marking is not (still) a right, but a privelege that brought a de facto notice benefit but exacted a cost of maintaining the connection between the item so marked and the patent claims.

    This connection existed both in the requirement to delist the marking when the patent expired and when the product changed (products do change during their life cycle) such that patent coverage no longer innured.

    The very real liability raised by how the false marking statute was evolving with a (corrected) view of a per item penalty has been gutted to a great extent with passage of the AIA: expiration no longer a violation, and limitations on who can bring suit.

    Any law firm that has clients with marked patents but does not adequately convey the risks to their clients are at risk.

    Also, exactly who can police (the government and only those who suffer competitive injury – as opposed to any watchdog or interested citizen) greatly reduces exposure.

    It should be noted that false marking is still a risk for companies that mark and make product changes during the life of the patent.

    How many practitioners out there are aware of this liability (even though it be reduced)?

  2. 5

    Anon, why does that matter to the issue? Liability to a current client, disqualification, tolling of limitations — staggering issues. Why does false marking matter?

  3. 3

    I personally think firms should get out of the calendaring business. But that is based upon a skewed view of things — from my perspective, all calendaring is is a liability trap. Apparently, for some firms, it results in recurring business and/or revenue. But be careful.

  4. 2

    They better know what it (the AC relationship) is as they are clients and when you take them on you should have explained it to them.

    The article makes good ancillary points that should be considered. Also what should be considered is the message you are sending the client and whether or not a client is “welcome back” with his next patent efforts (assuming, of course, that continual efforts on multiple items are not already underway).

  5. 1

    I am not sure a warning to a client about the AC relationship should even be relevant, do they even know what it is or what maintaining or losing it entails?

    A better practice might be to get off of all the cases where you do not wish to maintain such a relationship. I find significant issues with the way firms use and police customer numbers at the USPTO, and thus giving them this protection when they are recieving reminders for long ago clients is a poor practice.

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