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Author Topic: Final letter / Acknowledge Receipt letter  (Read 425 times)

TMan

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Final letter / Acknowledge Receipt letter
« on: 04-09-18 at 12:44 am »

Hi everyone,

 Just a background on my situation: I just got my first patent accepted by the USPTO and I did the drawings and the writing by myself but I had a patent attorney polish up my writing. My writing isn't the best. I am about to wrap it up with my patent attorney I hired and he wants me to sign a acknowledge receipt and send it back to him. My tiny concern is their was a small grammar mistake made by the USPTO I was told. He reassured me in a e-mail that the small grammar mistake would not make my invention susceptible to infringement or cause and future problems so it wouldn't require a Certificate of Correction. But in the acknowledge receipt letter that he wants me to sign he wrote, "We have proofread this patent and have found printing errors justifying a Certificate of Correction; however, you have indicated that you do not wish to correct these errors via a Certificate of Correction and therefore we will not do so." Do you guys think it would be a mistake to sign this letter because it makes it sound like it was my idea not do the Certificate of Correction. I wrote him back and he still is confident that the COC does not need to done. I want to pay the maintenance fees on my own so would it be a mistake for me to sign this letter? It mentions that if I do not send any money for the maintenance fees to his office that he would proceed to create a customer account for me with the USPTO and instruct them to send all future correspondences to my address anyways. My question is to you guys is: Do you think it would hurt me to sign this letter? Is it is my best interest to do so or am I being petty?
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Robert K S

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Re: Final letter / Acknowledge Receipt letter
« Reply #1 on: 04-09-18 at 01:59 am »

If you feel a statement to be untrue, why would you sign it?  Filing a request for a certificate of correction isn't that hard, so you could probably figure out how to do it by yourself, if need be, and if you meet the various qualifications.
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

MYK

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Re: Final letter / Acknowledge Receipt letter
« Reply #2 on: 04-09-18 at 11:03 am »

I don't see it as being "petty" to refuse to sign the acknowledgement;  I do think it's rather pointless.  The only thing you're leaving open by not signing it is however much evidentiary weight that would be given to the lack of your acknowledgement if your patent goes into litigation, is found unenforceable due to the grammar error(s), and you then sue your attorney for malpractice.  Your email correspondence will show whether you agreed or disagreed anyway.

Regardless, if you disagree and want a certificate of correction, then the proper course of action is either to file for one yourself or to ask him to file one for you.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

TMan

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Re: Final letter / Acknowledge Receipt letter
« Reply #3 on: 04-10-18 at 01:04 am »

If you feel a statement to be untrue, why would you sign it?  Filing a request for a certificate of correction isn't that hard, so you could probably figure out how to do it by yourself, if need be, and if you meet the various qualifications.

Thank you for your insight and information. By the way the mistake was a missing semi colon in one of the claims.My attorney mentions this in one e-mail: I donít think the error in claim 1 puts the patent in jeopardy or affects potential infringement.  It does cause some confusion in initially reading the claim, but upon a closer review of the claim I think the scope of the claim is still clear. Add that together with the fact that claim 10 doesnít have any errors therein and is very similar to claim 1, and I think you can get away with not having to file the COC.

He also mentions this in another e-mail: the error is only a indentation/spacing error, so the text of the claim would not be changed at all, so really itís just a matter of the claim being somewhat confusing when first read through.
 
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TMan

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Re: Final letter / Acknowledge Receipt letter
« Reply #4 on: 04-10-18 at 01:20 am »

I don't see it as being "petty" to refuse to sign the acknowledgement;  I do think it's rather pointless.  The only thing you're leaving open by not signing it is however much evidentiary weight that would be given to the lack of your acknowledgement if your patent goes into litigation, is found unenforceable due to the grammar error(s), and you then sue your attorney for malpractice.  Your email correspondence will show whether you agreed or disagreed anyway.

Regardless, if you disagree and want a certificate of correction, then the proper course of action is either to file for one yourself or to ask him to file one for you.

What would you think if I signed it but put in the margin of the letter: "Upon advice of Counsel, that any correction would make no material difference, I am not pursuing the Certificate of Correction."

 He did mention that he could fix the error for $275 (USPTO price) but i later found out that it cost only $150 for the USPTO Certificate of Correction. He also mentions that the USPTO made this error but I also found out that the USPTO would fix most mistakes if they were their own. However as I mentioned in another post in this thread the mistake does sound minor. It is a indent error / missing semi colon. It doesn't involve any words in the claim. So what I am saying is after some digging and finding holes in what he is saying it sounds like the mistake is his doing and he wants the burden to be placed on me.  After I added this new information do you still think it would be in my best interest not to sign?


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Tobmapsatonmi

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Re: Final letter / Acknowledge Receipt letter
« Reply #5 on: 04-10-18 at 02:38 pm »

Certificate of correction for Office error should be free; as you note cost for applicant error is $150.  Did he tell you in writing that $275 was the Office cost for this?  Or did he say something more like $275, "including the Office cost"?

Also, note you can look at the entire file in the PAIR system (link below) and find out whether the semicolon was present in the papers you (your attorney) filed and lost by the PTO, or whether your attorney made the mistake. 

https://portal.uspto.gov/pair/PublicPair

I don't see anything wrong with your addendum to the language of the letter.

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TMan

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Re: Final letter / Acknowledge Receipt letter
« Reply #6 on: 04-10-18 at 03:23 pm »

Certificate of correction for Office error should be free; as you note cost for applicant error is $150.  Did he tell you in writing that $275 was the Office cost for this?  Or did he say something more like $275, "including the Office cost"?

Also, note you can look at the entire file in the PAIR system (link below) and find out whether the semicolon was present in the papers you (your attorney) filed and lost by the PTO, or whether your attorney made the mistake. 



I don't see anything wrong with your addendum to the language of the letter.

Thank you for your input. This helps greatly! Your advice on the pair system really helps!  This is his exact words:

 This is an error by the USPTO but requires a Certificate of Correction (COC) to fix.
 
The fee for the COC would be $275.  Let me know if you feel that the error is worth addressing.  If so, we can file the COC. If not, there is no requirement to fix the error.
 
I donít feel itís critical to correct the error, but I did want to bring it to your attention in case you wanted us to attend to it.
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Tobmapsatonmi

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Re: Final letter / Acknowledge Receipt letter
« Reply #7 on: 04-10-18 at 03:36 pm »


Thank you for your input. This helps greatly! Your advice on the pair system really helps!  This is his exact words:

 This is an error by the USPTO but requires a Certificate of Correction (COC) to fix.
 
The fee for the COC would be $275.  Let me know if you feel that the error is worth addressing.  If so, we can file the COC. If not, there is no requirement to fix the error.
 
I donít feel itís critical to correct the error, but I did want to bring it to your attention in case you wanted us to attend to it.


I see.  The language used could have been clearer*, but I read that as him saying his fee for doing the CoC would be the $275. 

Generally if a lawyer I'm working with is talking about government fees, they specify with some language indicating just that, such as "The official fee for the CoC is $123".  The "fee for... would be" language (instead of "fee for... is", as in my example) is a bit of a tell as well.

* To be crystal clear, he could have written "Our fee for the CoC...".
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