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 Procedure after issuance 
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Joined: 2011-12-29 10:29:29
Posts: 35
Quick question wondering how some of you folks handle clients after issuance of a patent. Once the patent has issued, I assume you let the inventor know that the patent has issued and likely send them a letter terminating your engagement, thus closing your representation for that matter. Since it is my understanding that after issuance there is no withdrawal, do you also file a change of correspondence address and notify inventor that all future correspondences from the PTO will be sent directly to the client and that they are now responsible to let the PTO know of any address changes and for all future maintenance fees?


2012-01-19 09:50:19
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Joined: 2012-01-10 00:06:46
Posts: 21
Depends on the client. For the small timers, we might send out a termination letter. But usually we don't, because the hope is that we will continue to represent them in other matters.

As to maintenance fees, my firm is trying very hard to get out of the annuities business. There is a lot of risk for little return, and other companies (CPA, for example) are set up far better to handle annuities on a bulk basis. Not to mention the cash flow issues that can stem from paying large numbers of annuities. Thus, we have been informing our clients of the need to pay maintenance fees and, where possible (depends on the client), that we will not pay or be responsible for paying maintenance fees on their behalf.


2012-01-19 13:49:21
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Joined: 2011-12-29 10:29:29
Posts: 35
This was mainly for the likely "one timer" individual inventor. If you do not terminate or change the correspondence address, the maintenance fee reminders and then notice of abandonment for not paying the fees still comes to you, correct? Do you just send them off the the client as a courtesy reminder?


2012-01-19 15:09:01
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Joined: 2011-12-26 16:53:41
Posts: 117
Quote:
If you do not terminate or change the correspondence address, the maintenance fee reminders and then notice of abandonment for not paying the fees still comes to you, correct?


Yes.

Quote:
Do you just send them off the the client as a courtesy reminder?


Yes, I continue to send a copy of PTO correspondence to the client. With a letter emphasizing that I will NOT pay the fee unless they a) let me know ahead of time they want the firm to pay fees on their behalf and b) also send me ahead of time enough funds to cover the fee.

I think Klav's has an excellent point is a about the risk/reward ratio.

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Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-01-19 18:02:47
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