Failed Patent Search

[dhelsel1]

What is the name of your state (only U.S. law)? Kansas

I received notice from the patent office that the majority of my claims (the important ones) were rejected based on prior patents. My questions are as follows:

1- Do I have the right to go after the attorney for the costs involved in the patent process?

2- Should I file a claim with his insurance company, take him to court or both?

3- Would he be able to counter my suit and come after me for his defense fees?

The last thing I want to happen is to go after my costs and end up worse off than having done nothing at all. I think the patent practice should be like any other professional practice in that one should be liable for the mistakes they make. He missed two patents published prior to my search date. In my opinion, that shouldn't have happened.

Any advice would be greatly appreciated.

[divgradcurl]

Let me ask you this -- did you ask him, or pay him, to do a prior art search before he drafted your patent application and submitted it? Typically it is NOT standard practice to do a prior art search before filing a patent, so if you didn't specifically request it, and there is nothing in a contract that specifies that a search should be done, then it is unlikely such a search would be performed, and he would have had no way to know about the prior art.

[dhelsel1]

I did pay this attorney to perform a patent search prior to writing and submitting the patent application. He informed me he found no patents covering my application.

[divgradcurl]

Well, if you don't feel like the attorney provided you the service you paid for -- or negligently provided the service -- there may be options. The first one is to simply talk to your attorney, and see if you can negotiate a settlement. Beyond that, you may want to head to a law library or Google and do some research on fee disputes and attorney malpractice -- your state's bar association may have information. If you weren't using an attorney, but were using an agent. go the USPTO website, [url=http://www.uspto.gov]United States Patent and Trademark Office Home Page[/url], and navigate to the office or Enrollment and Discipline, and see what information they might have.

All that said, though, is the rejection a final rejection? It's certainly possible that your agent or attorney did a search found nothing, but the examiner did his own search and did find art that your guy missed, or that your guy decided weren't relevant. There is no exact science here. If there was truly easy-to find, U.S.-patent based art that was directly relevant to your invention, that's one thing, and that might suggest negligence, or at least laziness.

But if the art cited against you is from a different field and the examiner is analogizing, or if the art is asserted against you in combinations (A in light of B, for example), it may not be so easy to find fault with your attorney or agent. Just for a point of reference, real complete exhaustive searches -- which include not just searching, but analyzing the search results for relevance -- can often take months, and cost hundreds of thousands of dollars. It's hard to imagine that you spent this kind of money making such a comprehensive search!

All that said, your first step is to simply talk with you agent or attorney, and find out exactly what is going on. If, after you talk, you still believe that there is negligence, then you can try and work something out with your agent or attorney. If that fails, then start your research.

[dhelsel1]

I do have a follow-up question based on the last post. I've done some searching for similar situations and their outcomes, but have found few searching online (Google). The couple I have found questioned whether the attorney's search was sufficient in depth and breadth as compared to common practices in the field. Here is my question regarding the question of whether my attorney performed a search comparable to standard practices in the field. I spent 15 minutes searching for patents covering my application and came upon two covering the very thing I was trying to patent. Would you say that constitutes negligence on his part?

I am apprehensive about taking an attorney to court. The amount I have lost is enough I feel I should pursue the matter, but what worries me is if I end up losing I might find myself in a countersuit for defense costs and be further in the hole. Are counter suits for defense costs a common practice in these matters? It seems like the threat of countersuits is a pretty effective deterrent to legal action against an attorney.

Again, any advice would be appreciated.

[divgradcurl]

The problem with trying to prove negligence is that if this were to go to court, you would need to hire an expert witness -- probably another patent attorney -- to opine as to what a "reasonable" search is. The court is not going to take your word for it. Unless there is a considerable amount of money on the line, this probably isn't going to be a cost-effective pursuit.

If you can't work out an arrangement with your attorney, rather than filing a lawsuit, a better choice is to contact your state's bar association and/or the USPTO office of enrollment and discipline. Both will have resources for you to file a fee dispute without needing to file a lawsuit or hire a lawyer. If you were working with a patent attorney, the easiest way is probably to go through your own state's bar association; if you were working with an agent, you will need to go through the USPTO. File a fee dispute, and you may get some of your money back without having to go through the hassle and expense of filing a lawsuit.