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There are different philosophies. At my first firm the client did not give af about e(2) certs and we did them routinely, but they were also very good about sending us foreign oas when they came in and didn't have to do that too much. At my second firm we avoided them and usually opted to pay the fee or, if the client typically did not like rces, we would assess the refs for relevance. We also had to be very diligent about checking global dossier at certain checkpoints throughout pros. Overall I'd say we probs would have saved money simply paying the fee everytime versus stressing about checking/assessing. I think the most important thing is that, however you do it, you're consistent, or at least have the same policy for everything for a particular client.
It’s the reasonable inquiry portion of e2 which caused me to just pay the fees rather than certifying under e2.
If comparing the cert that it was not cited in a foreign OA or known to anyone vs paying fees, I’d say we pay fees 99% of the time. If it was cited in a foreign OA and not known to anyone and we’re expecting an NOA rather than another NFOA, we would use the cert and cite immediately.
This thread is baffling to me. How do you NOT know when a reference is new? This should all be automated with reasonable IDS management, so that all I have to do is make sure nothing stupid happened. All foreign OAs come directly to the firm; get scrubbed for refs by the IDS paralegal and double checked by a vendor; and the IDS deadline with statement is docketed. Pharma clients I work for would blow a gasket over a just pay mentality. 1 day of PTA = $$$$. I understand this terror preTherascense but 15 years later? If you’ve got a good practice, where is deceptive intent?
Never
If a reasonable inquiry costs <$260 in attorney time, I question your billing rate and/or the reasonableness if your inquiry. Making this statement is a red flag for a potential inequitable conduct charge except for very limited circumstances.
This statement is not about the client only or what the client wants. The person making the statement has their own ethical duty. By making the statement you are not only putting at risk the enforceability of the entire patent family but you’re also putting your livelihood at risk by potentially opening yourself up to disciplinary action by the PTO and your state bar.
NOT WORTH IT!
I don't know many attorneys/clients who are cool with cetifying e2 to avoid the $260 fee. I do know firms that will think more about it if it's the difference between the fee and filing an rce (e.g., after noa).
Pay the fee and move on. Only time we will consider the statement is after a NOA and to avoid an RCE. I work in biotech so some clients are trying to keep patent term. Sometimes it is very clear that it was new art. Just did this with a JP patent cited by a JP examiner with no foreign counterpart.