Who's responsibility for notification of maintenance fees???

[chrissp]

What is the name of your state? MO

I lived in Texas when I obtained my patent. I hired an attorney to handle my patent application and all involved. Long story short---is he responsible to notify me of maintenance fees due when his address is on the patent and he is POA? I moved to MO and he e-mailed me after my grace period expired and said the fees were past due. It cost me thousands to bring it up to date. (Let alone dealing with the Patent Office!) Does he have any liability here as my attorney and Power of Attorney to inform me the maintenance fee is due??? I'm sure he was notified by the Patent office...or would he have been? Thanks.

ChrisWhat is the name of your state?

 

[chrissp]

Would anyone care to take an educated guess???

I'm curious to what is the rule of thumb?

 

[racer72]

From the US Patent Office website:

The Patent and Trademark Office does not mail notices to patent owners that maintenance fees are due. If, however, the maintenance fee is not paid on time, efforts are made to remind the responsible party that the maintenance fee may be paid during the grace period with a surcharge.

Based on the above, it is up to the patent holder (you) to pay the maintenance fees during the window period. You attorney was likely notified when the maintenance fee was not paid on time. The window period is the 6 months prior to the patent expiration date. Read more at the following link:
http://www.uspto.gov/web/offices/pac/doc/general/mainten.htm

 

[divgradcurl]

Well, legally, you were responsible for the payment. If you look at the Patent Office rules -- check out the Manual of Patent Examining Procedure section 2500 et seq. -- the Patentee is responsible for the payments, regardless of whether the patent office sends out a reminder notice or not. Section 2575 specifically notes that the USPTO has no duty to remind patentees of maintenance fee due dates, and subsection (iii) specifically notes that patentees are expected to maintain their own records and calendaring, and are not to rely on reminders from the patent office.

So, as far as the patent office is concerned, you are responsible. You could file a change of fee address under section 2540, so that maintenance fee reminders would be sent directly to you -- but even then, you are still repsonsible, even if you never receive the reminders.

All that said, this is usually something that is worked out between the attorney and the patentee. Oftentimes a patent attorney (or agent) will continue to be the contact person for a patent, and then will contact the patentee once maintenance fees are due, and will pay them once the patentee pays the agent or attorney. But there is no requirement that an attorney do this -- they could hand off responsiblity to the patentee immediately after issue of the patent. It all depends on what agreements you might have had in place with the attorney.

Now, if you had no agreement, and the attorney has done nothing more for you, and never advised you on maintenance agreements, his (or her) withdrawing as attorney for your patent, or changing the correspondence address, then you might have something to go on -- but you would have to sue the attorney.

Go to the USPTO website, check out the MPEP, check out section 2500, and see about getting the correspondence address changed to your address. If you are still mad at the attorney, and don't have a written agreement in place where he says he is not going to be handling ongoing stuff (such as maintenance fees), you might be able to sue him in small claims court -- you'll have to travel to MO to do so, but it might be doable -- read up in the MPEP on maintenance fee issues, you might also want to scan the relevant sections of 37 CFR (code of federal regulations) relating to patent attorney and agent ethics, maybe there is something in there (I haven't looked at it recently!).

 

[chrissp]

Thank you for your replies. I appreciate it very much. I'm pretty new at this.

I will try to get the address changed. Thanks again.

Chris