Different firms handling same application

Started by patenteligible, 12-13-18 at 02:43 AM

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patenteligible

Is it possible for different firms to handle prosecution for the same application, for example, firm A files, firm B handles OA's, firm C handles IDS.

MYK

You can bounce around all you want, but they won't be happy about it and may decline to continue to deal with you if you keep going back and forth.  Why would you want to keep switching, though?  And do you expect to have to file lots of IDSes?
"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.

patenteligible

Not bouncing around, but telling firms up front, firm A will only handle prep, firm B only handles OAs, firm C only handles IDS for all applications

midwestengineer

Quote from: patenteligible on 12-13-18 at 02:43 AM
Is it possible for different firms to handle prosecution for the same application, for example, firm A files, firm B handles OA's, firm C handles IDS.

Yes.  It is possible.  Those would all be very hungry firms.

EvilLost

Quote from: patenteligible on 12-13-18 at 02:43 AM
Is it possible for different firms to handle prosecution for the same application, for example, firm A files, firm B handles OA's, firm C handles IDS.

Its possible, but it will probably cost you quite a bit more money (increased overhead and cross-communication between firms), assuming you can even find a firm that is willing to do only a small subset of the work. Plus, you will have difficulties with EFS-Web since you can only have 1 customer number on an application, unless you plan to make and manage your own customer number (or pay one of the firms to do it for you).

Why would you want to do this?

smgsmc

#5
Quote from: patenteligible on 12-13-18 at 02:43 AM
Is it possible for different firms to handle prosecution for the same application, for example, firm A files, firm B handles OA's, firm C handles IDS.
Certainly, it's possible for Firm A to prep and file the original application, and for Firm B to handle prosecution.  Happens all the time.  The two phases are sequential; power of attorney is transferred from Firm A to Firm B.  Not sure about having yet another Firm C handle IDSs, though.  Doesn't Firm C need power of attorney to do so (not entirely sure; don't have time to look it up); if so, can there be a separate power of attorney?  Since the IDSs can be filed after the application has been filed, Firm A will be off the hook if power of attorney has been transferred to Firm B.  But what about Firm B?  It has responsibility to see that any relevant material is reported in an IDS; yet it doesn't have the authority to file it?  If Firm C screws up, who's on the hook?

OP:  Are you trying to partition the work according to the cheapest firms?  And you consider certain activities to be less critical than others (and can therefore be parcelled out to cheaper firms)?

EvilLost

#6
Quote from: smgsmc on 12-13-18 at 04:31 PM
Quote from: patenteligible on 12-13-18 at 02:43 AM
Is it possible for different firms to handle prosecution for the same application, for example, firm A files, firm B handles OA's, firm C handles IDS.
Certainly, it's possible for Firm A to prep and file the original application, and for Firm B to handle prosecution.  Happens all the time.  The two phases are sequential; power of attorney is transferred from Firm A to Firm B.  Not sure about having yet another Firm C handle IDSs, though.  Doesn't Firm C need power of attorney to do so (not entirely sure; don't have time to look it up); if so, can there be a separate power of attorney?  Since the IDSs can be filed after the application has been filed, Firm A will be off the hook if power of attorney has been transferred to Firm B.  But what about Firm B?  It has responsibility to see that any relevant material is reported in an IDS; yet it doesn't have the authority to file it?  If Firm C screws up, who's on the hook?

OP:  Are you trying to partition the work according to the cheapest firms?  And you consider certain activities to be less critical than others (and can therefore be parcelled out to cheaper firms)?

Up to 10 practitioners can be listed on a single PoA without a customer number. But managing such an application across multiple firms (and without access to private PAIR) is going to be a challenge....

Alternatively, I think you would have to setup a customer number and list all the relevant attorneys on that customer number. We have a customer number dedicated to one of our major clients; all of our attorneys AND the clients in-house attorneys are listed on that customer number, so any of us can make any actions in the case file. However, we would not allow another law firm's lawyers to be listed on a customer number we control. If the client wanted a setup like that, they would have to manage the customer number.

cheesepep

Similar question, but if I currently don't have power of attorney for a published patent application (pending), can file a change of asssignment for the same application ? There doesn't seem to be anything that prohibits it from being not possible.



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