|
[ Home ] [ Getting Started ] [ Sample Agreement ] [ Engineering ] [ Patents ] [ Invention Facts ] [ Agent Bio ] [ Agent vs Attorney ] [ Publications ] [ Fees ]
PATENTING SERVICE
AND
NON-DISCLOSURE AGREEMENT
PATENT AGENT: Kirk A. Wilson
of Wilson Enterprises
INVENTOR(S):
AGENT certifies
that he is currently registered with the United States Patent and Trademark Office as a
patent agent in good standing, and is thereby authorized to perform U.S. patent
application services.
The PROPRIETARY
MATERIALS disclosed to the AGENT by the INVENTORS shall be used exclusively for the
purposes of providing patenting services to the INVENTORS. AGENT agrees to accept these
PROPRIETARY MATERIALS under the following conditions:
1. These
PROPRIETARY MATERIALS, and the information they contain, shall be used by AGENT solely for
purposes requested by the inventor, such as patenting and drawings.
2. AGENT agrees not
to disclose these PROPRIETARY MATERIALS, or the information they contain to any parties
except as authorized by the INVENTOR.
3. AGENT shall
exercise a high degree of care to safeguard these PROPRIETARY MATERIALS, and the
information they contain, from access by, or disclosure to, all unauthorized persons.
4. AGENT shall only
copy these PROPRIETARY MATERIALS, as needed for the purposes above, and AGENT shall return
all PROPRIETARY MATERIALS (including any copies made) to INVENTOR at any time upon request
by INVENTOR.
5. The
non-disclosure terms herein shall not apply to any information that AGENT can document
becomes part of the general public knowledge through no fault of AGENT, or after
publication by a patent office disclosing the PROPRIETARY MATERIALS.
PRELIMINARY PATENT
SEARCH: A preliminary patent search will be performed, upon request by the INVENTOR, to
seek prior art that is similar to the invention as described by the INVENTOR. Results of
the search will be delivered to the INVENTOR for review and comment. The search
encompasses only U.S. patents issued within the past 25 years. There is no assurance that
the preliminary patent search will find any of the prior art that may be found by a patent
examiner during prosecution of a patent application. If the INVENTOR requests a more
complete search, a professional search firm will be recommended and separate fees will be
charged as agreed to by the INVENTOR.
OWNERSHIP OF
DEVELOPED FILES: Any files, including
computer files, developed by AGENT for the inventor and funded by the INVENTOR disclosing
the PROPRIETARY MATERIALS, will be provided to the INVENTOR on request if available.
For example, if INVENTOR wants the CAD or word
processor files of the patent application, AGENT will provide them, unless they have been
deleted from AGENT's computer (intentionally or accidentally).
AGENT may charge a fee for providing these files
if a significant amount of work or expense is needed, such a copying, mailing,
reformatting, restoring, modifying, etc.
PATENT APPLICATION
CONTENT: The patent application shall
comprise (circle type):
a) UTILITY - a
specification, claims, abstract, drawings, Information Disclosure Statement (if needed),
and necessary application forms;
b) PROVISIONAL - a
specification, drawings, and necessary application forms;
c) DESIGN -
preamble, specification, claim, drawings, Information Disclosure Statement (if needed),
and necessary application forms. In all
cases, a return postcard will be included to obtain filing confirmation and the
application serial number.
INVENTOR must
disclose to AGENT all prior inventions and technology known to INVENTOR that are the same
or similar to the INVENTION. Such prior art
can prevent patenting of the INVENTION.
TIMELINESS: AGENT
agrees to diligently prepare a patent application after receiving from INVENTOR all
information and materials requested by AGENT. AGENT will then provide a copy of the
application to INVENTOR for approval, and forms for INVENTOR's signature. After receiving
from INVENTOR the forms with original signatures, and the Patent Office filing fee, AGENT
will mail the patent application to the U.S. Patent Office. If AGENT is out-of-town when
the signed forms and fee arrive, the application will be mailed within 4 business days of
his return. AGENT will advise INVENTOR about upcoming out-of-town trips, and request
overnight return of the forms, or may provide another option if this may cause a problem.
An Information Disclosure Statement will be filed by AGENT with a utility or design patent
application, or within 3 months after the filing date at no extra charge, if prior art is
known by the AGENT or provided by the INVENTOR.
CONSIDERATION
(FEES): The current year fee schedule
applies. Any modifications must be approved
and submitted on a revised schedule. Payment terms are:
1.
Searches: Payment due when search
results delivered.
2.
Patent Applications: 50% advance fee due
at start. Remaining due at filing.
3.
Additional Services: Payment due at
filing.
ADDITIONAL
SERVICES: Additional services may be
requested for additional fees. Examples are
petitions, continuations, recording of assignments, appeals, modification of drawings for
marketing or production, etc..
MODIFICATIONS of
the product design or description, or additional versions or drawings of the invention
provided by INVENTOR after AGENT has started patent preparation will result in additional
fees and additional preparation time.
ISSUE FEE: The
INVENTOR is responsible for payment of the issue fee on any allowed patents. The AGENT
will inform the INVENTOR when the issue fee is due. The AGENT is not liable for late
payment of any issue fee.
MAINTENANCE FEES:
Maintenance fees are due every 4 years after a
utility patent issues. It is the
responsibility of the INVENTOR to remember the fees and pay them to the Patent Office.
AGENT will provide details on this when the patent issues.
COMPETENT EFFORT:
The AGENT will attempt to obtain a strong and
valid patent by negotiating with the Patent Office using patent law and procedure in the
INVENTOR's interest. AGENT is highly successful at obtaining strong and valid patents, but
does not guarantee that a strong patent, or any patent, will be allowed by the Patent
Office in every case.
LIMITATIONS:
Patent agents cannot provide some legal services
offered by attorneys, such as litigation, licensing, copyrights, and trademarks.
AGENT can competently handle appeals to the Board
of Patent Appeals and Interferences, but will not attempt to handle an interference.
INVENTOR
RESPONSIBILITY: It is the INVENTOR's responsibility to understand the AGENT's information
brochure, this agreement, any written or verbal advice from AGENT, and the benefits and
limitations of the type of search and patent application requested. The INVENTOR must
notify the AGENT immediately of any change of address, contact information, or
citizenship.
INVENTOR must
inform AGENT of date the INVENTION above was first publicly disclosed, placed on sale, or
used commercially. If prior to filing a patent application, most foreign patenting rights
are lost. If more than 1 year before filing U.S. and/or Canadian patent applications, then
U.S. and/or Canadian patenting rights are lost as well.
DRAWINGS: Formal
drawings provided by AGENT are guaranteed to be acceptable to the U.S. Patent Office. Any
corrections to these drawings required by the U.S. Patent Office will be at AGENT's
expense. Drawings provided by INVENTOR or a draftsman hired by INVENTOR are not guaranteed
by AGENT. Any work required by AGENT to complete and/or formalize such drawings will be at
additional charge, which will be quoted by AGENT to INVENTOR. In some cases, the best way
to formalize them may be for the AGENT to redraw them on his CAD system.
PATENT PENDING: The
INVENTOR understands that it is illegal to claim patent pending status prior to the date
the patent application is properly filed.
A PROVISIONAL
patent application provides patent pending status for 1 year, but never becomes a patent.
If a utility or design patent application is to be filed by AGENT based on a provisional
application, INVENTOR must request and fund such application within 10 months after the
filing date of the provisional application. The fee for preparing a utility patent
application based on a provisional patent application is published in AGENT's fee
schedule. This fee assumes AGENT prepared the provisional application, and no changes or
additions in the invention are required.
FOREIGN FILING, if
desired, should be done within 1 year of the U.S. filing date or foreign rights may be
lost. Foreign filing by AGENT must be requested and funded by INVENTOR within 10 months
after the U.S. filing date.
ADDITIONAL VERSIONS
of an invention can sometimes be included in the same patent application at additional
expense, but the Patent Office can require division of different versions into separate
applications if they consider the combined application too broad.
APPLICATION OF
AGREEMENT: This agreement only applies to the invention disclosed in the attachments.
INDEMNIFICATION: By
accepting these AGENT services, INVENTOR agrees to hold and save harmless the AGENT, its
successors, assigns customers and the users of its services from any liability, loss,
damage, judgments, or awards, including costs and expenses arising out of actions, claims,
or proceedings for errors, omissions, or infringement of: (a) any United States Letters
Patent purporting to cover the material to be delivered to AGENT under this order, or its
normal intended use, and (b) any trademarks appearing with the material on delivery to
AGENT; and further, INVENTOR agrees to defend AGENT at INVENTOR's expense in all actions,
claims or proceedings, provided that the AGENT shall give INVENTOR prompt notice in
writing of all such actions and proceedings, as well as notices of infringement, and
threats of suit for infringement.
|
