I have had the fortune of working with some brilliant and honest colleagues over the past few years, and I would recommend them without hesitation. But, when you spend enough time in any industry, you hear certain horror stories. As with any group, there will always be some bad apples, and it is often difficult for a client or inventor to judge the quality of his patent attorney's work product. I will try to shed some light on this issue. Here are ten reasons to fire a patent attorney.
1. Your patent attorney is not responsive. Everyone is busy, and it may be unrealistic to think that your attorney will always answer every call on the first ring. As a rule of thumb, however, calls should be answered within a few hours, and emails within one business day. Urgent requests should be handled with care, and there should be a plan in place to handle emergencies. If it seems that you always have a hard time getting hold of your attorney, it likely means that you are not a priority and it may be time to look elsewhere.
2. Too many extensions of time. When prosecuting a patent application, the USPTO sets extendable response due dates. For example, when responding to a non-final office action, an applicant has three months to respond, and three 1-month extensions upon the payment of a fee for a total of six months. Attorneys who are busy often take these extensions of time and cover the cost for their clients. There is nothing an attorney can do about a client's delay, and every once in a while circumstances will require an extension of time. However, if the attorney is habitually late in responding to office actions, this becomes a detriment to the client even if the attorney covers the late fees. This is because the term of a granted patent may be adjusted to include an additional period due to USPTO delays, and applicant delays are considered when counting this adjustment. In short, a habitually late attorney can be the reason that you lose days, weeks or months of patent term.
3. Your attorney is slow to file applications. A few years ago, the USPTO transitioned from a first-to-invent patent system to a first-to-file paradigm. This makes the filing date of a provisional patent application more important than ever. If your attorney sits on an invention disclosure for months without working diligently with you to get the application drafted and filed, it may be time to consider a change. In some technologies, a few months, or even a day can mean the difference between having valuable property, and having nothing at all.
4. Missing key deadlines. Patent offices around the world have strict timelines. If your attorney misses a date, your application may go abandoned. While there may be an opportunity to revive an abandoned application, your rights may be greatly altered. Similarly, failing to file a foreign application within the proscribed time periods may result in losing all protection for an important product in that foreign jurisdiction--perhaps even in all foreign jurisdictions. Some mistakes are irreversible.
5. Undisclosed conflicts of interest. It is common for patent attorneys to become specialists in a given technology. This results in potential conflicts between clients, and attorneys should be transparent with their clients in discussing these possibilities. If you find that your attorney has been representing you and your competitor with similar subject matter, it's time to make a change. In Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, the Supreme Judicial Court of Massachusetts that "the simultaneous representation by a law firm in the prosecution of patents for two clients competing in the same technology area for similar inventions is not a per se violation of" the Mass. Rule of Professional Conduct 1.7. However, if such conduct is not a violation per se, a client should strongly consider alternative counsel if he suspects that his attorney has a conflict of interest, or if the attorney is not forthright in explaining potential conflicts. There should be no question that your attorney will act in your best interest.
6. Mishandling of confidential information. Mishandling confidential information may result in the loss of attorney-client privilege. Your patent attorney should be competent enough to not only maintain confidentiality, but to advise you and your team accordingly.
7. Not citing relevant art. Applicants and their attorneys have a duty to disclose to the USPTO all known prior art that may be relevant to the patentability of an invention. Failure to uphold this duty may render a granted patent unenforceable. In some cases, there may be no known art to cite. In other cases, an attorney may have reviewed certain art and determined that it is not relevant to patentability. If, however, your attorney advises hiding known relevant art to gain allowance, then you should run the other way.
8. He does not care to understand your business. An IP portfolio should be crafted to advance the goals of the client. Your attorney should understand not only your business and your products, but those of your competitors as well. Having a patent attorney prosecute an IP portfolio without understanding the client's business or products is analogous to giving a blank check to your realtor and telling him to purchase a property, any property.
9. Churning. This is perhaps the worst example of misconduct, and it is one of the most difficult to detect. It is the worst because it requires malicious intent on the part of a patent attorney, not just incompetence. Churning may involve filing incomplete or junk responses to office actions, or filing a large number of unnecessary divisional or continuation patent applications to increase the amount of billable work. This is a serious charge, and should not be tossed around lightly. Keep in mind that a perfectly reasonable response may be deemed incomplete by the USPTO, and it is often in a client's best interest to keep a patent application family alive by filing one or more continuation or divisional applications. But, a pattern of applications going nowhere in prosecution, and a series of patent filings with no strategic direction or expected value require answers. Churners have a "tell." They will typically try to create distance between the client and the patent portfolio, and will rarely attempt to educate their clients.
10. Padding Time. If you discover that your attorney has been padding his time, an immediate change is warranted. In one instance, an attorney was said to have billed more than 24 hours in a day. Not only is the relationship likely beyond repair, but it is also time to seriously consider filing an ethics complaint, and perhaps a malpractice suit.