Responsability of a Patent Attorney after change of job

[east_european]

Please help me clear one question

A patent attorney who was sub-autohorised on a General Authorisation of our company has changed jobs.

As he signed papers all the correspondence of EPO or WIPO went to his name, and address of his previous employer (Law firm).

When he left the Law frim, nobody told us that we should ammend or change the General Authorisation.

He asked the EPO / WIPO to change his address to new address, and WIPO/EPO has been sending the documents to his new address.

He has now approached us with offer that he further prosecutes those cases in his new company, or he can send all the correspondence he until now received and what he did (he only asked for extension of time) to any representative we wish, subject that we bear his costs until now.

What can we do?

Should we pay him (he asks for 500 Eur for transfer ofeach case), or should we take a position, that his previous Law firm should have removed him from the authorisation before he left.

Is his authorisation still valid.

Thank you in advance

EE

 

[corvinus]

Strange,

usually the General Authorization is still valid for the law firm and these people should act according to the professional guidelines in their country (if there are such guidelines like PatAnwO and BOPA as in Germany..

The attorney should have asked you BEFORE he left the old firm and if you did not agree to the transfer should have resigned from representation. the amount of 500 EUR for a transfer of files which he took with him without clear permission by you (the client who pays...) is ridiculous, a shame and a gross misconduct.

Best (pragmatic) advice: withdraw the individual POA with the respective offices and try to change the law firm, since the old firm appears to have some uh, professional problems.

 

[Lysios]

For the EPO authorisation: All you need to do is to indicate that the authorisation of the particular professional representative is withdrawn now. The indication must be submitted to the EPO.

However, you need to decide if you still want to use his former law firm. If not, you need to appoint a new professional representative.

See Rule 152(9) EPC 2000. I assume that you also used the EPO for your PCT applications.

 

[east_european]

usually the General Authorization is still valid for the law firm and

The attorney should have asked you BEFORE he left the old firm

Thank you, the old Law firm is falling apart, as the owner had died without a will, and the heirs are selling it.

As far as I understand: particualar patent attorney has asked the Law firm that his subautorisations are removed, but as the old owner (who could have done it) was dead and nobody else wanted to do it.

He told us he would be liable if something happened while he was still formally the representative, and he said he could not just throw away the representation. Is this correct?

When he left the Law firm he was not able to pick it up the mail from EPO/WIPO on the old address any more, so he just informed EPO/WIPO of the new address.

I donk know he was indeed negligent - because when office action came, he asked for extension of time - so he even protected the interest of client.

My problem is: can we just ignore his request for 500 Eur and appoint another representative firm?

Can he in that case hold against us the fact that we signed General Authorisation (where his name was mentioned on second page) and where we allowed subathorisations - can he claim that this Authorisation was personaly valid from him regardles in which firm he was employed?

Thank you in advance

EE

 

[Lysios]

@east_european

I think this is a matter of national (civil) law. You need to obtain legal advice from a legal practioner for the relevant national law.

 

[grond]

@east_european:

you are in a German forum, is this representative situated in Germany? Then the German law about fees of legal attorneys would apply. Of course, the representative cannot just demand a fee he considers appropriate, there are bounds set by this law. However, I think that he indeed can charge you for acting in your supposed interest even without your explicit order to do so.

Furthermore, which field of technology are we talking about? Perhaps you might want to consider transferring the files to yet another law firm, e.g. us

He told us he would be liable if something happened while he was still formally the representative, and he said he could not just throw away the representation. Is this correct?

Are you situated in a country outside the EPC? Then you need a professional representative (see Art. 133(2) EPC). AFAIK the (former) representative cannot free himself off his duties until a new representative has indicated his representation to the EPO.

I donk know he was indeed negligent - because when office action came, he asked for extension of time - so he even protected the interest of client.

What did he do to contact you?

My problem is: can we just ignore his request for 500 Eur and appoint another representative firm?

These are two separate questions. I believe that he wants to put some financial pressure on you so that you just entitle him to continue to represent you. Generally, 500 EUR appear to be much too much. Judging his way of acting, he appears to have some interest in you as a client and you are free to negotiate fees with him or any professional representative. Oh, BTW: our office charges 80 EUR for extensions of time IIRC.

Generally, he does not appear to act in a reputable way and I would strongly encourage you to look for other representatives. We have a lot of business in Eastern Europea (especially Russia) and some of the attorneys even speak Russian (if that is of any interest to you). If you want to, you can contact me at kandidatentreff[img]http://files.carookee.com/img/clear.gif[/img]@[img]http://files.carookee.com/img/clear.gif[/img]web[img]http://files.carookee.com/img/maildot.gif[/img]de

 

[Pat-Ente]

Perhaps you might want to consider transferring the files to yet another law firm, e.g. us

BOPA § 7 Abs. 3 d)

SCNR ;-)

 

[east_european]

@east_european:
1 However, I think that he indeed can charge you for acting in your supposed interest even without your explicit order to do so.

2 Are you situated in a country outside the EPC?

3 What did he do to contact you?

4 Generally, 500 EUR appear to be much too much.
BTW: our office charges 80 EUR for extensions of time IIRC.

5 Generally, he does not appear to act in a reputable way and I would strongly encourage you to look for other representatives

1 and 4 How much do you think he can charge?
He says in fact he factualy took over the representation and he wants to charge 500 Eur for transfering the representation to another firm (if we dont want him) which I recomended, agreing with above 5

2 yes, unfortunately

3 basicaly he came to us and explained all the story about previous company and that he (as representative) is not allowed to drop representations, and he said that in fact he had some costs (like setting up an account, mail to EPO etc, asking a student service to look uo for him due dates) which I dont know if they ammount to 5000 Eur as he wants from us for 10 applications.

Further more if he now pays fees (he said he proposes to pay one further processing in order for us to have time to decide), can he ask those fees from us even if we do not authorise him?

EE

 

[grond]

1 and 4 How much do you think he can charge?
He says in fact he factualy took over the representation

While many patent attorneys charge a sum of several hundred Euros for representing a case, there is no such official fee and no "factually taking over representation". So you surely don't have to pay 500 EUR.

and he wants to charge 500 Eur for transfering the representation to another firm (if we dont want him) which I recomended,

He cannot hold your files hostage. He will have to pass them to the representative you appoint, however, you will have to pay the cost of sending the archives or handing them over to the new representative. Any confrontation about his fees will be independent from this.

3 basicaly he came to us and explained all the story about previous company and that he (as representative) is not allowed to drop representations,

Seriously, the first thing you should do is to appoint somebody else and have that person look into everything. I guess things will change the moment some other professional representative shows up on the scene...

and he said that in fact he had some costs (like setting up an account,

Pardon? If he's a representative, he'd better have one anyway...

mail to EPO

Wow, that's a lot of work, of course...

which I dont know if they ammount to 5000 Eur as he wants from us for 10 applications.

Surely not.

Further more if he now pays fees (he said he proposes to pay one further processing in order for us to have time to decide), can he ask those fees from us even if we do not authorise him?

If you direct him to not do so, not.

There is one other piece of information you should know: if the late representative is situated in Germany, the Chamber of German patent attorneys has surely appointed a liquidator that should ensure that none of the clients of the office is harmed due to the passing away of your former attorney.

The fact that you never heard from this liquidator smells fishy.