Sort of related, in theme, to the case below where Foley filed the terminal disclaimer without talking to its client (or so it seems). The decision by the OED in In re Hultquist, reprimanding the lawyer, is here.
Sort of related, in theme, to the case below where Foley filed the terminal disclaimer without talking to its client (or so it seems). The decision by the OED in In re Hultquist, reprimanding the lawyer, is here.
Thanks to DanH for the correct link. The facts are unsatisfactory. Fact paragraphs are in ().
A member of Patent Attorney’s (PA) firm! filed a provisional for Client, see (7)(b). On Feb 9, 2007, three weeks after the provisional filing on Jan 16, 2007, PA agreed to do the non-provisional and PCT, see (5). One year later, Jan 16, 2008, PA looked at the file for the first time, it seems. Apparently, the firm calendaring system does not give advance warning of drop dead dates, see (7)(a). PA concluded that the provisional was directed to a prior version of the invention, see (7)(c).
Queries: Whence cometh the later version? On Feb 9, 2007? I assume the OED saw copies of the latter version and PA could have had a good faith belief they were too different, see (12). True anyone?
Comment: Since Client filed a provisional on the first version, the client might want to do this for the second and abandon the first. However, PA did no talk to Client about anything, apparently.
If a paralegal can prepare the non-provisional applications, see (8)(b), the starting draft must have been well along. Where did it come from?
An Oct 31, 2012 PTO OA rejected all claims, see (13). Was priority needed? The facts don’t say, but a lawsuit with client was settled, see (12), so maybe not.
In view of the Patent Law Treaty, the Respondent could now file a petition to restore priority and the missed priority date could be corrected. Does this affect this decision and potentially exculpate him from discipline? It certainly would in the malpractice suit filed against him (which was settled)
The moral here is ALWAYS tell your clients about any screwups (and anything that could be construed as one), be polite and apologize, and offer to waive any fees. We all make mistakes.
Restoration is apparently not respected by the USPTO. MPEP 1828.01. The US/RO will accept a late claim, but the USPTO will not respect the late claim. What countries do respect it?
This one has nothing about Foley, Ned; Professor Hricik was comparing it to the Foley case.
The link above has an extra “http//” in it. I got the decision at link to e-foia.uspto.gov
Mein Gott! How many cases in one week do we have to see about Foley and screw ups before we begin to see a trend?
Comments are closed.