I need to find a new patent attorney. I've had 3 rejections in 3 years for a very simple device.
Pahrump, NV
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Posted 27 days ago in Patent Application
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I hired a patent attorney 3 years ago. He submitted the application & it was rejected. Each time we get closer, but I believe the failures are a combination of a badly written application (The first denial was for typos, grammer & spelling) & an examiner that can not comprehend the invention. The next denial was for drawings & claimed prior art & the last was because the examiner doesn't understand the language they used in a previous denial. (Our original claim never used the language the examiner used in the 2nd denial & we were just talking their language to explain the invention & address their claims of prior art.) I told the attorney the 3rd answer would be his last & he better get it right. He did not. I want a new attorney to either file an answer or appeal the examiner. Thank you.
Answers (4)Alan James Brinkmeier
This attorney is licensed in Illinois.
Posted 26 days ago.
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This attorney is licensed in Wisconsin.
Posted 26 days ago.
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From your question, it sounds like you are in a sticky situation. I assume that the last reply from the examiner was made finial. If so, there are only a few things that you can do, (1) if any claims were allowed, then the reply should put the application in condition for allowance by deleting all the rejected claims; (2) you can file an appeal, but this is expensive; (3) you can file a request for continued examination, which requires you to pay another fee to the Patent Office. If your initial specification is very bad, I would recommend filing a continuation in part. The application can be redrafted preserving what is good, and amend what is bad. You will retain your filing date for the preserved parts, and get a new filing date for amended parts. You will also have to pay another filing fee for the RCE.
Disclaimer: the information provided herein is provided for informational purposes only. It is not intended to be legal advice or a legal opinion, or to be a substitute for legal advice or a legal opinion. Nor does author expect or intended that the reader will rely on the information provided in any legal matter at bar either ether currently or in the future. It strongly recommended that questioner seek legal counsel for a legal advice or an opinion on the subject matter discussed herein. Sadiq Aziz Ansari
This attorney is licensed in California.
Posted 26 days ago.
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Your situation is VERY common in the field, and does not necessarily point to a bad patent attorney. I'm not necessarily defending your attorney (he may in fact be sub-par), but it is common for patent applications to go through many rounds of rejections. Has your attorney tried interviewing the Examiner over the phone? Also, when applications are for "very simple devices," it is much more difficult to obtain a patent. What do you think is more likely to get a patent, a very simple device (table, chair, lamp, etc.), or a very complex device (new semiconductor device, etc)?
Mason Boswell
This attorney is licensed in Washington.
Posted 26 days ago.
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I agree with Sadiq and haven't heard anything yet that makes me think your attorney is doing a bad job. The patent process is very complex and often frustrating, and the quality of examination can sometimes be low. If your attorney has failed in any regard, it is in communicating to you and preparing you for the difficulty of the process so you knew what you were getting into going in. I would say that 4 rounds of Office actions is average or at least typical, often followed by an appeal when the examiner cannot be reasoned with. Beware of those who tell you what you want to hear. If you call another attorney, I'm sure many will be glad to tell you will be better off working with them, but you would be hard pressed to find someone that will understand the application better than the person who drafted it.
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