Thank you for your interest in our availability to provide you with patent law legal services. As we discussed, we would be pleased to assist you.
However, we are not engaged to handle your matter until you perform two tasks, (1) click on the link in this letter, and (2) provide us with the requested, initial, retainer payment in the amount of $_____.00
To: (i) generally further acquaint you with the nature of our patent law services related to obtaining and maintaining a patent and their potential costs, and (ii) confirm our understanding with respect to our representation of you, listed and discussed below are: (a) some of the services that we most frequently provide to our clients, including the various steps involved in providing these services and their typical legal fees and expenses, and (b) the general terms of our representation of you. We propose to proceed in a step by step-wise manner and you may elect to stop at any step in this process so as to not incur further legal fees:
1. Obtain and Maintain a Utility Patent for Your Invention: The steps in the most direct route (i.e., there can also sometimes be the steps of: “For A Software Invention, Assess Whether It Can Overcome Expected ‘Non-Patentable Subject Matter’ Claim Rejections,” “Completion of Reduction to Practice,” “Initially Filing a Provisional Patent Application (PPA),” “Expedited Examination of a Regular Patent Application,” “Preparation, Filing & Prosecution of a Design Patent Application” – see Appendix) of the process include:
a) Novelty Search: Perform a novelty search to assess whether your invention is likely to be able to pass the novelty (35 USC 102) and non-obviousness (35 USC 103) requirements for patent issuance; this would include, using your “enabling disclosure,” writing a claim to your invention and assessing whether a Patent Examiner is likely to allow the claim and therefore grant you a patent in view of the patents that are on file at the U.S. Patent & Trademark Office (USPTO) and giving you an oral report of our findings. Legal Fee – typically at a flat rate of $1,500 and dependent on the necessary extent of the search. If your novelty search were to come back negative, our representation of you in this matter would probably conclude at this step. If after an initial assessment of your material disclosures, it appears that you will require consultation in order to assist you, we will move forward under our General Counseling Services.
b) Preparation and Filing of a U.S. Regular Patent Application (RPA): Legal Fee – approximately $5,000 – $15,000, with the exact amount depending upon the complexity of your invention (e.g., for a simple mechanical product – $5,000; for a business method patent to protect, e.g., an internet service business – $12,000) and the effort required to fully claim it. Expenses – USPTO Filing Fees – usually $830, assuming you are entitled to pay “small entity” fees and do not wish to expedite the USPTO’s examination of your patent application, plus expected expenses, e.g., line drawings @ $100/sheet.
c) Written Responses to the USPTO. Respond to USPTO Office Action/s which gives the USPTO’s feedback on the application that we have filed for you (A necessary step in >95% of utility applications): Legal Fee – typically $2,000 – $3,000/Response. Recognizing that a Response to more than one Office Action may be required, it is hoped that these legal fees for this step can be held to $7,500 or less.
d) Notice of Allowance. Filings in response to receiving a Notice of Allowance & the subsequent issuance to you of a Patent: Legal Fee – approximately $800, Expenses – USPTO Issuance Fee – $600 (assuming the patentee is a “small-entity”).
e) Patent Maintenance Fees To Extend The Life/Term Of Your Patent. To extend the term of the life of your patent to its maximum of 20 years from when you file a patent application for your invention, you will need to pay “small entity” maintenance fees of $1,000, $1,880 and $3,850 on the respective 3rd, 7th and 11th year anniversaries of the date of issuance of your patent (assuming the patentee is a “small-entity”).
f) Foreign Patent Applications. Depending upon your interest in foreign patent protection, within twelve months of filing a U.S. patent application or your invention’s public disclosure, you will need to apply for your foreign patent rights – typically by filing what is known as a Patent Cooperation Treaty (PCT) Application. Legal Fee – it is hoped the initial legal fees can be held to $2,000 or less, Expenses – typical initial PCT filing expenses are on the order of $3,000. Significant, additional service and legal fees will be incurred as we prosecute any foreign patent application resulting from this initial PCT filing.
2. General Patent Counseling Services: We can provide additional, general patent counseling services on all matters relating to obtaining a patent for your invention, including questions regarding assignment, marketing, licensing, etc. of your invention and other related business matters, freedom-to-use your invention without the likelihood of being accused of infringing another’s patent. Legal Fee: charged at hourly rates, see below:
Attorneys: Rates Michael D. Oliver $ 375 Kimberly S. Grimsley $ 350 Larry J. Guffey (Senior Patent Counsel) $ 425 Jennifer L. Mumm $ 300 Paralegal $ 175
We reserve the right to increase our hourly rates from time to time. It may be necessary for additional attorneys of this firm to perform work on other matters that you may refer to us.
3. Retainer. Before we can begin to provide our patent law services, you may need to provide us with an initial retainer against which we will charge the cost of our billable hours, expenses, etc. As this retainer is depleted, you will be required to replenish it in an amount that is proportional to cost of the next upcoming step that we anticipate we will be undertaking for you. The amount of these retainer replenishments will normally be in the range of $2,000 – $5,000 and will be deposited in an escrow account that will be created to hold your retainer payments. Upon the completion of our representation of you, and after all fees and expenses have been paid, any remaining funds in your escrow account will be promptly returned to you.
4. Our Obligations to You. If you are executing this letter as a representative of an entity, you represent that you have authority to bind your entity, and you acknowledge and we agree that our engagement is with the entity only, and not with you individually (if this sentence applies, “you” or similar pronouns in this letter refer to the entity). We will only perform work you request us to perform; we will keep accurate records of our work, we will communicate with you regarding our services; we will comply with our ethical and legal obligations to you; we will bill you a fair and reasonable fee, and we will use our best effort to reach a successful conclusion to any matter in which we are engaged. We encourage communication and if you ever feel we are not meeting these obligations you agree to let us know.
5. Your Obligations to Us. You agree to keep us informed and disclose to us all material facts related to matters in which we are engaged, and to pay our fees.
6. Expenses. If we incur external costs on your behalf, such as filing fees, delivery charges, wire transfer fees, and similar expenses, you agree to pay those expenses.
7. Invoices, Payments. We will render invoices for services and expenses periodically (typically monthly) and you generally agree to pay our fees and expenses within 30 days of our invoice for them. However, for the filing of a patent application, we will typically provide you, just prior to your application’s planned filing date, with a “pre-application filing” invoice for such services and will expect that you will pay this invoice before we make the actual filing. We are entitled to our fees regardless of the outcome of the matter. Our fees are net of all transfer, sales and other taxes (which You agree to pay), and net of all costs and expenses, including the effect of US to other currency exchange rates and vice-versa, that We incur to receive payment – for example, fees charged by third parties to enable the payment, such as fees charged by payment service providers such as PayPal, TransferWise, Billtrader etc. (Payment Processor Fees). When You pay us via a service (whether Yourself, or when You authorize Us to use such service) You automatically agree that we may charge you (and deduct) such Payment Processor Fees from your payment, including any payments made to our Client Trust Account.
8. Discounts. We offer a 5% discount on the fee portion of our US domestic invoices under the following conditions: (a) you provide us with a US bank account number, routing number and account name from which we can ACH debit the account; and (b) authorize us to debit that account for each invoice on or about the 13th day of each calendar month. You will be required to keep the ACH information up to date, and if we are unable to make the debit , the discounted amount will be added to the bill. If you are interested in this program, let us know and we will send you a manual email with the consent language to allow us to make these debits.
9. Confidentiality. We are under the highest fiduciary duty of care to maintain your client confidences. We will comply with this duty, unless you expressly or implicitly waive it.
10. Electronic communications. We communicate (and you agree to communicate) using electronic communications.
11. Records Retention, File Security, Paperless Files. We operate on a paperless basis, meaning that we store your records electronically. We use off site email storage; we use online banking, and we use online and cloud-based document storage. While we use reasonable effort to maintain such records securely, and our vendors have covenanted to us that they will also make such reasonable efforts, we advise you that no computer system is free from risk of data breach.
12. Termination. You may terminate our representation at any time on notice to us. We may terminate our representation of you, subject to the Maryland Rules of Professional Conduct, and any applicable rules of the USPTO, upon written notice to you. On a termination, you agree to pay all accrued fees through the date we terminate work. As long as our fees are paid, we will return or make available your electronic files at the end of our representation.
If the foregoing correctly sets forth your understanding of the terms of our engagement, please click on the link in the email above to note your acceptance of the terms. If we have indicated a retainer is due, please also make arrangements for that payment. We look forward to serving you in this matter.