Utility Patent Step 1 – LIMITED SCOPE ENGAGEMENT LETTER
This Limited Scope Engagement Letter ("Agreement") is entered into as of the date of purchase, by and between PLAGER SCHACK LLP, a California limited liability partnership ("Practitioner") and the individual purchasing the Utility Patent Step 1 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:
Please note that Practitioner may not be able to meet a provisional filing deadline for orders that are placed within 20 days of the expiration of a provisional application for patent. All orders placed less than 60 days prior to the provisional filing deadline . Practitioner will contact you if your order requires additional fee.
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.
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 of up to THIRTY (30) minutes and during Practitioner's business hours with you 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 patent applications for 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
Summary of consultation in email to you;
Coordination of the preparation of up to FOUR (4) sheets of formal drawings prepared by LegalZoom based on informal drawings provided by you; and
If you purchased the Patent Search and Review within the Step 1 package, an assessment of THREE (3) prior art references or patent applications filed with the USPTO chosen by you and FIFTEEN (15) additional minutes of Practitioner telephone consultation.
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 non-obviousness 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 or non-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.
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 in writing signed by you.
Before the commencement of the Limited Services, you agree to pay:
1) $699.00 Practitioner fees, and
2) $499.00 if Client selects to include the Patent Search and Review within the Step 1 package.
You agree and understand that the legal fees due hereunder are earned upon the Practitioner's initial consultation with you. You may cancel this Agreement within ten (10) 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 12 "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 reflect above, and any filing fees not expended). To request a refund, please call the Practitioner.
Practitioner and LegalZoom have made no representations, promises, warranties or guarantees to you, expressed or implied, regarding the outcome of your patent application, and nothing in this Agreement shall be construed as such a representation, promise, warranty or guarantee.
You understand that under this Limited Scope Agreement – Utility Patent Step One – that Practitioner will NOT be filing or preparing any patent application for you (provisional or non-provisional) and that should you desire to file a provisional or non-provisional patent application, a separate written agreement must be entered into and you will be required to pay additional fees and costs for such additional services.
You further understand that proceeding under this Limited Scope Agreement may provide low filing fees, and low Practitioner costs. 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.
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;
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 all United States nonprovisional patent applications are subject to examination and the application of worldwide prior art, which includes both patent prior art and non-patent prior art. A worldwide patent prior art search is available by request through the Practitioner, but is not a service offered by LegalZoom at this time.
You understand that most (approximately 80-90%) non-provisional patent applications receive an Office Action from the USPTO. Practitioner cannot and does not guarantee that your application will avoid an Office Action. You understand that this Limited Scope Agreement does not include review of or response to Office Actions.
You acknowledge that nothing in this Agreement or in the work the Practitioner provides is in any way meant to assist, aid or otherwise provide any support for a foreign (non-United States) patent application of any kind and may not be relied upon for such filings.
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 JUDICIAL ARBITRATION AND MEDIATION SERVICES (JAMS) IN ORANGE COUNTY, CALIFORNIA, WITH (1) ONE ARBITRATOR. THE ARBITRATOR SELECTED BY THE CLAIMANT AND THE RESPONDENT USING THE METHOD IN PLACE UNDER JAMS RULES. THE ARBITRATION SHALL BE GOVERNED BY THE LAW OF CALIFORNIA, WITH THE PLACE OF ARBITRATION IN THE COUNTY OF ORANGE, CALIFORNIA. 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.NOTWITHSTANDING THE FOREGOING, FEE DISPUTES SHALL FIRST BE RESOLVED USING THE MANDATORY ARBITRATION PANEL OF THE ORANGE COUNTY BAR ASSOCIATION IN ORANGE COUNTY, CALIFORNIA.
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, and under no circumstances will there be consequential, special, or punitive damages.
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 and acknowledge that LegalZoom is not a law firm or a Practitioner, and that no Practitioner-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 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 nonwaivable conflict of interest the Practitioner may terminate this Agreement. 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.
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.
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 the State of California, County of Orange 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 California Civil Code Sections 1633.1 — 1633.17, 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.