Promises, promises: patent retainer agreement 4

In my last article I addressed the importance of understanding that technologies with many similar products or methods may result in limited patent protection of subsequent subject matter in that technology. Under those circumstances the application should include the maximum technical details, because no one cannot predict which details could result in a favorable outcome in the United States patent office. On another point, one must also distinguish between (i) an agreement between your corporation and the attorney, from (ii) an agreement between yourself individually and the attorney. The business person should also remember that if the fees checks are drawn from a corporate account, the client is the corporation. If the fee checks are drawn from an individual’s account, then the individual inventor or invention owner is the client.

One goal of this article is the explanation of why the retainer agreement is the best opportunity for your patent attorney to explain the circumstances of filing an application, as well as confirming the parties to the agreement, the inventors and the owners. For example, it is crucial to explain the deadlines for filing a patent application in the United States, as well as how these deadlines arise. Because many deadlines arise from the activities of the inventors, invention owner or even third parties, the applicant may have considerable control over many deadlines in the United States.

For example, there is a one year grace period for filing a patent application in the United States if the invention was disclosed in a published paper or on-line article one year prior to filing the relevant application. However, there are now so many exceptions that the one-year grace period is extremely easy to dissipate. In fact, several of these exceptions immediately prevent the filing of an application on the invention! The activities that trigger this exception are particularly dangerous at the beginning of the patent process; indeed they often occur prior to the initial consultation with the patent attorney in many cases. Therefore, these exceptions should be explained in detail in the retainer agreement in a bona fide attempt to prevent falling through the holes in the grace period. Equally important is that the retainer agreement confirms the exception activities that (i) have occurred and (ii) have NOT occurred. This record is very important in the event that in the future a third party challenges a patent on the basis of an expired filing deadline.

The retainer agreement should also confirm whether or not you will file your U.S. patent application internationally. If the applicant files exclusively in the United States, then the retainer agreement should document whether a request for non-publication of the application will be filed along with the application to the patent office. Also be sure you understand whether it is your responsibility as the client to update your contact information in the attorney’s office or whether the agreement is silent on this subject.

In addition to an explanation of deadlines, non-publication and contact information, the agreement should notify the applicant to expect a foreign filing license from the U.S. patent office. This foreign filing license authorizes international patent filings as well as exports of certain products and information. If your invention is denied a license, this denial indicates that the government believes your invention may affect national security. However, to date all my clients have received their foreign filing licenses in a timely and predictable manner early on after filing of the application.

© 2012 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at or linked in sites.


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