Tom Streeter Patent Attorney

Transcription

1 Tom Streeter Patent Attorney Doheny Park Rd #2183 Capistrano Beach, CA (949) [date] [client name] [street] [city state zip] Re: Patent Representation Agreement Dear, Thank you for entrusting me with seeking patent protection for the invention which you own,. This letter sets out our patent representation agreement. 1. Scope of Work; Fees; List of s I will represent you in seeking patent protection by providing the services which are stated in the attached List of s. This includes protection both in the United States Patent and Trademark Office ("the US patent office"), and in your choice of foreign nations' patent offices. Foreign nations which are not members of the Patent Cooperation Treaty ("PCT") must be members of some other international patent treaty which is served by Inovia, my foreign-patent logistics service. You agree to pay me the charges indicated in the List of s. s which are not stated in the List of s are excluded from this agreement. In particular, I will not provide any of the following services: appeals from the US patent office (as distinct from appeals within the US patent office), or from a foreign patent office, to the courts; trademark work in the United States Patent and Trademark Office (if you need a trademark); or post-grant review or other litigation, whether in the courts, the US or foreign patent offices (such as reexamination, review, derivation, or interference), the International Trade Commission, or anywhere else. At your request, I will refer you to a law firm which does provide these services. I will assist this law firm, at its request, for a fee of $100 per hour, plus expenses. The terms of this patent representation agreement -- including the scope of work and the amount of my fee -- are subject to negotiation, and are not set by law. 2. Payment My fees are due, and you agree to pay them, when I have prepared the associated document (or set of documents) to your satisfaction. You demonstrate your satisfaction by writing me a check, or authorizing me to withdraw my fee from my trust account. You must deposit estimated expenses -- technical literature searcher's fees, draftsman's fees, US patent office fees, travel expenses, and the fees of Inovia (my foreign-patent logistics service) -- into -1-

2 my trust account before I incur them. My estimates are on the high side, since I do not require you to pay the excess when actual expenses exceed estimated expenses. I will refund the excess when estimated expenses exceed actual expenses. 3. Warranties; Disclaimers I warrant to you: that the services which I provide to you under this agreement will be competent, diligent, and prompt; that I am a patent attorney in good standing with the US patent office; and that I am a voluntarily inactive member of the State Bars of Texas and California, formerly active, with the right to reactivate my membership on demand. I cannot and do not warrant: that patents will be granted which meet your needs -- or even that one will be granted at all; that the patents, if subjected to post-grant proceedings or other litigation, will emerge from the proceedings in a form which meets your needs -- or even that they will emerge at all; nor that I currently am an active member of the bar of any state. 4. Term and Termination This agreement takes effect, and you start being my client, when you sign it and return it to me within thirty days after I signed it. I will send you an acknowledging receipt of the signed agreement, attaching a copy of it. You stop being my client when every patent application has resulted in a granted patent, or has been finally rejected (or objected to) without the possibility of further appeal. You may discharge me at any time by telling me so in writing, or by suing me, or by demanding arbitration of a dispute between us. I may withdraw from representing you only for cause, and the cause must comply with the Rule of the US patent office. 5. Your File I will keep your file in electronic format, namely, PDF/A. This is the archival version of PDF. My policy is to prepare a written summary of every telephone call and face-to-face conversation between us, and to the summary to you (and place it in your file) promptly. If you do not receive this within one business day after we talked, or if you believe that the summary is incorrect, then you agree to notify me by within five business days. My policy is also to to you, at the beginning of each month in which you are my client, a package of all of the documents which I placed in your file during the previous month. You should receive it by the tenth of the month. You agree to notify me by , by the twentieth of the month, if you have not received this package (or a "no activity" note). You also agree to notify me by , by the end of the month, if you believe that the package is incorrect. I will give you a copy of your file whenever you ask for it, both while you are my client and for five years after you stop being my client. After five years, I may destroy your file. If there is or has been arbitration or litigation between us, then the copy of the file which I give you will include material only up to the date upon which arbitration was demanded or suit was filed. -2-

3 6. Keeping in Contact; Backup Decision Maker; Backup Patent Attorney Each of us agrees to notify the other, by , of any change in address. Notice must be given within five business days after the change. You agree to return my s within five business days, unless you have previously informed me by that you will not be reachable by . If you will not be reachable by for more than ten business days, then you agree to name someone -- in writing -- to make patent decisions in your absence. You must give me this person's name and address. If you do not return my s within five business days, and have not previously informed me, by , that you will not be reachable by , then I may withdraw from representing you (if otherwise permitted by Rule of the US patent office). However, I will first warn you, by , that I will withdraw if I do not receive an from you within another five business days. An abrupt withdrawal without first filing a document (or set of documents) might cause a material adverse effect on your interests. In this case: I will prepare and file the document (or set of documents). I will do so after the second five-business-day period but before withdrawing. I will do so even though you have not affirmatively indicated your satisfaction. You agree to pay my fee, and to reimburse my expenses, as though you had affirmatively indicated your satisfaction. My policy is to return calls and s within one business day, unless I have previously informed you by that I will not be reachable by . If I will not be reachable by for more than ten business days, then I agree to name another patent attorney -- in writing -- to handle your patent application in my absence. I will give you this patent attorney's name and address. If I have not returned your within five business days, and have not previously informed you that I will not be reachable by , then I have died or become disabled. In this case, you: stop being my client; and agree to contact the Lawyer Referral and Information ("LRIS"), within another five business days, to get a backup patent attorney. My website will link to the LRIS website. If you get a backup patent attorney, then: there is no charge for any work which you have ordered but I have not yet completed; my office will give you a copy of your file; my office will pay your balance from my trust account once all expenses have been paid; and your backup patent attorney may, without charge, use as much of my work as he or she finds to be useful. 7. Disputes; Arbitration Most disputes which arise out of a patent-attorney/client relationship can be resolved by informal negotiation. Either party to this agreement may conclude, however, that informal negotiation is not working to resolve such a dispute between us. If this happens, then that party may make a written demand to the other party -- and to the American Arbitration Association ("AAA") -- that the dispute be resolved by arbitration. The dispute will be resolved by binding arbitration, conducted under the Commercial Arbitration Rules of the AAA, instead of by conducting litigation in court. The AAA's Procedures for Resolution of Disputes Through Document Submission will be used. The party who demands arbitration agrees to advance the fees and costs of the AAA and of the arbitrator. Final payment of these fees and costs will be determined by the arbitrator as part of the award. -3-

4 Your entire file will be admitted into evidence by the arbitrator. "Your entire file" means, and is limited to, the following items: the document packages which I ed to you each month; the file of your patent applications, on record in the US and foreign patent offices; and our correspondence with each other, but only for s which were sent between: the last month for which I ed you a document package, and the date upon which arbitration was demanded or suit was filed. No other evidence will be considered by the arbitrator. This includes depositions, document production, requests for admission, interrogatories, live testimony, and all other evidence. If either party initiates litigation in court instead of (or in addition to) arbitration, then he agrees to pay the other party's legal expenses (up to ten thousand dollars) which are incurred in getting the dispute out of court and into (or back into) arbitration. This includes a reasonable attorneys' fee. It also includes reimbursement for any fees and costs which are advanced to the AAA and the arbitrator by the other party. Each party bears his own legal expenses for conducting arbitration, and for enforcing the resulting award. Both parties submit to the jurisdiction and venue of the federal and state courts located in Orange County, California. Neither arbitration nor litigation will be initiated more than six months after the initiating party discovers (or should have discovered) the act or omission complained of. This agreement will be performed, and arbitration will be conducted, in Orange County, California. California law will be used without reference to the law of any other state. Federal law will be used when it displaces California law. You are not required to keep anything confidential, regardless of whether or not there is a dispute between us. My confidentiality requirements, for all information relating to my representation of you, are governed by US patent office Rule Entire Agreement This letter constitutes our entire agreement. No other agreement, statement, or promise made on or before the effective date of this agreement will be binding on either of us. This agreement may be modified in the future only in writing. An exchange is sufficient. An oral understanding, or an unspoken course of conduct, is not sufficient. This letter is prepared in duplicate originals. Please sign both. Keep one original for your records and return the other to me. Sincerely, Tom Streeter Accepted: Date accepted: Client's Typed Name: -4-

5 Initial s Initial interview List of s Conferring with you, and with your general business attorney, to ensure that your patent strategy fits in with your general legal strategy Conferring with you, and with your general business attorney, to decide whether to file your patent application: directly in the US patent office; in foreign patent offices (and perhaps also in the US patent office) via an international patent treaty; or both Conferring with you, and with your general business attorney, to help your general business attorney prepare Non- Disclosure Agreements Preparing a description of the probably-patentable features of the invention in sufficient detail for a professional technicalliterature searcher to prepare a reasonably complete search Submitting the description to the searcher; evaluating the search results; providing you with the evaluation in writing Preparing a patent application to your satisfaction, ready for filing as: a US provisional application; a US regular application; or an international-treaty application, whether the treaty is the PCT or some other treaty This includes up to: ten sheets of informal drawings three independent claims; twenty total claims; and one hundred pages total (including informal drawings and claims). Ordering formal drawings from a professional draftsman; comparing them against the informal drawings $1,000 Searcher's fees only $3,500 Patent draftsman's fees only -5-

6 Representing you in the US patent office -- if it grants your patent just as you originally applied for it: Filing the application in the US patent office, either as a regular application or as a provisional application Filing formal drawings in the US patent office Preparing a follow-on regular application (when you previously filed a provisional application), if: you request the regular application within ten months after the provisional patent application was filed; and the two applications are identical Preparing a follow-on regular application (when you previously filed a provisional application), if: you request the regular application within nine months after the provisional patent application was filed, and the regular application has additional material which you provide to me during those nine months Filing a follow-on regular patent application in the US patent office At your direction, adding additional material to your previously-filed patent application by preparing a "continuation-in-part" application Filing a continuation-in-part application in the US patent office Turning an allowed patent application into an actual granted US patent; showing you how to pay post-grant maintenance fees online All of the services stated above for a reissued patent, if you decide that your granted patent does not meet your needs, and should be reissued as a patent which does meet your needs All of the services stated above for a supplementallyexamined patent, if you decide that your granted patent did not get the examination which meets your needs, and should get the examination which does meet your needs Patent office fees (if any) only $500 Same as for a regular patent Same as for a regular patent -6-

7 Representing you in the US patent office -- if it does not grant your patent just as you originally applied for it: All of the services stated above for a just-as-you-originallyapplied-for-it patent Evaluating whatever documents the US patent office sends to me from time to time; forwarding them (and my evaluations of them) to you At your direction, designating which invention the US patent office is to work on if it says that multiple inventions have been included in a single patent application At your direction, preparing "divisional" applications on one or more of the extra inventions Filing a divisional application in the US patent office At your direction, allowing your application to expire without becoming a patent, if you decide that continuing to seek a patent would not be cost-effective At your direction, preparing a written response to a non-final rejection of (or objection to) your application by an examiner at the US patent office Filing a written response in the US patent office to a non-final objection or rejection by a patent-office examiner Turning an allowed patent application (even though it is not just as you originally applied for it) into an actual granted US patent; showing you how to pay post-grant maintenance fees online At your direction, preparing an appeal from an examiner's final rejection (or objection), within the US patent office, to the Patent Trial and Appeal Board (for rejections) or to the Office of Petitions (for objections); this includes preparing a notice of appeal, a brief, and a reply brief, but does not include a personal appearance at the US patent office Filing an appeal in the US patent office At your direction, requesting a personal appearance at the US patent office in support of your appeal As stated above $500 per divisional application $1,500 Patent office fees (if any) only, in addition to the briefing fee, plus travel expenses and patent office fees -7-

8 Representing you in the International Stage of the PCT: Preparing a follow-on PCT application (when you previously filed a provisional or regular application in the US patent office), if: you request the PCT application within ten months after the US patent application was filed; and the two applications are identical Preparing a follow-on PCT application (when you previously filed a provisional or regular application in the US patent office), if: you request the PCT application within nine months after the US patent application was filed, and the PCT application has additional material which you provide to me during those nine months Preparing documents for filing in the PCT section of the US patent office, after entering the International Stage of the PCT Filing documents in the PCT section of the US patent office, whether at or after entry At your direction, allowing your application to expire without becoming a patent, if you decide that continuing to seek a patent would not be cost-effective Representing you in the National Stage of the PCT: Entering the National Stage of the PCT in a national patent office, whether the national office is the US patent office or a foreign patent office; a regional patent office (such as the European Patent Office) counts as a single national patent office for this purpose At your direction, allowing your application to expire without becoming a patent, if you decide that continuing to seek a patent would not be cost-effective Preparing post-entry documents for filing in a PCT national office, whether the national office is the US patent office or a foreign patent office Filing documents in the US patent office, as a national patent office, whether at or after entry $500 Same charges as if the documents were to be filed in the US patent office directly, without using the PCT Patent office fees (if any) only $500 for each national patent office Same charges as for a non-pct application in the US patent office Patent office fees (if any) only -8-

9 Forwarding documents to Inovia, my foreign-patent logistics service, for filing in a foreign patent office (or offices) as a national patent office (or offices), whether at or after entry Representing you in international patent treaties other than the PCT: Determining whether a nation is a member of an international patent treaty, other than the PCT, which is served by Inovia, my foreign-patent logistics service; unserved nations are excluded from this agreement Preparing a follow-on treaty application (when you previously filed a provisional, regular, or PCT application in the US patent office), if: you request the treaty application within ten months after the US patent application was filed; and the two applications are identical Preparing a follow-on treaty application (when you previously filed a provisional, regular, or PCT application in the US patent office), if: you request the regular application within nine months after the US patent application was filed, and the treaty application has additional material which you provide to me during those nine months Preparing post-entry documents for filing in the treaty nation Forwarding documents to Inovia for filing in a foreign patent office (or offices) as a national patent office (or offices), whether at or after entry Inovia's fees only (which will include its own fees, foreign patent office fees, foreign patent attorney's fees, translation fees, etc.) $500 Same charges as if the documents were to be filed in the US patent office Inovia's fees only (which will include its own fees, foreign patent office fees, foreign patent attorney's fees, translation fees, etc.) -9-