Disposition: Public reprimand and requirement that the practitioner attend a CLE seminar on law practice management. See decision here.
Summary: A patent practitioner who failed to adequately communicate with a patent applicant client entered into a settlement agreement pursuant to which she agreed to be publicly reprimanded. In particular, the practitioner represented a client in the preparation of a nonprovisional patent application and failed to adequately inform the client that she believed the client had changed the scope of his invention such that additional fees would be required to be paid in advance in order for the representation to continue.
Related to USPTO Practice? Yes
Facts: Ms. Thorpe is a Georgia-based registered patent attorney with no history of public discipline. On July 18, 2013, Dr. Irwin Share and Ms. Thorpe signed an engagement letter in connection with Dr. Share’s invention. The agreement set forth a flat fee for a patentability analysis and that Dr. Share would pay an hourly rate for any services outside of the agreed flat fee. On August 1, 2013, Dr. Share paid Ms. Thorpe $5,200 via check for “fee towards legal matters.”
Ms. Thorpe deposited the $5,200 check into her Interest on Lawyer Trust Account (“IOLTA”). She believed the agreement set forth that the $5,200 was an advance fee that would be billed against based on the hourly rate set forth in the June 18, 2013 agreement. Dr. Share believed that $400 of the $5,200 would be earmarked for filing fees.
On August 26, 2013, Ms. Thorpe filed a provisional patent application naming Dr. Share as the sole inventor. Ms. Thorpe did not charge a fee for filing the provisional patent application. Dr. Share continued to work on his invention after Ms. Thorpe filed the provisional application. It was his understanding that Ms. Thorpe would incorporate any changes and improvements into a nonprovisional patent application that she was to draft and file on Dr. Share’s behalf.
Ms. Thorpe and a patent agent employed by her firm began working with Dr. Share to prepare his nonprovisional patent application. Although Ms. Thorpe began providing patent legal services to Dr. Share under the July 18, 2013 agreement, Ms. Thorpe and Dr. Share attempted to negotiate a flat fee agreement for the nonprovisional application. In March 2014, Dr. Share forwarded to Ms. Thorpe his numerous improvements and changes to his invention after the provisional application had been prepared and filed. He emailed these improvements to Ms. Thorpe. After a March 11, 2014 meeting, Ms. Thorpe re-sent Dr. Share an engagement letter for the nonprovisional application that had been provided to Dr. Share in November 2013.
Dr. Share believed that the improvements would be incorporated into the nonprovisional application with no additional fees charged. Ms. Thorpe and the patent agent believed their communication informed Dr. Share that he would need to pay additional fees in order to include the new matter not the subject of the provisional patent application.
After lengthy negotiations on a flat fee arrangement, Ms. Thorpe retracted the March 11, 2014 engagement letter after the parties failed to negotiate a flat fee agreement. Nevertheless, Dr. Share signed the March 11, 2014 engagement letter on June 17, 2014. The communications between Dr. Share and the patent agent during the drafting of the nonprovisional application led Dr. Share to believe that the patent agent was incorporating his improvements into the final draft of the application.
On August 13, 2014, Ms. Thorpe’s office sent the draft nonprovisional patent application to Dr. Share. The August 13, 2014 draft patent application did not include any of the improvements and changes that had been sent by Dr. Share to Ms. Thorpe. Dr. Share was dissatisfied with the draft patent application he received and requested that it be redrafted to include the new matter he had provided to Ms. Thorpe. On August 21, 2014, Ms. Thorpe emailed Dr. Share and said that the new matter would be incorporated into the draft application only if Dr. Share paid an additional $4,000.
Dr. Share refused to pay any additional sums, terminated the attorney-client relationship, and demanded a refund of all sums he had paid to Ms. Thorpe. Ms. Thorpe did not respond to Dr. Share’s demand for a refund.
Pursuant to a settlement agreement with the USPTO, Ms. Thorpe agreed that her representation of Dr. Share violated 37 C.F.R. § 11.104(b) (failing to explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation). Per the settlement agreement, Ms. Thorpe agreed that she failed to adequately inform the client that she believed he had changed the scope of his invention such that additional fees would be required to be paid in advance for the representation to continue.
As part of her settlement agreement with the USPTO, Ms. Thorpe agreed to refund $400 to the client. In addition, Ms. Thorpe agreed to attend a Continuing Legal Education seminar on law practice management.