Lynnwood, WA asked in Patents (Intellectual Property) for Washington

Q: My patent attorney submitted wrong application to USPTO! Is this a malpractice case? Can I at least ask for a refund?

In 2016, I hired a patent attorney in 2016 to file, prosecure my invention. It was a tedious process; after repeated meetings, he prepared the first draft of the application. Thru a back-and-forth process, I revised his first application draft more than half a dozen time. Now, it turns out that he filed with the USPTO the first, rough, early draft application. This is not the final version I had supplied to him after repeated back-and-forth revisions. As a result,

(a) My current patent attorney is going through extensive work, costing me a lot of analysis time and support time;

(b) Costing me additional legal fees (nearly 3x as much).

Nothing can bring back the value of a proper application filing. For the minimum, I want him to refund me what I paid him.

However, he is not even willing to admit wrong doing (!) and refuses to answer my questions!

My question is: Is this malpractice? Do I have a case? Can I expect a refund?

Thanks much


1 Lawyer Answer
Peter D. Mlynek
Peter D. Mlynek
  • Patents Lawyer
  • Moorestown, NJ

A: Wow, what a nightmare. I am so sorry that this type of thing happened to you.

Your first patent attorney sounds like he did not know what he was doing. Typically, one or two meetings are more than sufficient; generally, there is little reason for an in-person meeting anyway. Although there are many different ways for a new client and a patent attorney to work together during the drafting process, generally the attorney would sent claims early in the drafting process for the client to approve, then a rough draft is sent for inventor's comments, and then, optionally, a final draft. I've never heard of anyone taking half a dozen times of back and forth, unless the client keeps changing his mind.

As far as filing the first version, rather than the 6th version of the patent application, that is a big screw up. I have no idea how that could happen. But screw-ups do happen. Normally, the same day that the application is filed, or very soon thereafter (1 to 3 days), the patent attorney downloads the patent application and all of the accompanying documents from the non-public portion of the Patent Office website ("private PAIR"), and sends it to the client with a reporting letter. If there are any problems (sometimes during the electronic processing strange formatting problems pop up, such as tables get messed up or special characters get misinterpreted, etc.), the attorney or the client would catch such problems. If the wrong version of the application was filed, it should have been caught the same day or a few days later. It could have been corrected the same day that it was caught.

I have no idea if you have a case against the first attorney. You are going to have to talk to malpractice attorney about it.

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