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Can I sue my non-performing patent attorney? See details below.

Albuquerque, NM |

In 2005 I paid about $4000 to an attorney to file a patent application on an invention of mine. This fee also included copyrights for two books I have written. I have never seen any copyrights. In 2009 one group I was pitching my invention to said that it was unusual to take so long to get a patent. So I called the Patent Office and they had never received any application! Basically, this guy just took my money and did not pay the filing fees to send my application forward. I confronted him and he said he “had no record of ever sending it off.” He did file electronically and start the process from scratch. In submittals there were some smudges and the original application was returned. He then paid another fee to resurrect the application and then it died again. Eventually, by staying after him we did get an examiner who has questions about some of the claims and the clock is ticking on this one. I have over 20 pages of logs of my calls and this guys lies.
I tried to see if anyone I had talked to about the invention would have bought it if I had had a patent and came up empty handed (people don’t want to get involved).
However I have suffered considerable anger dealing with this non-performer. Can I sue him for non-performance (and get back my $4000)? Can I sue for punitive damages for his unethical conduct? Which court should I try to get the case into? (Small claims?)
Thanks

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Attorney answers 3

Best Answer
Posted

Echoing Attorney Burdick's advice, I'd be finding another attorney stat, and also be consulting with an ethics/professional conduct/malpractice attorney familiar with USPTO, as frankly this sounds like malpractice and breaches of a half dozen or more ethical rules.

The author is a Maryland attorney; however no answer given on Avvo is intended as legal advice or intended to create an attorney-client relationship. Dan's expertise lies in the electronic entertainment (video game) industry, as well as complex internet law issues, electronic free speech, entertainment law, copyright and trademark law, and computer fraud. He primarily represents game developers and founders of emergent internet technologies.

Posted

If your facts are accurate, you should first see another patent attorney to determine if you can still protect your invention, if any, and to get a better analysis of the status. If the new patent attorney confirms you have not been treated properly by your prior attorney, write the prior attorney and request your $4000 back from the patent attorney. If he refuses, and you feel you are justified in your position, you can report him to the OED at the PTO http://www.uspto.gov/ip/boards/oed/oedcontact.jsp or to the state bar association of the state where he is licensed. You could sue in small claims court. You will not get punitive damages.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

Asker

Posted

Many thanks!

Bruce E. Burdick

Bruce E. Burdick

Posted

Good luck.

Robert Pecco Baker

Robert Pecco Baker

Posted

I concur that Mr. Burdick's answer is full, complete and correct.

Posted

In addition to what counsel have stated, if you decide to sue for malpractice keep an eye on the Supreme Court and ask your attorney to confirm that the case is filed in the correct court. There is a case pending that is probably going to address whether such claims must be brought in federal or state court, and the circumstances that govern that choice.

See this link for a summary: http://www.lexisnexis.com/community/litigationresourcecenter/blogs/litigationblog/archive/2012/10/09/u-s-supreme-court-to-decide-jurisdiction-in-patent-malpractice-cases.aspx

THIS RESPONSE IS INTENDED TO CONVEY GENERAL INFORMATION ONLY. IT SHOULD NOT BE RELIED UPON OR TAKEN AS LEGAL ADVICE. FURTHER, THIS RESPONSE IS NOT INTENDED TO AND DOES NOT CREATE AN ATTORNEY-CLIENT RELATIONSHIP.

Asker

Posted

I will have to keep an eye on this one. Thanks

Daniel Gary Rosenthal

Daniel Gary Rosenthal

Posted

Good catch Mr. Slominski, I wasn't aware of the pending case.