What are warning signs that may warrant a change in your US patent agent or law firm?
When it comes USPTO patent prosecution, many factors are out of the control of your US patent agent or attorney. For example, your US agent cannot control the timing of the examiner’s review although there are ways to speed up examination. So it makes sense to focus on what is within a patent attorney’s control. If you find that your US patent practitioner is lacking in the areas discussed below, then it might make sense to consider a change.
Looking for a new US patent attorney to take over your pending patent application? Call US patent attorney Vic Lin at (949) 223-9623 or email firstname.lastname@example.org to explore how you can help get your patent granted.
How prompt is your US patent agent or attorney?
Of all the factors surrounding your choice of a US patent agent or lawyer, timeliness is one of the easiest things to control. How promptly is the US patent agent or attorney reporting Office Actions? Are they taking several weeks or even months to report an Office Action? Has their delay necessitated extensions of time for a response? Who will pay for the USPTO extension fees?
Perhaps, the US IP law firm is simply too busy with other matters. How quickly do they respond to your emails?
Did your US patent practitioner drop a deadline?
It can be challenging and expensive to revive an abandoned patent application. Assuming your patent application can be revived, you will need to pay substantial USPTO petition fees.
Make sure you are receiving prompt and clear communications on your patent filings. Do not settle for last-minute correspondences requiring immediate action, especially if this is an ongoing pattern.
How effective is your US patent agent or attorney?
The efficacy of a US patent agent or lawyer is more tricky to gauge. Sometimes you end up with a very difficult examiner who will force you to file multiple Office Action responses.
Has your patent practitioner conducted an examiner interview to see what claim amendments might be more persuasive?
Who drafted the specification? US or foreign counsel? If the specification was drafted by a foreign agent, then the US patent practitioner can only work with what they have been given.
If you have received multiple obviousness rejections under Section 103, perhaps you need to consider approaches beyond the standard response. For example, an inventor affidavit might make sense in certain situations. You might even consider filing a CIP application in addition to, or in lieu of, an Office Action response.
How much does your US patent firm cost?
Costs can be tricky to compare. For example, suppose one patent firm charges a slightly lower fee for an Office Action response than that of a second patent firm. Let’s assume, however, that the second patent firm obtains allowances with fewer Office Actions on average than the first firm. Which US patent firm is more cost-effective?
Our firm’s philosophy is to focus first on the strategies that will lead to a higher probability of success, and then determine costs accordingly. That being said, we do offer flat rate costs for patent and trademark applications here.
We receive many inquiries from potential clients who take the reverse approach. They have tough patent or trademark rejection which will require a more complex solution. Instead of asking about the strategies, their first question is “how much?” Some potential clients are looking for cheapest response, and not a real solution. That’s like trying to fail at a lower cost.
Our goal is to win. Costs are dictated by winning strategies, and winning strategies actually save clients money in the long run.
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