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[dab2d]

and it is about to be ABN, by the party that filed A, is it wrong for the other party B to step in?

If they believe that they have a valid contractual claim that says that they are entitled to do so if party A ABNs the app? What if the Contract has not been presented to a court?

What are the pitfalls for an attorney working on behalf of Party B if the attorney believes that given the circumstances, B has a valid claim?

[JimIvey]

If I understand correctly, Parties A and B have some contractual relationship regarding a patent application.  Party A is about to abandon the application, and Party B believes it has the contractual right to step in and prosecute the application in that case.

You can try recording the contract and using it to file a power of attorney through Party B.  Though, I think there's an easier solution. 

If you're already a practitioner of record, Party B can assume direction of prosecution and pay your invoices.  Nothing would have to be filed in the PTO to effect the change. 

If Party A is your client, you'll need their informed consent, probably informed written consent.  If Party A is abandoning the application because they don't care about it, that might solve the whole thing. 

If Party A is your client and they expressly forbid you from avoiding abandonment or helping Party B in any way, I don't see much wiggle room for you to maintain the application.

Regards.

[dab2d]

What if party B is your client and party A has another attorney. You are stepping in to take over prosecution.

[JimIvey]

Ah, that's different. 

If you want to record the contract and rely on that for Party B to file a power of attorney, you'll have to establish a few things.  First, the contract will have to refer to the application in question by application number.  If it doesn't, you'll need a separate paper signed by Party A that does include the application number.

Second, if the contract specifies prerequisite conditions that trigger Party B's right to assume prosecution, you'll want those to be very clearly demonstrable.  It would help if the conditions are something the Office can easily verify, like abandonment of the application or failure to respond at least one month prior to abandonment of the application (to leave time to save it before abandonment).

If that fails and Party A might actually agree to the assumption of prosecution by Party B, contact their attorney or have Party A contact Party B (I'd recommend the former).  If revival means that Party A will receive more money (or something of value), it would seem they'd go along with it.

The next question would be the form of papers to file.  Party A can add you to the power of attorney, but that might present conflict issues for you.  Party A can authorize Party B to act as its agent in prosecuting the application, but I don't think there's a form for that.  Someone would have to draw up the contract.  I think that's the proper way to do it, but that's getting away from patent law and getting into contract and agency law.

If Party A doesn't care and refuses to do anything and the contract isn't very explicit about Party B's rights to intervene, I don't think the PTO would accept anything short of a court holding that Party B has the right to assume prosecution.  Presumably, recording the court holding would be sufficient.

Regards.

[dab2d]

Sorry for asking more questions, but you have spurred extra thought patterns in my head.

What if A is a corporation that was dissolved by its own hand? Or dissolved because it failed to maintain the proper state requirements.

I always thought that the PTO does not really get involved too much in ownership issues. Have you ever seen an issue where ownership of an application became a point of contention?

[dab2d]

One more question:

Second, if the contract specifies prerequisite conditions that trigger Party B's right to assume prosecution, you'll want those to be very clearly demonstrable.  It would help if the conditions are something the Office can easily verify, like abandonment of the application or failure to respond at least one month prior to abandonment of the application (to leave time to save it before abandonment).

How and where would you do that... assignments? They just record. Do you make this argument in some sort of petition?

[NJ Patent1]

"If I understand correctly, Parties A and B have some contractual relationship regarding a patent application.  Party A is about to abandon the application, and Party B believes it has the contractual right to step in and prosecute the application in that case"

In line w/ Jim’s post, what are the conditions precedent that trigger B’s rights to step in?  Are they memorialized in a writing?  (N.b. I spend a lot of paragraphs in “joint development” agreements on this point, and it’s not always simple).  If yes, IMO the writing affects title to the invention / application and should be recordable.  Record the memorializing document and step-in under the “apparent authority” conveyed by the document (conditions precedent having been met) to prevent abandonment, and preserved B’s (ur client’s) rights under the document (i.e. the contract).   

I haven’t seen the “K” and I can envision you riding in on a white horse, rescuing the app from abandonment, and carrying it off to allowance land.  “A”  says “thanks dab2d, we’ll take it from here”!  The ultimate outcome would most likely turn on the language of the K, and maybe equity (e.g. unjust enrichment?) as applied in the appropriate jurisdiction.

Now, danger to YOU as a practitioner for stepping in?  I hope I’m right, if a reasonable interpretation of the K gave ur client B “step-in rights”, I’d hate to think you’d have problems with OED for defending your client’s “rights”. 

[JimIvey]

What if A is a corporation that was dissolved by its own hand? Or dissolved because it failed to maintain the proper state requirements.

Then, the application is forever orphaned.  The only way that another can take over prosecution is if the asset(s) (applications and patents) are acquired and identified by number, e.g., in a bankruptcy sale.  One of my portfolios was acquired by MSFT in that way.  Other portfolios of mine have just disappeared -- "poof".  Well, actually abandoned as no one with money could get control of the applications. 

I've thought about what would happen if I included a clause in my agreement letter that I would own the assets upon dissolution of the client with an outstanding balance for my services.  At least someone would have some way to keep them alive and maybe get them into the hands of someone who can really use them.  Seems like there might be a conflict of interest there and separate papers would have to be signed with actual numbers on them, but it seems like it would preserve some value in the IP.

I always thought that the PTO does not really get involved too much in ownership issues. Have you ever seen an issue where ownership of an application became a point of contention?

Yes.  One tiny startup gave stock to the founders in exchange for a promise to assign all innovations and patent applications in a given technical art to the corporation.  Naturally, one of the founders went off and filed his own application(s) and refused to assign.  The client recorded the stock agreement in an attempt to regain control of the application, but the Office refused because the agreement didn't list the application by number -- how could it? ... the application didn't exist at the time the agreement was made.

I think a court finding that the application (identified by number) was the rightful property of the client would suffice to gain control of the application in the PTO.  As far as I know, the client hasn't pursued that course of action.

How and where would you do that... assignments? They just record. Do you make this argument in some sort of petition?

You record the document and file a Power of Attorney based on it.  In my case, the rogue founder filed a paper disputing the recorded document.  Still trying to wrap my mind around how "I hereby assign, convey, transfer all rights in ...." can be "factually inaccurate".

Then, if the Office is persuaded, you respond to that.  I don't remember the actual form of the papers.  I think it's a petition.

Regards.

[dab2d]

Thanks for all the help.