After conducting an initial patent consultation with a registered patent attorney, there are many things that will happen quickly and swiftly. Many of actions items may have been explained by the patent lawyer during that initial meeting, while others steps may be anticipated. This said, here is a list of things to expect to occur soon after an inventor’s first meeting with a patent law firm:
Your patent attorney will conduct a conflict check:
After understanding the nature of the invention, the scope of the work, and creating a budget for engagement, the registered patent attorney will likely perform a conflict check with other attorneys in the patent law firm to determine if there is any current client or patent matter that may preclude representation. Such conflict checks make sure that the inventor is not a potential competitor to an existing client of the patent firm, and additionally make sure that there is no conflict as to subject matter (ie, the technology is too similar to a technology which the patent law firm already filed for).
These conflict checks usually take a day or a few days to complete. Accordingly, there may be some delay between an initial patent consultation and a follow up communication from the registered patent attorney because they are awaiting these types of analysis to be completed.
An engagement letter or fee agreement will be circulated:
It is always important for a new patent client to review and understand the costs, fees and payment obligations required by the patent law firm to provide patent services. Very often these terms are provided to an inventor by the registered patent attorney through a written engagement letter or fee agreement. It is important for each new patent client to review these written terms, understand them, and realize the payment obligations associated with representation by a registered patent attorney.
A fee agreement often includes a break down of how legal fees will be billed as well as a budget, capped fee or flat fee for each legal project to be conducted – such as a patent search, a patent filing, or other related form of patent research. It is important for the inventor to understand how legal actions will be billed, as well as the ability to forecast costs.
In addition, a fee agreement will provide a timetable for payment for legal services, which is typically 30 days after those services are invoiced and received by the client. Inventors should understand that these payments are not contingent on external factors such as commercialization of the technology, the ability to obtain funding, or identification and execution of a licensing agreement.
Lastly, a fee agreement will likely address some form of agreed to dispute resolution should there be an issue over timely payment of legal fees. Often, patent law firms will require some form of arbitration should there be a dispute over fees or if the inventor fails to timely pay for patent services. Many bar associations, including the Florida Bar, have created fee arbitration that requires no initial filing fee and allow quick and informal resolution by a single panel or three panel group of neutral attorneys.
A retainer will be secured to cover costs and fees:
After a conflict check clears and the fee agreement is circulated by the registered patent attorney and signed, the next step in the patent process to engage a patent law firm is to provide payment to cover a retainer. In many ways, a retainer acts as a deposit or down payment for legal services to cover a variety of hard costs and soft costs. Hard costs associated with representation by a patent law firm typically including expenses associated with filing fees with the USPTO, mailing costs (including mailing of correspondence and making appropriate photocopies of patent documents), as well as engaging foreign associates – if international patent filings are desired.
Apart from hard costs, a retainer may cover a portion of soft costs such as a portion of the costs associated with a patent search, or preparation of a patent filing. These forms of retainer are typically a down payment.
It is important for the client to understand how a retainer will be applied, what a retainer shall cover, and how much of the total budgeted fees the retainer represents. Again, this stresses the importance of reviewing and understanding the terms of a fee agreement or engagement letter.
Circulation of a New Client Questionnaire:
Many patent law firms will require a new client to fill out and return a questionnaire. These forms typically include contact information, payment information, and best means of communication. Others often include information regarding the invention, known competitors in the market, explanations on how the invention works, as well as any known prior issues patents regarding the subject matter.
It is important to fill out this information accurately.
Collection of Patent Documents
It is important after meeting with a registered patent attorney to collect any requested patent documents that may have been addressed, identified and discussed during an initial patent consultation. These patent documents may include patent research conducted by the inventor which addresses the current state of the art (including reference material like scientific journals, technical articles or excerpts from a treatise). In addition, such patent documents to be circulated after an initial patent consultation may include any on-line patent search results conducted by an inventor.
The key in this exercise is to ensure that the registered patent attorney obtains key patent documents in order to perform his or her job timely and thoroughly.