What are a practitioner’s responsibilities regarding client communication after a patent issues?

Even after a patent issues, practitioners have ongoing responsibilities regarding client communication, particularly concerning USPTO correspondence. The MPEP 2222 references 37 CFR 11.104, which states: “A practitioner should not fail to timely and adequately inform a client or former client of correspondence received from the Office when the correspondence: (i) could have a significant effect…

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What mailing procedures can be used for ex parte reexamination correspondence?

The MPEP outlines two primary mailing procedures that can be used for most ex parte reexamination correspondence: Certificate of Mailing and Transmission (37 CFR 1.8): This procedure can be used for filing any paper in an ex parte reexamination proceeding, except for the initial request for reexamination and a corrected/replacement request. Priority Mail Express® Mailing…

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How long does an attorney-client relationship last in patent matters?

MPEP 2622 addresses the duration of attorney-client relationships in patent matters, stating: “As a general rule, the attorney-client relationship terminates when the purpose for which the attorney was employed is accomplished; e.g., the issuance of a patent to the client.“ However, the section also notes that attorneys have ongoing responsibilities even after the formal relationship…

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What is a Certificate of Mailing or Transmission?

A Certificate of Mailing or Transmission is a procedure under 37 CFR 1.8 that allows correspondence to be considered timely filed with the USPTO if it meets certain conditions. As stated in the MPEP: “Under 37 CFR 1.8, a person may state on certain papers directed to the Office (some exceptions are stated in 37…

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Can I use a Certificate of Mailing or Transmission for all USPTO correspondence?

No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice: “The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application…

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How does the USPTO handle correspondence for applications with multiple attorneys or agents?

How does the USPTO handle correspondence for applications with multiple attorneys or agents? When an application has multiple attorneys or agents of record, the USPTO follows specific guidelines for correspondence: The USPTO will direct all correspondence to the first named attorney or agent of record, unless otherwise specified. If a customer number is provided, correspondence…

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