Delegation in client law firms / impact on prosecution

[Anwalt]

I live and work as an independent US patent attorney in a country in Europe, and most of my work comes from law firms in Europe that have already filed a PCT, and want to initiate the US national stage, or that have already filed an application in their country, and want to file a direct app in the US based on that.

So I take over work. I don't write much of it. I've got a niche because I also speak the language and translate applications.

I get along well with sole proprietors and small firms where the chain of command is clear.

The problem is with large firms in which the responsibility for dealing with US applications is delegated down the chain to people who may not even be patent attorneys in their own country ("patent analysts" or the like), but who enjoy issuing commands.

I had a particularly bad situation today, in which claim 1 of an application was rejected based on 35 USC § 102 because every single point was not only found in the cited reference, but the cited reference had exactly the same goals and methods and ways of doing things as the application. 102 rejections are not usually this "on-point". I suggested finding something in the specification that could be used to modify claim 1.

The delegated dope found small variances and said that I was not going to change claim 1 at all, but was going to argue it (and he nicely supplied the odd arguments, not the usual ones you see on this board). The patent attorney over him (not even one of the partners) would likely not deal with it at all. Wasn't his problem.

What do you do with this situation? I know the partners enough to be able to call them, but it better be good. I'm not going to call them about every little thing.

Any advice? Should I just file my own amendment and tell the assigned guy to go f%ck himself? Usually that doesn't work out well either, especially if my amendment is rejected as well. Might as well have filed his.

[Robert K S]

Despite essentially identical legal underpinnings, the patent law works very differently in the U.S. than in Europe, and what doesn't work in Europe often ends up working here.  Perhaps Delegated Dope's instructions were arrogantly off-the-mark, or perhaps he was just doing what he thought would work because he doesn't understand the European process as well as you do.

When I send instructions  to foreign associates that ambitiously argue instead of amending, occasionally I will receive a reply saying, in essence, "Very cute, but that won't work here."  In those cases, I have to trust the foreign associates and take their advice.  On the other hand, when I receive instructions from foreign prosecutors that I don't think will fly, I appreciate that it's not my job to rewrite their work.  If there's plenty of time left for a response, it may be appropriate for you to make a recommendation in a change in strategy (in writing, not by phone, and through the usual written communication channels).  If not, you may just opt to carry out Dope's instructions.  I don't think it's ever the right choice to write up your own amendment and completely ignore what you've been instructed to do, except in the most exceptional circumstances.  That's really just an agency law issue.  The agent is bound to the principal and doesn't have the liberty to go rogue.

[ThomasPaine]

If it's possible to add a new independent claim without incurring excess claim fees, I suggest adding your version of claim 1 as you would like to amend it as a new independent claim.  That way if the examiner doesn't budge on claim 1, but acts favorably on your claim you can go back to the one issuing orders and say, politely, "Told you so."

It's possible to make a nice, comfortable living running other people's instructions up the flag pole and saluting them.  I understand the situation you're in.  But you have to advise, and educate, your clients to the best of your ability.  And to the full extent of your professional responsibility. 

After enough "I told you so" scenarios, your client(s) may hopefully wise up.  Do it politely.  Don't lose your gig or your client over it, but establish a track record and then rely on it when you think it's needed.

[midwestengineer]

Should I just file my own amendment and tell the assigned guy to go f%ck himself?

You have been given clear instructions by your client.  You appear to be stating that you don't intend to follow the instructions from the client.  Have you considered the malpractice implications of not following the instructions from your client?

Clients can make poor decisions.  It is the client's right to make a poor decision.  You could advise the client of the likely outcome of their decision to help them better understand the ramifications of their decision.  Doing so may help the client make a better decision.

[ThomasPaine]

Of course, if the instructions would require you to violate your duty to the Patent Office (e.g. your response is frivolous and does nothing to advance prosecution, a pretty unlikely scenario, but a possibility nonetheless), then you're not required to follow the instructions.  A client can't require you to submit, for example, false data or evidence in an affidavit or declaration.

When I was outside, an in-house attorney I was working with disagreed with a recommendation of mine and told me to make an argument.  I told him, "that'll never work."  He instructed me to make it anyway.  I did and it worked.  I learned a valuable lesson that day.

If I told one of our outside providers to make an argument, and he/she ignored me and did what he/she wanted to do instead, he/she would be fired on the spot. 

Be careful.

[Tobmapsatonmi]

Should I just file my own amendment and tell the assigned guy to go f%ck himself?

You have been given clear instructions by your client.  You appear to be stating that you don't intend to follow the instructions from the client.  Have you considered the malpractice implications of not following the instructions from your client?

Clients can make poor decisions.  It is the client's right to make a poor decision.  You could advise the client of the likely outcome of their decision to help them better understand the ramifications of their decision.  Doing so may help the client make a better decision.

From the OP, I'm not sure just who the client actually is in this case, but I got the impression it's not the "delegated dope", who, from the OP, sounds like an associate-level patent attorney in a firm (given the discussion of, "I could call the partners, but...").

So I gather the delegated dope, the next level attorney over him, and the partners are at a local large firm hired by the actual client company, and that OP has been sort of sub-contracted to do the US part of the prosecution?

Does OP ever get to interact with the client?  Or just have to funnel communications through the local firm, which may or may not faithfully transmit the advice [OP's advice, that is, relating to the US prosecution] to the client?

[Anwalt]

"So I gather the delegated dope, the next level attorney over him, and the partners are at a local large firm hired by the actual client company, and that OP has been sort of sub-contracted to do the US part of the prosecution?"

Right. But I don't even think the person to whom this matter was delegated is licensed as a patent attorney/agent in the country we're in, let alone a US patent attorney/agent.

He's phrasing everything as "the client already agreed to this response", not as "the client wants this response". I have no contact at all with the direct client.

This is surprising me, because I have worked well with this law firm over many years. Most of the people there are rational, reasonable, listen to my opinion and work with me.

I've documented that I don't think a pure argument will work here, and now I'm just going to file what he wants. Maybe I'm wrong.

It's also dawning on me that this is just an ego thing on my part.

[Edited]

[Tobmapsatonmi]

(quoted from Tobmapsatonmi) "So I gather the delegated dope, the next level attorney over him, and the partners are at a local large firm hired by the actual client company, and that OP has been sort of sub-contracted to do the US part of the prosecution?"

Right. But I don't even think the delegated dope is licensed as a patent attorney/agent in the country we're in, let alone a US patent attorney/agent.

He's phrasing everything as "the client already agreed to this response", not as "the client wants this response". I have no contact at all with the direct client.

(Underline emphasis is added to quote)


I understand your frustrations.  But in your uncomfortable circumstances I'd also be worried about liability from a professional responsibility standpoint. 

I think the PTO's OED and your state bar alike will view you as having a professional duty to the applicant (corporate client) - not necessarily that law firm.  But if you never get to talk with them, how do you know that you are fulfilling your duty to them?

I've been in-house for a long time, and some of my cases are handled globally, using in-country local agents approved by me, by outside US law firms.  Any instruction the US law firm sends to local agents copies my patent box, so the agents know that I (the client) am aware of these instructions and could step in if need be.

I imagine the local agents would be pretty uncomfortable receiving substantive instructions not knowing whether I was aware of what the outside US firm was doing.