Has your patent attorney retired?
If your patent attorney has retired or will retire soon, don’t freak out. This post will walk you through the necessary steps so that important deadlines do not fall through the cracks. You will ultimately need to find a new patent practitioner, and this guide on how to choose a patent attorney may help.
Get a List of Your Patent Filings and Deadlines
Initially, make sure to get a list of all your patent filings and corresponding deadlines. Some deadlines may be extendable, but don’t assume you have more time without confirmation.
If you filed any foreign patent applications, make sure to get the contact information of the foreign associate for each case. Our firm works with several foreign associates in each major foreign country, but it can save money to continue working with the foreign IP firm currently handling a particular foreign filing.
Find Out Which Patent Applications Are Related
This can get easily overlooked in the chaos of transferring your cases, but make sure your retired patent attorney identifies which pending patent applications are related to others. This is important because you do not want to abdicate your duty of disclosure by failing to disclose known, material prior art references.
For example, let’s say a pending US utility nonprovisional patent application is related to an international PCT application. If new prior art is uncovered in the PCT application through a search report, you will need to file an IDS in the related US nonprovisional application and in any other related US patent applications.
Does the new patent attorney need to be local or in your same state?
No, the practice of patent law is federal. Therefore, you are not required to hire only patent attorneys in your state. Although the new patent attorney should be a lawyer licensed to practice law under a particular state, any registered patent attorney from any state can represent you.
What if you feel like showing your invention to a new attorney in person?
The pandemic has dramatically changed the way business people meet and share ideas. Nowadays, with the widespread use of online meeting platforms, you can show your ideas online without having to meet in person. In fact, an online meeting may even be advantageous to the extent that both parties can share screens that might not always be readily available in a conference room.
How to Research a New Patent Attorney
You should conduct a bit of due diligence before transferring your patent files to a new patent attorney. Here are some questions and factors worth considering:
- how many patents this new attorney successfully obtained;
- their stance on conducting examiner interviews;
- whether they bill flat rates;
- familiarity with international and foreign patent filings;
- whether they handle trademark filings and oppositions as well;
- whether they can help you understand how patent claims work; and
- whether they will suggest filing any child patent applications to broaden your patent rights.
How well does the new patent lawyer communicate with their clients?
What good is a patent attorney if you can’t get a hold of them? Does the new patent attorney return calls promptly? Can you talk to someone of the team if the patent lawyer is busy? How quickly does the firm replying to your emails? Do they have a support staff that can quickly handle administrative requests and questions?
One of our firm’s guiding principles is to err on the side of caution. That means sending constant written reminders of upcoming deadlines. We sometimes risk annoying our clients due to our continual reminders. While we don’t take ourselves seriously, we do treat deadlines very seriously. Our firm is hyper focused on getting our clients to make timely decisions.
Looking to replace your retired patent attorney?
Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help make your file transfer a smooth transition.
Vic Lin
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