Provisional Application for Patent – LIMITED SCOPE ENGAGEMENT LETTER
This Limited Scope Engagement Letter ("Agreement") is entered into as of the date of purchase , by and between DUNLAP BENNETT & LUDWIG PLLC, a Virginia professional limited liability company ("Practitioner") and the individual purchasing the Provisional Application for Patent offered on the LegalZoom.com, Inc. ("LegalZoom") website ("Client," "you," or "your"). You hereby agree that by checking the box below, you accept the terms of this Agreement as follows:
The completion of your order on the LegalZoom site triggers an immediate administrative review of the data and also immediately incurs credit card settlement fees charged to the Practitioner. As a result of the foregoing, the Practitioner reserves the right to retain a minimum administrative fee of $100 to defray these costs in the event of a Client refund. Even if you request a refund immediately after submitting your order this administrative fee will be charged for the technology and administrative costs incurred with the receipt of your application.
Updated April 02, 2020
- Incorporation of Additional Terms
- Limited Scope of Services
This Agreement is for limited legal services only. Because only limited services are offered, Practitioner is representing you for the reduced flat fee discussed in paragraph "Fees" below. You retain Practitioner to provide the following limited scope of services ("Limited Services"):
- One (1) telephone consultation, up to THIRTY (30) minutes and during Practitioner's business hours, for the following:
- Suggestions on how to emphasize what you believe to be the patentable aspects of your invention description submitted through LegalZoom;
- Answers to your basic patent law questions;
- Answers to your questions of whether a patent or other type of intellectual property protection is appropriate for you;
- Brief explanation of advantages and disadvantages of using provisional patent applications for a utility patent;
- Brief explanation of advantages and disadvantages of using non-provisional patent applications;
- Suggestions on how to use patent search results;
- Brief explanation of advantages and disadvantages of an infringement opinion;
- Suggestions on how to proceed to protect your invention; and
- Basic summary of consultation in email to you;
- Preparation of an initial draft of one U.S. provisional patent application ("USPPA") having up to FOUR (4) pages of specifications (formatted in a single column with a minimum font size of 12 pt and minimum of 1.5 spacing between lines), up to TWENTY (20) sheets of informal drawings prepared by you, and ONE (1) independent claim, with one revision, based on your comments, resulting in the final USPPA;
- Coordination of the preparation of up to FOUR (4) sheets of formal drawings (which you may choose to purchase from and have prepared by LegalZoom at an additional cost) based on informal drawings provided by you; and
- Electronic filing of one USPPA with the U.S. Patent and Trademark Office ("USPTO").
You agree that unless you separately retain the Practitioner herein by separate written agreement signed by you, that the services expressly excluded from the Limited Services include, but are not limited to, the following:
- Review and/or analysis of all prior art or patent search results;
- Assessment and/or legal opinions relating to or regarding inventorship;
- Assessment and/or legal opinions relating to or regarding ownership;
- Assessment and/or legal opinions relating to or regarding novelty and/or nonobviousness of the invention;
- Assessment and/or legal opinions relating to or regarding statutory bars to patentability;
- Assessment and/ or legal opinions relating to or regarding infringement of patents owned by others;
- Infringement of patents owned by others;
- Receipt and/or response to any communications from the USPTO;
- Tracking and/or reminders of filing deadlines, statutory bar dates, limitations periods;
- Conversion of or any preparation of your provisional application to a non-provisional application;
- Loss of priority filing date of your provisional application; and
- Any drafting work, claims preparation, assessment and/or legal opinion sufficient to support any foreign (non-United States) rights in the claimed invention.
- Additional Services
You may request legal services outside the scope of this Agreement. If Practitioner agrees to provide additional services, those services will be described in and subject to a separate retention agreement that must be signed by you. If you are a member of a LegalZoom Legal Services Plan you will be entitled to a 25% discount.
Docketing Fee – After Practitioner files your application, you will be responsible for answering any notices from the USPTO and meeting any deadlines. You have the option to request Practitioner to docket and track a provisional patent application for an additional fee of $199, which includes electronically forwarding all communication from the USPTO. You may also retain Practitioner to respond to Office Actions at our standard hourly rates.
Additional Page Fee – To the extent the Practitioner, in its professional opinion, determines that the page limit in paragraph 2(b) is insufficient to adequately describe your invention, you acknowledge and agree that you will be charged for any additional pages required, deposit of which fees will be required before your application is prepared and filed. However, and ONLY in the case of biological, biotechnological, chemical, electronic, software, computer hardware, or plant patent applications, you will receive one (1) additional page over the four (4) page limit in paragraph 2(b) for no additional charge.
Before the commencement of the Limited Services, you agree to pay:
- $689.00 Practitioner fees for applications that do not include biological, biotechnological, chemical, electronic, software, computer hardware, or plant patent applications, or
- $889.00 Practitioner fees for applications that include biological, biotechnological, chemical, electronic, software, computer hardware or plant patent applications and, in either case,
- The applicable USPTO filing fee based upon your entity type (entity type and filing fees listed below).
Application Filing Fee
The above filing fees are set by the USPTO and are subject to change. Exact filing fees owed will be determined at the time of filing your application, and that you are solely responsible for paying any increase in the USPTO’s filing fee.
Formal drawings may be obtained for an additional fee of $399.00 for up to FOUR (4) sheets of drawings and up to two (2) sets of revisions of said drawings.
A prior art search may be obtained for an additional fee of $299.00, which does not include a Practitioner review or assessment.
- Refund Policy
You agree and understand that the legal fees due hereunder are earned 1/3 upon the Practitioner's initial consultation with you and the remaining 2/3 upon completion of the first draft of the provisional patent application. You may cancel this Agreement within sixty (60) days of purchase for a partial refund provided you have not had the initial consultation with the Practitioner, or this Agreement may be cancelled by the Practitioner subject to the provisions of Section 11 "Termination", less the cost of our $100 administrative fee, the credit card settlement fees of 4% of the total paid including filing fees, pro-rated work completed (which results in a pro ration of the attorney fee to be determined by Practitioner in its sole discretion, but in no event less than those amounts reflected above), and any filing fees not expended. To request a refund, please call the Practitioner.
Subject to the foregoing, services provided by LegalZoom are subject to LegalZoom's LZ Guarantee.
- No Guarantee
Practitioner and LegalZoom have made no representations, promises, warranties or guarantees to you, expressed or implied, regarding the timing of filing or any outcome of your patent application, and nothing in this Agreement shall be construed as such a representation, promise, warranty or guarantee. You specifically acknowledge that a USPPA is "provisional" in nature and does not "issue" and that any non-provisional application which would preserve the rights described in the USPPA must be filed in a period not more than twelve (12) months from the date of filing the USPPA to preserve such rights which might otherwise be forfeit.
IT IS RECOMMENDED THAT YOU START THE PROCESS TO FILE A NON-PROVISIONAL APPLICATION NOT LATER THAN THREE (3) MONTHS BEFORE THE FILING ANNIVERSARY OF THE PROVISIONAL PATENT APPLICATION TO ENSURE SUFFICIENT TIME TO COMPLETE THE NON-PROVISIONAL PATENT APPLICATION IN AN ORDERLY FASHING, AVOID EXPEDITE FEES AND AVOID LOSING THE PRIORITY DATE OF THE PROVISIONAL APPLICATION.
You understand that utilizing a USPPA may provide low filing fees, low attorney costs, and quick filing date in comparison to a non-provisional utility patent application. However, there are disadvantages, including but not limited to:
- Only a cursory inquiry is made into the details and scope of the invention; thus, important aspects may be overlooked by you and/or Practitioner.
- A provisional patent application will never, without an additional non-provisional patent application, result in the issuance of a patent and will expire at the end of twelve (12) months from the date it is filed.
- The written description may fail to meet the statutory requirements of providing the best mode for practicing the invention and/or enabling one to practice the invention without undue experimentation, thus rendering an eventual patent void.
- The disclosure may not be adequate to claim priority of the provisional in a later filed patent application, thus precluding you from obtaining a filing date that has priority over another person with the same or similar invention.
- USPPAs are not required to have claims and any claim prepared as part of such an application under this Agreement is generally not sufficient to preserve foreign claims in the invention.
- You understand that Practitioner cannot and does not make any representations about the patentability of your invention. There are various limitations on page length, number of drawings, number of claims, and number of drafts in the Limited Services. This could be disadvantageous to you. For example, Practitioner cannot and does not make any representation that the Limited Services can or does allow Practitioner to cover all important aspects of your invention in the patent application. If important aspects are not covered, this may negatively affect the scope of patent protection. Further, such limitations may preclude Practitioner from meeting the legal requirements of a patent, such as disclosing the best mode of practicing the invention and describing the invention that would enable one to practice your invention. In the absence of meeting such legal requirements, your patent could be found invalid.
- You understand that patent prosecution is very expensive and that filing a provisional application is the first step in obtaining an issued patent. Additional costs can include the cost of preparing a non-provisional application discussed in Section 6(b) above, responding to Office actions from the USPTO, and various USPTO fees including filing fees, issue fees, and maintenance fees among others. You should budget a minimum of $10,000 to obtain an issued patent in the US alone. Costs frequently exceed that point. Costs for filing foreign patents (outside the US) should be discussed with Practitioner, are much more expensive generally than the US application process, and can be in excess of 3 to 4 times the cost of pursuing a US patent.
- The Practitioner is an entity separate from LegalZoom, including its subsidiaries, directors, officers, shareholders, and affiliates (collectively, the "Affiliates"). The Practitioner is not a partner, joint venture, subsidiary, division, or affiliate of LegalZoom or its Affiliates. LegalZoom and its Affiliates do not receive any portion of Practitioner's fees and any arrangement subsequently made by you and Practitioner is strictly between you and Practitioner. All marketing services performed by LegalZoom or its Affiliates on behalf of Practitioner are paid for by Practitioner.
- You acknowledge that LegalZoom did not give you any legal advice, opinion, or recommendation about your legal rights, remedies, defenses, options, selection of forms, or strategies.
- You agree that under no circumstances will LegalZoom be responsible for, and you agree to hold LegalZoom harmless from: (1) the quality of Practitioner's services; (2) your satisfaction with the Practitioner; (3) the results of any advice given by or representation from the Practitioner; or (4) the failure or refusal of Practitioner to respond to or consult with you. Even if liability is found on the part of LegalZoom, it will be limited to the amount paid for the services, and under no circumstances will there be consequential, special, or punitive damages.
- You acknowledge that Practitioner may engage LegalZoom and its Affiliates to perform certain paralegal services at Practitioner's direction. You expressly authorize LegalZoom (including its Affiliates) and Practitioner to share certain client information and data with each other, for the purpose of allowing Practitioner to perform the Limited Services set forth herein. Nothing herein shall relieve Practitioner of its duty of confidentiality.
- Resolution of Disputes
YOU AGREE THAT IF ANY DISPUTES ARISE OUT OF OR RELATE TO THIS AGREEMENT, OUR RELATIONSHIP, OR THE SERVICES PERFORMED (INCLUDING BUT NOT LIMITED TO DISPUTES REGARDING PRACTITIONERS’ FEES OR COSTS, AND CLAIMS OF NEGLIGENCE, BREACH OF CONTRACT OR FIDUCIARY DUTY, FRAUD OR ANY CLAIM BASED UPON A STATUTE), SUCH DISPUTE IS A BUSINESS DISPUTE AS IT RELATES TO PATENT FILING, WHICH IS A BUSINESS SERVICE AND SHALL BE RESOLVED BY SUBMISSION TO BINDING ARBITRATION THROUGH THE AMERICAN ARBITRATION ASSOCIATION, UTILIZING THE COMMERCIAL ARBITRATION RULES, WITH (3) THREE ARBITRATORS. THE ARBITRATOR SELECTED BY THE CLAIMANT AND THE RESPONDENT, RESPECTIVELY, SHALL, WITHIN TEN DAYS OF THEIR APPOINTMENT, SELECT A THIRD NEUTRAL ARBITRATOR. IN THE EVENT THAT THEY ARE UNABLE TO DO SO, THE PARTIES OR THEIR PRACTITIONERS MAY REQUEST THE AMERICAN ARBITRATION ASSOCIATION TO APPOINT THE THIRD NEUTRAL ARBITRATOR. PRIOR TO THE COMMENCEMENT OF HEARINGS, EACH OF THE ARBITRATORS APPOINTED SHALL PROVIDE AN OATH OR UNDERTAKING OF IMPARTIALITY. THE ARBITRATION SHALL BE GOVERNED BY THE LAW OF VIRGINIA, WITH THE PLACE OF ARBITRATION IN THE TOWN OF LEESBURG, COUNTY OF LOUDOUN, VIRGINIA. EACH PARTY SHALL BEAR THEIR OWN COSTS AND PRACTITIONER’S FEES, REGARDLESS OF THE OUTCOME OF THE ARBITRATION. THE ARBITRATORS WILL HAVE NO AUTHORITY TO AWARD PUNITIVE OR OTHER DAMAGES NOT MEASURED BY THE PREVAILING PARTY’S ACTUAL DAMAGES, EXCEPT AS MAY BE REQUIRED BY STATUTE. ANY AWARD IN AN ARBITRATION INITIATED UNDER THIS CLAUSE SHALL BE LIMITED TO MONETARY DAMAGES AND SHALL INCLUDE NO INJUNCTION OR DIRECTION TO ANY PARTY OTHER THAN THE DIRECTION TO PAY A MONETARY AMOUNT AND SHALL IN NO EVENT INCLUDE INTEREST ON SUCH AMOUNT.
THE PARTIES SHALL NOT HAVE THE RIGHT TO CONDUCT DISCOVERY.
- Limitation on Damages
You agree that Practitioner's liability to you, if any at all, is limited to the amount paid for the Limited Services but does not prospectively limit any claims that would not be limited by the Virginia Rules of Professional Responsibility.
- Practitioner -Client Relationship
The practitioner-client relationship commences when Practitioner contacts you. Neither your use of the LegalZoom site nor your transmittal of electronic communications, including submission of your completed questionnaire answers, to Practitioner will, alone, create an attorney-client relationship between you and Practitioner; however, all information you submit will be held in strict confidentiality regardless of the existence of an attorney-client relationship.
You understand that the Practitioner is not acting as a Practitioner for purposes of making the application to the USPTO, and is specifically only communicating technical information to the USPTO as a registered member of the patent bar.
You understand and acknowledge that LegalZoom is not a law firm or an attorney, and that no attorney-client relationship has been or will be established between you and LegalZoom.
- Termination or Conclusion
You may discharge Practitioner, and Practitioner may withdraw its services to you, at any time, with or without cause, by written notice to the other party. Practitioner and Client shall each execute any documents reasonably necessary to complete Practitioner's discharge or withdrawal. See "Refund Policy" above for details regarding your right to a refund.
Patent prosecution is time sensitive. In the event you fail to respond to either an e-mail inquiry or phone inquiry from either LegalZoom or Practitioner for a period of thirty (30) days or more, or in the event you fail to provide authorization to file your patent application for a period of more than ninety (90) days from the date you place the initial order on the LegalZoom website, the Practitioner reserves the right at its sole option to thereafter immediately terminate representation and issue such refund as may be due to you under the "Refund Policy".
In the event the Practitioner determines that the invention submitted to LegalZoom is not patentable subject matter in the Practitioner's opinion, the Practitioner reserves the right at its sole option to thereafter immediately terminate representation and issue such refund as may be due to you under the "Refund Policy".
Practitioner shall have no obligation to maintain originals or copies of your file for more than thirty (30) days, except as required by law, following the termination or conclusion of services of any given matter.
All legal work involves various risks, and the outcome of a patent filing or transaction is never guaranteed. The risks have been disclosed in this Agreement to the extent we can reasonably do so, however there are always factors, risks and facts of which, in an individual case, the Practitioner may not be aware of and as such will not be able to disclose herein. By undertaking to retain the Practitioner pursuant to this limited scope Agreement, the Client acknowledges it is assuming such risks.
Client agrees to cooperate with the Firm in its prosecution, assistance or preparation with the Client's patent filing. The Client is expected to provide the Firm with all facts and details pertinent to the patent filing. The Firm will not provide any factual research or investigation unless specifically contracted for.
To the extent there is a non-waivable conflict of interest the Practitioner may terminate this Agreement pursuant to the provisions of Paragraphs 5 and 11 herein. To the extent there is a subject matter conflict between the Client's patent application and the patent application of another client of the Practitioner or the Practitioner's employer and to the extent legally permissible, the Client hereby waives any conflict of interest and authorizes the Practitioner to complete and file its application.
This waiver of such conflict will allow the Firm to represent the Client until such a time as the Firm feels that a conflict of interest situation precludes representation such that it may not be waived.
If the Practitioner determines it has a conflict of interest, there is another firm providing patent drafting services to LegalZoom customers, and, provided that other firm does not likewise have a conflict, you agree to such other firm providing the services herein, and understand and agree that funds you have deposited will be transferred to that other firm’s trust account. If the other firm has a conflict such that a transfer cannot be accomplished, your deposit will be fully refunded.
- Tax Advice
The Client agrees and understands that the Practitioner will not provide any tax advice. In the event the Practitioner does provide tax advice, unless it is specifically stated in writing, signed by an attorney of the Practitioner that such advice "may be relied upon for the purpose of avoiding penalties or other consequences that may be imposed upon the taxpayer", then such advice is not intended or written by the Practitioner to be used, and cannot be used by the taxpayer, for the purpose of avoiding penalties that may be imposed on the taxpayer or any other consequences.
If the Client uses e-mail to communicate with the Practitioner regarding a legal matter, there is a chance that an e-mail message could be intercepted or sent to the wrong person. The Client will avoid transmitting highly sensitive information via e-mail and waives any liability of the Practitioner for any such transmission or response by the Practitioner to any such transmission. The Client hereby consents to confidential communications on cellular or cordless telephones, and acknowledges that such communications between the Practitioner and the Client may be intercepted by third parties and become public.
- Informed Consent and Modification
You acknowledge and agree that you have carefully read this Agreement. You understand and agree that as the Practitioner's client, the Limited Services specified above are the only legal help the Practitioner will give you. You understand the possible risks and benefits of the limited service representation described in this Agreement, and the potential adverse consequences of limiting the scope of the Practitioner's representation. Understanding all of these possible risks and benefits, you voluntarily, knowingly, and intentionally enter into this Agreement with the Practitioner. This Agreement may not be modified, supplanted or supplemented by any oral agreement or written agreement unless in writing and physically signed by both you and the Practitioner, thus specifically, any other such modification by the either party, including by e-mail, is voidable at the Practitioner's sole election.
- Venue, Jurisdiction & Electronic Signature and "Click-to-Agree" is Binding
You consent to venue in and the exclusive personal jurisdiction of the State and Federal Courts located in Commonwealth of Virginia, County of Loudoun for any dispute arising under or in any way related to this Agreement, to the extent such dispute falls outside the mandatory and binding arbitration provisions of this Agreement. You hereby declare, agree and understand that by signing this Agreement in an electronic format, including by typing your name in an e-mail or "clicking to agree" to these terms, that such typing and / or agreement is an electronic signature governed by The Electronic Signatures in Global and National Commerce Act, and VA Code §59.1-485, that any such signature is a true and correct signature and shall bind you to all of the obligations as if such signature were made on a paper version of this document in your own handwriting.