Professor Demchick's Patent Services

Paul H. Demchick, United States Registered Patent Agent
(United States Patent and Trademark Office Registration 52,808)

Professor Demchick's Blackboard

Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.

ENGAGEMENT LETTER

Whether in my personal life or in my patent practice, I try to avoid doing business with people with whom there is likely to be trouble if things are not spelled-out in writing. Even though I am dealing with people in whom I have some trust, I tend to "get it in writing."

In my patent practice, once a prospective client and I have come to an understanding about services I will render, I send an engagement letter (and get back a signed copy of that letter). Traditionally, the term "engagement letter" (or "letter of engagement") is used, at least in part, because it sounds less scary than "contract." Each engagement letter is customized for the client. Typically, my engagement letters spell-out:

  • What services I will perform

  • Actions needed by client (e.g., supplying certain information)

  • The costs (my fees, patents office fee, etc.)

  • The trust account in which funds will be held and how they will be dispersed

  • How we will communicate (e.g., phone numbers, E-mail addresses)

  • The scope of my practice

  • Information about the duty of disclosure under 37 CFR 1.56.

  • A summary of information supplied about ownership of the invention, inventorship, and public disclosures of the invention.

  • An estimate of the time-line for certain key steps

    • The purpose of the engagement letters is, in part, to get certain things in writing to protect both parties legally. However, an equally important reason is to be genuinely certain that the prospective client (and then client) and I truly have matching expectations. I like my clients. I do not want them angry with me. The engagement letter is one way to avoid misunderstandings. Toward that end, I try to make the engagement letters readable (not lawyer-speak). I try to keep them as short as I can and still cover what needs to be covered. Typically, one of my engagement letters fills both sides of a single 8 1/2 x 11 inch sheet of paper.