Fee practices

JimIvey

Is it reasonable to charge a fee to set up a meeting?  Hard to say.  I wouldn't do it.  I think your long term interests are best served by introducing them to one another, so I'd leave it at that.

As for provisionals, my opinion of them is well documented in here so I won't bore everyone with re-hashing them.  So, it shouldn't surprise you that I'd suggest sending the guy on his way if he insists on a $1,000 provisional (or even a $2,000 provisional).  Who do you think is going to be in hot water when it turns out that he really needed that filing date and the provisional was inadequate?  Him?  Nope.  At the very least -- the absolute very minimum -- make sure your errors and ommissions coverage is in place and sufficient before you go off writing provisional applications.

As for your agreement, it should be extremely explicit about what your fixed fee arrangement covers and doesn't cover.  I would say that it covers my time in preparing the patent application for filing and nothing else.  Your agreement letter should specify that he'll pay all costs -- including postage, patent office fees, copying, paralegal (if you choose to use a paralegal), draftsman charges, etc.  I'll let you decide whether you file with missing parts and whether reponding to the notice to file missing parts should be part of the $6k.  You should address the issue of when and how you can change your rate(s) (e.g., at any time with written notice).  In short, your agreement should leave very little room for misunderstanding.

As to whether you should charge $2,000 for $6,000 worth of work is up to you.  

Personally, I think you'll enjoy your work much more if you work with people who recognize your professionalism and the value of your work.  There will always be people who think you're much more expensive than mailing their idea to themselves.  It's best to let those people do what they think is best for themselves and just worry about doing what you know is right.  If you're good, the good work will find you.

Good luck!

ChiTown...

Thanks for the help.  It turns out that this client is NOT like the other inventors I've met lately:  he doesn't know what a provisional is, and he wants to file PCT!   So if you'll indulge me a little bit further:

I think PCT is probably a defensible choice for him, since he wants coverage in Japan equally as much as he wants U.S., and the product is completely international in nature -- in fact, when I look at other references, a lot of it seems to have Japanese inventors (my client is himself Japanese).  

I specifically brought up the alternative of  filing in the U.S first, and later doing foreign filings, claiming priority to the U.S. app, but he seems to prefer the PCT route for its flexibility with other countries.

We looked over the PCT fee schedule together, but it wasn't immediately apparent to me which of those many itemized fees would actually apply to his initial filing.   We left it that I would research that.  At any rate, he knows that it isgoing to be considerably more expensive than a U.S. filing.

My other question is this:   from my studying for the exam, I don't think that the preparation of a PCT app should necessarily be much more work than a U.S. app.   Am I correct about that?  

thanks again.

JimIvey

First, a red flag popped up.  He's Japanese.  Is he at least a permanent resident here or a citizen?  If not, you may not be competent (legally speaking) to represent him and the US may not be a competent Receiving Office for the PCT.  It ends up being a big mess.  Your application gets transfers to the IB in Geneva and you can't represent him any further.

So, first make sure he or the assignee (if there is one) is a US citizen, permanent resident, or legal entity.  

To get right to your question, no, I don't write a PCT application any differently than I write a US application.  Well, except that page size, margins, and format are carefully prescribed and you have to file with formal drawings.  If you end up in Chapter 2 over seas (the IB, for example), they like to see claims in the "characterized in that" form.  I ignore that objection and leave it to the national offices to sort that one out.

PCT first is not necessarily a bad way to go.  You'll get your first Office Action on the merits (Written Opinion in PCT parlance) much more quickly.  On the negative side, you may be postponing issuance of your US patent by the delay between the PCT application and the US national application (up to 30 months).

The fees alone are a bit steep, however -- $2-3k for Chapter 1 and about $1k more for Chapter 2, vs. $500/$1,000 for US.

I hope that helps.

ChiTown...

Thanks again.  He is in fact a US citizen, but I'm glad you prompted me to check.

As for the formatting requirements:   yes, since one of the old Exam questions related to "A4 paper", I was certainly on top of that one!

Do you use PCT-EASY to file?   I've gotten  the impression that the PCT electronic filing procedures are considerably easier and more reliable than the PTO's.

JimIvey

A4 is extremely hard to find!  Hey, I should re-sell it on eBay!  ;-)

PCT-EASY is Windows-based, I believe.  I use Linux.  So, it's paper only for me.

Regards.

ChiTown...

OK, I've been wading through the WIPO docs on fees, and THINK I've got it.   Can you check my work?  This assumes that the PCT filing is the first one (no corresponding US app yet), and that I use the US PTO as the RO:

Transmittal:  US $300

Filng:  CHF 1400  ( minus CHF 100 if I use PCT-EASY, making US $1131 at exchange rate of 1 CHF = $0.87)

per sheet over 30:  CHF 15

Search:   US $1000

So we're looking at about US $2400 plus page charges.  I know that there are also Chapter II fees, and National Stage fees, and it's different if I file US first and then do the PCT  app corresponding to it (within 12 months).   But this will do for starters.

Thanks so much, Jim, you are a real resource.

JimIvey

Well, I'm going to have to admit a embarrassing secret here.... my office manager prepares the forms.  I review them and cross-check them, but I don't dig up the primary references.  Let's see how I do on my own....

First, the Request form is here, I believe:
http://www.wipo.int/pct/en/forms/request/ed_request.pdf

The fee calculation sheet is on page 19.  I (we) use that for preparing estimates in addition to actual filings.  It provides a nice checklist.

Here's a rundown of the fees you'll probably need (perhaps where you got them in the first place):
http://www.wipo.int/pct/en/fees.pdf

Both of those were found here:
http://www.wipo.int/pct/en/access/filing.htm

By and large, I think you've got it right.  But the way I'd really check it is fill out the fee calculation sheet on the Request form.

The good news is that a good faith effort to file some things in the PCT results in notification of your errors (if any) and a chance to fix it.  I'm pretty sure any inadequate fees can be fixed after filing.

Regards.

Jonathan

Additionally you could just file with no fees but I suppose there is some surcharge associated with that..

JimIvey

I had to look it up to be sure, but, yes, you can.

http://www.uspto.gov/web/offices/pac/mpep/documents/appxt_r15_4.htm#pctrule-15.4

TinyURL: http://tinyurl.com/6sgur

Regards.