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Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3424
Experience:  Experienced in intellectual property law
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I have a patent filing due today, but my patent atty is

Customer Question

I have a patent filing due today, but my patent atty is being vindictive because payment was late. He did get final full payment 72 hours ago, and is now ignoring my pleas for response that he has filed. Again, due date today (provisional was filed last few 6th 2015). When I spoke with him briefly this morning he commented about how it is funny that I'm responsive to him now that the deadline is approaching, again he was paid in full 72 hours ago. Also, the patent paperwork was completed several weeks ago. All he has to due is U/L to the USPTO website. What should I do?
Submitted: 10 months ago.
Category: Intellectual Property Law
Customer: replied 10 months ago.
More details (first response was written on iPad)1. Communication: for the first several months (Aug 2015 thru Oct 2015), the atty. (hereafter Michael S) were incredibly difficult to reach, returning calls /texts/ emails once every 7-9 days after numerous failed daily attempts to communicate
2. Fees: Micheal S. initial fees stated it would only cost an additional $4000 (add on package deal) to add my additional product to the existing patent process for my other entity. This number quoted was far lower than the actual fees charged by Micheal S.
3. Invoices: Micheal S. repeatedly failed to provide invoices corroborating his fees. Once provided after weeks of protesting requests, he filed incorrect invoices including an extra $3000 fee that was already paid. He acknowledged the mistake as poor accounting on his part
4. Misrepresentation: Michael S. failed to clearly explain to my partner (hereafter Ken M) the full cost of the fees. Ken M. was under the impression Micheal S. was only going to charge 50% of what the end cost ended up being
5. Delays: Ken M. underwent surgery, other health issues, and needed funds for various domestic concerns which took priority. Ken M. clearly stated to Micheal S. and myself, that the fees will be covered when he can make payment. During this time period, Nov 2015 thru Dec 2015, it was difficult to communicate with us for payment arrangements
6. 1/28/16 Partial Remainder Payment: Ken M. paid Micheal S. a partial remainder payment on January 28th.
7. 2/3/16 Final Payment: Micheal S. received payment in FULL by February 3rd. Payment posted on the 5th.
8. Due Date: Micheal S. has been aware for some time that the due date was February 6th 2016
9. Non Termination - February 4th phone call - Micheal S. indicated that he has not terminated our relationship, but that going forward a retainer would be needed. He also indicated that he acknowledged payment has been received and he will fulfill his obligation to file the patent.
10. 2/6/16: Having called Michael S. from an alternative VOIP number, he answered the call he has otherwise ignored in the past. I repeated that the patent filing was due today, and he stated :“funny how when the deadline is here you are easy to reach”, then acknowledged receiving my texts (and subsequently ignoring them), then hung up saying he had other matters. This clearly indicates Michael S.:
1. acknowledged the payment
2. acknowledged the deadline
3. clearly suggests he is taking solace in avoiding us, suggesting vindictive behavior for delays in payment
Expert:  Alex Reese replied 10 months ago.

hello, it is a common problem with clients that wait until the last minute to instruct their attorney to prepare /file the utility patent conversion, there is often a time crunch to get the work done in time, but this situation is a bit different....If the work was done and payment was made then there is no reason not to file (unless he informed you that he would not be available to file during this time) and the patent attorney has a responsibility to file the patent. I would be very surprised if the attorney lets the deadline lapse on purpose, that would be malpractice. But from the PTO standpoint there is nothing to be done, if you miss the 1 year conversion deadline then that's it, you lose the provisional patent filing date...there is nothing you can do, no excuses can be made etc. If you had all the materials and know how to file you could do it yourself, but other than that you have to hope your attorney files it in time.

Customer: replied 10 months ago.
Can I hire you to file it? I have the completed docs on hand, just not sure how to fill out the cover page and the other page associated with the process.
Customer: replied 10 months ago.
Ok, he just texted me back and stated that despite the date being today and his WRITTEN acknowledgement that he WOULD file today, he stated: "The deadline is Monday, not today. I will also be sending you an engagement letter that needs to be executed before I will file." In other words, before he files he wants me to pay him an additional retainer. I'm sorry, not only is that malpractice by not filling, but clearly can be construed as blackmail right?
Expert:  Alex Reese replied 10 months ago.

Sorry, it's too late notice for me to file, and I can't just file someone else's work, I would need to work on it myself....he should have had an engagement beforehand but there's nothing wrong with having it before filing because it should be in place. If he is asking for another retainer then the timing is rather odd unless you have not paid in full for the patent preparation & filing fees and he is wanting it all covered before filing...otherwise its rather odd

Expert:  Alex Reese replied 10 months ago.

of course if he just wants more money with the threat of not filing by the deadline then that is improper.

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