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   Author  Topic: Opinion-Urgent  (Read 472 times)
Bill Richards
Full Member

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Posts: 758
« on: Aug 10th, 2006, 4:08pm »
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I have an opportunity to take a case on contingency.  The work would require finding buyers for a patent portfolio.  I would be working together with another patent attorney.  The other attorney is suggesting we put together an "analysis" of the portfolio by outlining what's happend in the PTO.  It's sounding much like an opinion.  And, it would be for third parties.  I'm looking for information on the risks in doing this.  I seem to recall there are some, the least of which is representing to the third parties and getting sued when things don't go as planned.  (Always a risk; I know.)  Any advice would be welcome.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
Senior Member


Posts: 2584
Re: Opinion-Urgent
« Reply #1 on: Aug 11th, 2006, 4:06pm »
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So, if I understand correctly, you're thinking of doing some due diligence for your prospective buyers.  You realize that, no matter what you produce, it's going to sound like you're saying, "Trust me; this is a valuable patent application.  Now, please give me lots of money."  So, the potential upside is minimal at best.  The potential downside is that whatever you produce is likely discoverable during litigation and may turn out to be contrary to a position you'd like to take in litigation.
If I were interested in making a pending application look better in a way that won't harm litigation and would make me sound credible, I would file a Petition to Make Special (the D-I-Y Office Action variety) and share that with prospective buyers.  There, you'd have a search and your position on the search and you'd be putting your money where your mouth is by making it an official submission to the Patent Office.  In addition, as the Petition would be a matter of public record anyway, there's no way you'd be saying off-record stuff that you wouldn't otherwise be bound by.
Of course, not many buyers are going to read and/or understand the Petition.  So, you might explain orally that the Petition is based on a search you conducted and explains to the Patent Office that you've determined, based on your search, that your application ought to be allowed.  I'm guessing that would be the best way to achieve your goal without saying too much off the record.
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James D. Ivey
Law Offices of James D. Ivey
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