Should our patent attorney have caught an issue with our patent

[amalejko]

We are in Virginia. We hired a law firm to handle 2 patents for us. The first patent went great but the second one was returned by the U.S. Patent office saying the USPTO "objects to the drawings as submitted for having too much text". Our attorney said we would need to submit new drawings with reduced text which we did. THe attorney then charged us for a completely new patent ($4k). My issue is that I emailed the attorney repeatedly over several months asking them the status of the patent. We had no issues with the first patent which was extremely complicated in it's nature. The second one which was 11 pages long and three small pictures was a fairly simply patent (we had a previous patent pending that expired and sent them the submission from the previous patent and the attorney submitted it with no changes). After several emails over many weeks I finally told them not to submit the patent and that we will do it later in the year. The same day, I received the filing receipt for the patent.

My question is: Should the attorneys have noticed there was too much text on the 3 images? This is a very large patent firm in D.C. I feel that the patent was forgotten or ignored and when I said do not file, they rushed it. The attorney responsible for that patent, come to find out, left the firm either prior or shortly after the patent was filed.

I feel that a patent firm should know requirements for images?

Thank you,

Amy

 

[adjusterjack]

There's nothing simple about an 11 page patent application.

If it was that simple you should have done it by yourself.

Sorry, what's done is done and you owe him for the work.

 

[amalejko]

Extenuating circumstances?

The 11 page document was not modified, even 1 letter, 1 number from the document we sent them. They copied and pasted 100% into the application and submitted it. They did not ask a single question (our first patent went through over a dozen modifications). After months, the patent was submitted the day I told them not to submit it and the lawyer "left" the firm.

I know patents are not simple which is why we hired them. But I expected due diligence to be done on the patent. I sent numerous emails and got back "we will check on it" until finally I said stop only to all of a sudden have the patent submitted, paid 4k, rejected, billed 4k more.

That does not sound right to me.

I really just want to know would a seasoned patent attorney know that there was too much text in the images?

 

[Zigner]

The 11 page document was not modified, even 1 letter, 1 number from the document we sent them. They copied and pasted 100% into the application and submitted it. They did not ask a single question (our first patent went through over a dozen modifications). After months, the patent was submitted the day I told them not to submit it and the lawyer "left" the firm.

I know patents are not simple which is why we hired them. But I expected due diligence to be done on the patent. I sent numerous emails and got back "we will check on it" until finally I said stop only to all of a sudden have the patent submitted, paid 4k, rejected, billed 4k more.

That does not sound right to me.

I really just want to know would a seasoned patent attorney know that there was too much text in the images?

Frankly, "too much text" sounds a bit subjective to me.

 

[amalejko]

I don't know what that means...I really just want to know if it is part of the process covered by a patent attorney? Given the client does not know all the rules...which is why we hire a patent attorney certainly it cannot be the clients fault the application was submitted with images with too much text? Thank you for your time!

 

[Zigner]

I don't know what that means...I really just want to know if it is part of the process covered by a patent attorney? Given the client does not know all the rules...which is why we hire a patent attorney certainly it cannot be the clients fault the application was submitted with images with too much text? Thank you for your time!

It means that it might not be "common knowledge" as to how much text is "too much". To one examiner, the text in your submission may have been fine, whereas to another, it may have been "too much".

 

[amalejko]

Thank you but I still want to know if it is part of the attorneys process to review those images against the patent rules. I just read a couple of documents including US 5379130 and they clearly outline expectations of drawings...should I as the client have known that? Should the patent attorney have known that?

 

[FlyingRon]

While the attorney might have been expected to catch the error, it's quite possible that they appeared to be reasonable (even if the USPTO didn't like them). While the attorney likely is entitled to some fee for correcting the application, I suspect a whole "fixed fee" patent filing amount is likely a bit extravagent. I suspect there's a majority of the work NOT done the second time around.

Here is the information on how to dispute legal fees in Virginia: https://www.vsb.org/site/public/fee-dispute-resolution-program

 

[amalejko]

Thank you! We did the work; we researched the rules regarding text in the patent; we fixed the images and the text on the application itself and sent it back, highlighting the changes (Moving text into a legend). They refiled what we sent them, nothing more. This is what our invoice said. I appreciate the link and will explore a resolution.

“Receipt of completed, executed declaration from client; file declaration in US Patent and Trademark Office. (MINIMUM FEE $425.00)`. Receipt of non-provisional application specification for filing; preparation of application papers: transmittal and Application Data Sheet (ADS); file application in the US Patent and Trademark Office; correspondence to client reporting filing and forwarding copy of application, as filed. (MINIMUM FEE $1,425.00)`. Preparation and filing of Information Disclosure Statement in the US Patent and Trademark Office for submission of relevant background art or information (up to 10 references). (MINIMUM FEE $550.00)`. Receipt of completed, executed assignment document from client; recordation of assignment in US Patent and Trademark Office; receipt of Notice of Recordation of Assignment; corresponding to client reporting and forwarding same. (MINIMUM FEE $475.00)`.”

 

[quincy]

Thank you but I still want to know if it is part of the attorneys process to review those images against the patent rules. I just read a couple of documents including US 5379130 and they clearly outline expectations of drawings...should I as the client have known that? Should the patent attorney have known that?

A patent attorney should know the requirements for a patent drawing. The drawings should not contain text unless a drawing requires a single word or two. Drawings with a lot of text should catch the attention of the attorney and corrections should be made prior to submission.

Here is a link to section 1825: https://www.uspto.gov/web/offices/pac/mpep/s1825.html

You should speak to the attorney you hired before filing a complaint, to discuss the fees you feel are unreasonable. But it appears - based solely on what you have said - that your patent application was not handled properly.

Good luck.