Q: Let's say I've a patentable invention have to sell it to a market-dominant company. What an IP lawyer should I need for?

(2) How really to make sure of a lawyer's competence, committment, and area of expertise? (3) What should I expect as norm for a payment setting (a couple real instances, please)?

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

A: A market dominant company is not likely to take you seriously until you have proceeded in the patent process until at least an Office Action noting some allowable claims. So I would be sure to file the application using some form of acceleration. Usually, that is a Track One fee and petition so that you get a first Office Action in about four months rather than 14 months to several years for a First Action On the Merits (FOAM).

If you accelerate the process then you have Office Actions and Office Action responses happening soon after you filed the application. While this does not drive up the overall cost of the project, it does collapse and concentrate the expenses.

Once you have some indication of allowability, then you need a licensing attorney to help you reach out to the dominant company and see if there is meeting of the minds on a term sheet. Once there is a term sheet, then the formal license agreement needs to be worked out.

Frequently, the licensing attorney is a different attorney from the patent prosecution attorney.

You will need to engage in a serious conversation with a patent attorney to get a more specific set of estimated costs based on the level of complexity of your invention and the number of embodiments.

James L. Arrasmith
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›
  • Sacramento, CA
  • Licensed in California

A: If you have a patentable invention and you want to sell it to a market-dominant company, you may want to consult with an IP lawyer to help you with the legal aspects of the sale. Here are some key things to consider:

An IP lawyer can help you with patent prosecution, licensing agreements, and patent litigation. They can also help you evaluate your invention and determine its potential value.

To make sure of a lawyer's competence, commitment, and area of expertise, you can do some research online to read reviews and testimonials from other clients. You can also ask the lawyer for references and check their credentials to ensure that they are licensed to practice law in your state.

Payment settings for IP lawyers can vary depending on a number of factors, such as the complexity of the case, the amount of time required to complete the work, and the lawyer's experience and expertise. Some lawyers may charge a flat fee for their services, while others may charge an hourly rate or a contingency fee (a percentage of any settlement or award obtained). It is important to discuss the lawyer's fees upfront and make sure that you understand the payment structure before hiring them.

Here are a couple of real instances of payment settings for IP lawyers:

Flat fee: Some IP lawyers may charge a flat fee for a specific service, such as preparing and filing a patent application. The fee may range from a few thousand dollars to tens of thousands of dollars, depending on the complexity of the invention and the scope of the work required.

Hourly rate: Some IP lawyers may charge an hourly rate for their services. The rate may range from a few hundred dollars to over a thousand dollars per hour, depending on the lawyer's experience and expertise.

It is important to discuss your specific needs with the lawyer and get a clear understanding of their fees and payment structure before entering into a formal agreement.

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