ATTORNEY-CLIENT PRIVILEGED & CONFIDENTIAL
[MY BUSINESS NAME]
INITIAL CONSULTATION REGARDING TRYING TO OBTAIN A PATENT
Initial consultation given to: Consultation given by:
Name [My Personal Name]
[My Business Name]
mailing [My Business Address – Street]
address [My Business Address – State]
[My Business tel. number]
[My Business Address email]
tel: ( )
email:
Invention Title:
Brief Description:
PATENTS IN GENERAL
What a patent is: [ ] a piece of property: you invent, and then try to create it
[ ] can make money: sell (“assign”), rent (“license”)
[ ] can enforce (a "sword" in a Federal Court)
What a patent is not: [ ] by itself a permission to manufacture (not a “shield”; manufacturers
have a legal duty to not infringe any other patent, else risk lawsuit
for infringement, compensatory & punitive money damages, etc.)
What invention can be patented: [ ] new (improvements OK), and
[ ] "nonobvious" in light of the Prior Art, and
[ ] invented by the Client, and
[ ] before others reported or patented it, and
[ ] patent application for it is prepared & filed, and
[ ] the application is “prosecuted”, etc., etc.
PATENTING YOUR INVENTION
OWNERSHIP: Who would own the patent(s) on the invention above:
[ ] Inventor works in company? ; if so, company name
[ ] Does inventor have duty to assign invention to company?
[Check Employment Agreement.]
[ ] Impression about Ownership:
“DISCLOSURE” OF INVENTION: [ ] what it is [ ] how avoided: NDA, etc.
Happened? [ ] No [ ] Yes, facts: ___
[ ] date of first disclosure: ___
[ ] Perhaps experimental use?
The first disclosure starts a “one-year clock” to file a US patent application (otherwise, too late).
Deadline by which prepared non-provisional US application must be filed:
(Allow at least two months to prepare.)
PRIOR ART SEARCH: Suggest we perform, because:
[ ] once patent application is filed, the Patent Examiner will do one anyway;
[ ] not doing one now increases chance that we learn late that there will be no patent;
[ ] not doing one before filing increases probable costs, even if there will be a patent;
[ ] thus a search is a cheap "insurance policy", which works more often than not (50%).
FOREIGN FILING: Filing an application for a patent on the same Invention in a foreign country:
[ ] Possibly no longer eligible, if disclosure has happened
[ ] Still eligible: [ ] must file first in the U.S., if invented in the US; can wait for foreign
[ ] costs of foreign filing:
[ ] value: [ ] to client [ ] to successor
ESTIMATE OF TIME & COSTS TO CLIENT FOR ONE US PATENT
[ ] has inventor filed other patents? (affects filing fees) y/n if so, how many?
BASIC ACTIVITY USUAL TIME USUAL COST
Create and file “provisional”
i.e. tentative patent application: weeks
after that, can mark
“Patent Pending” for 1 year
Patent Search and Patentability Opinion: weeks
(Decision: Proceed with patenting, or stop here:) ------
Drafting of non-provisional weeks
Patent Application
LE sE µE
Patent Filing Fees: $______
(Application is FILED:) ------{By date: } ------
(From now on, can mark: "PATENT PENDING")
PTO publishes app'n.
PTO searches art, examines app'n.
PTO sends first "Office Action": years
We draft "Response": months typ. $__
Final "Office Action" by PTO: months
(maybe 50% allowance, maybe not)
Patent Issuance Processing & Fees: ______$
Issuance of Patent: +5 months
Respond to other OA, appeals etc.:
(the other 50% of cases)
TOTALS SO FAR:
Additional USPTO Maintenance
Processing & fees (approx.):
Fee 1: issue date + 3.5years $2k / $1k / 0.5k
Fee 2: issue date + 7.5years $4k / $2k / $1k
Fee 3: issue date + 11.5years $8k / $4k / $2k
CAVEATS ABOUT THE ESTIMATES
[ ] This estimate for drafting is valid for ___ month(s). Note from above by when prepared non-provisional application must be filed.
[ ] The previous numbers are approximate. Patent Office fees are increased annually.
[ ] There are also other fees for other options if need be, such as affidavits, other petitions, etc. Fees for responding will increase, if we encounter a lot of resistance, must appeal, etc.
[ ] Fees may be repeated, if we have to apply again.
[ ] The above apply for the majority of patents. None of the above, however, is a guarantee
as to how the prosecution of an individual application will evolve.
[E.g.: if a “Derivation Proceeding” is declared, add $ (<1 chance in 10)].
CAVEATS ABOUT YOUR LEGAL REPRESENTATION
[ ] The above is only an initial consultation about trying to get a patent. The patent attorney gave you this initial consultation while under a legal duty to maintain confidential what you disclosed. At the end of this consultation, the legal services you requested will have been completed, but the duty of confidentiality remains.
[ ] This consultation is not an agreement for us to do any more work for you, such as patenting. To hire us so we can work for you, you have to sign our full representation agreement.
[ ] Even if we try to get patent for you, there is never a guarantee that a patent will be allowed at all.
[ ] Even if you do receive a patent, there is never a guarantee it will have broad coverage.
[ ] Even if you do receive a patent, there is never a guarantee that others will respect it; you may have to enforce it, even in court, and this estimate does not cover any such services from us.
CONCLUSION
This initial consultation & estimate were given by:
x
[My Personal Name] [date]
[My Business Name]