Dear Patently-O: How Do You React to the Following Letter

Dear Mr. Crouch:

I am a solo physician and inventor. I am wondering if you can point me in the generally right direction to resolve this issue.

I went to a large, well-respected, nationally-known firm to file a patent application for an invention. The invention is not that complicated. It’s mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.

My attorney knew from the start that I am a solo inventor and under a tight budget. The final fees were astronomical. I paid them at the time because the lawyer had obviously worked hard and I had agreed to pay the hourly rate she had quoted. However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.

To give you a comparison, based on a word count, my patent application was literally twice as long as Dean Kamen’s patent for an early Segway device in 1994. My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).

My current plan is to go back to this attorney and have a frank discussion with her, and to ask for a partial refund. If she refuses, I plan to go to the state bar and file a complaint.

Is this the right way to go about this? Are there any precedents for recovering fees in this sort of situation in a way that won’t tie me up in further legal fees?

Many thanks,

____ ____ M.D. (anonymized at the author’s request)

170 thoughts on “Dear Patently-O: How Do You React to the Following Letter

  1. 170

    To Dr. Inventor, Please consider that the patent may be of very good quality and is capable of supporting many sets of claims, for example, in a series of continuations. The patent attorney may have been working in good faith to provide you with the best possible protection and value. Also, the patent attorney worked according to your directions, and thus the work must have been commensurate with the complexity of the subject matter.

    Also, if you agreed to the hourly rate, but did not keep track of the hours actually worked, it is hard to see how you were not also responsible for the final costs. You should have asked about tracking or set a total cost limit. Ideally, the attorney would have suggested such an arrangement to avoid this kind of situation.

    Finally, you should consider that you did select this attorney for the particular subject matter, and that would have been the time to evaluate their skills and efficiency. Unfortunately, patent law is not like medicine, where tarifs are established for similar procedures.

  2. 169

    “In contrast, groundbreaking patents like the Segway can be shorter because they are so clearly distinguishable from prior systems.”

    ONLY 25 pages!!!!

  3. 168

    This sounds like a case for the market to decide. Tell your friends about your experience and post on, e.g., Patently-O. However, for the market to work, you must include everyone’s correct name. As shown by the wonderful feedback that you received, your comments will be considered by the market, which will ultimately decided if your attorney is a bad buy or, alternatively, if you are a client to be avoided.

  4. 167

    Malcolm,

    Re: “most infamous commenters”

    Another kettle calling the pot black.

  5. 166

    Dear Doc@Work –

    You are absolutely correct. The Insurance company got a much better deal than I would have. Nevertheless, the bill with the name of the world renown medical organization on top of it in half inch bold type was $100,000.00. That is the amount I would have been charge if I were without insurance.

    The fact that insurance company got a 66% discount is an aggravating factor, not a mitigating one. And even that $33,000 fee is outrageous.

    I’m sure the corporate clients of the world renown firm you went to get a better price than you did too. Does that make you feel better?

  6. 165

    anonymous: “I don’t blame you for keeping the particulars of your situation confidential, and I do wish you well. But don’t expect to get meaningful feedback from persons with only half the story. Don’t expect to get sympathetic feedback when all you give them is: “Trust me. I got screwed over.”

    The great irony is that most of this blog’s most infamous commenters do little except the above week after week. The only difference is that they are griping at the PTO instead of their patent attorney.

  7. 164

    “Lee Waiting, you are comparing apples and oranges.”

    It’s amusing that you assumed that the first doctor correctly diagnosed the patient with prostate cancer and thus made the “apples to oranges” comment. Perhaps your bias for the first doctor in the Lee Waiting letter is just as clear as the overwhelming bias for your attorney in the postings here?

    But the analogy was, in fact, apples to apples. You just missed the point. The patent Lee Waiting analogy illustrates the fact that neither you, nor Lee Waiting gave us enough facts to know whether the hard work your attorney did (you admit she worked hard) was warranted.

    The prostate cancer treatment was hard work, but it’s a pretty important fact to know whether the patient had prostate cancer or not. Instead, Mr. Waiting just told us that the exam took longer and was much more expensive than typical exams.

    Likewise, the only facts you gave us was that your invention was simple, your attorney worked hard and she billed you three times an unknown “typical” amount. That isn’t nearly enough information for multiple reasons.

    First, the alleged simplicity of an invention, alone, can be deceiving. As someone noted above, simple inventions using existing parts often require more effort to prepare, if the applicant has any intention to actually try to obtain a patent and to assert that patent later. Perhaps your attorney wanted to make sure you had a bazooka patent, rather than a Red Rider bb gun, because the attorney anticipated a fight coming from the USPTO. In contrast, groundbreaking patents like the Segway can be shorter because they are so clearly distinguishable from prior systems.

    Second, perhaps you and the attorney went through a series of re-writes in which you added more and more features, each of which incrementally increased the cost of the application. That’s not uncommon for inventors whose enthusiam for their idea results in a moving target that causes preparation costs to double or triple (as in your case).

    Third, it appears that you were heavily involved in the writing of the application. Most of these lower estimates you’re seeing are based on a single invention disclosure and the attorney writing an application from scratch. If I have to edit/revise something that an inventor writes, it always costs more to fix it–typically at least double because they are usually the hands on type that insist on adding more and more stuff.

    It’s as if a heart patient told his surgeon: “Let me make the first cut or two to save costs.” The reality is that the surgeon will have to spend time fixing what the first couple of cuts did before the surgeon can then do the intended procedure.

    I don’t blame you for keeping the particulars of your situation confidential, and I do wish you well. But don’t expect to get meaningful feedback from persons with only half the story. Don’t expect to get sympathetic feedback when all you give them is: “Trust me. I got screwed over.”

  8. 163

    “A pack of attorneys, an ordinary inventor, and a doctor walk into a bar…”

    And all of them say “ouch” at the same time.

  9. 162

    Les, I’m really sorry you spent 45 minutes in the “Cat Lab.” Why not the Dog Pound?

    Please post the EOB from your insurance plan showing how much your doctor actually got paid for the cardiac catheterization. There’s a nice fellow. Anyone want to hazard a guess as to how much Les’ cardiologist was actually paid for a cardiac cath? Les, please make up a nice big lie for us so we don’t have to be bothered with the truth (that the reimbursement is roughly in the $190 to $400 range depending on the complexity of the services). Was it worth a few hundred dollars of insurance premium to preserve your myocardium?

    BTW you are so right about how grateful I should be for getting overcharged. You don’t go far enough, though. In fact, I think lawyers should be paid just for breathing and for writing lies on patent blogs. Les, just give me your address and I’ll send you a check for that $100,000. It’s probably an underpayment but it’s all I can do right now.

  10. 161

    Dear Jules,

    Re:
    “This exchange should be on the discovery channel.
    A pack of attorneys, an ordinary inventor, and a doctor walk into a bar…”

    and then they meet …

    link to youtube.com

  11. 160

    Dear Doctor –

    I recently had a NON-emergency cardiac cauterization followed immediately by the installation of 3 Boston Scientific Stents.

    I was in the Cat lab for 45 minutes.

    The Doctor Charge $20,000. Why?

    I was in the hospital for a total of 22 hours. The small suburban hospital, which is under the umbrella of a world renown medical organization, charge $70,000 for the 45 minutes in the Cat Lab and the 21 hours and 15 minutes in the semi-private room.

    The charge for incidentals: the stents, the valium, the special dye to make my blood vessels visible in the xrays, was $10,000.

    The total charge for my 22 hours of hell was $100,000.00.

    Why?

    It sounds to me as if you got your moneys worth. Why you are complaining about the length of the application is beyond me. If you have a simple invention, then the Patent Office is going to say its been done before or that it is obvious. Your attorney did everything he or she could to defend against that charge.

    You should be drafting a thank you letter, not looking to get a discount or draft a complaint to a bar association.

  12. 159

    Dear Doctor –

    I recently spent the night in a hospital after having a non-emergency cardiac catheterization and the installation of 3 Boston Scientific stents.

    The charge for the 22 hours in the hospital was $70,000.
    The charge for the 45 minutes in the Cat Lab with the cardiologist was $20,000.
    Incidental charges for drugs and stents and xrays were $10,000.

    The grand total charged by this suburban hospital with the name of a world renowned medical organization associated with it was $100.000.00

    Why?

    It sounds to me like you got a better than average patent application prepared for you. If you can whip these things up in your kitchen, then there is likely a lot of work required to explain why your invention is not obvious. Your attorney did everything possible to prepare for the allegations of the Patent office that the item is not new or is obvious in light of the things that are in your kitchen. You should be preparing a thank you letter, not a complaint.

  13. 158

    “Ordinary, if you read my posts you will understand what kind of doctor I am. I treat one patient at a time and treat each one well. I know that I am in a privileged position”

    Definitely a proctologist.

  14. 157

    “I sort of thought that patent attorneys, with a background in science, would be ethical too. Wrong.”

    Doc, the patent attorneys I’ve worked with have been intelligent, hardworking, AND trustworthy. However, I’m not so naive to believe that all of them are – I’ve seen too many astonishingly bad patent applications. Please don’t conclude that your former attorney is representative of the lot of us. For that matter, don’t conclude that the weird assortment that comment on this board are typical, either.

  15. 156

    This exchange should be on the discovery channel.

    A pack of attorneys, an ordinary inventor, and a doctor walk into a bar…

  16. 155

    Doctor — is there any significance to the fact that you “treat one patient at a time”?

  17. 154

    Ordinary, if you read my posts you will understand what kind of doctor I am. I treat one patient at a time and treat each one well. I know that I am in a privileged position in relation to many of my patients, and I earn their trust by being decent to them. This gives value to my life that is worth more to me than money. I could behave despicably and use my power and knowledge to take advantage of my patients, but I don’t.

    The attorney I dealt with was intelligent and hardworking. I assumed that “trustworthy” went along with those attributes. Wrong. At the end of the day, I am much better off than the people who got taken in by Madoff. Maybe all of us came in on the same banana boat.

    As I’ve said earlier, every other attorney I’ve dealt with has been quite ethical and decent. I sort of thought that patent attorneys, with a background in science, would be ethical too. Wrong.

    If you still think this is a put-up job, Ordinary, I’d suggest that you’re a bit paranoid. No insult intended; it’s a common trait among inventors and that’s why there are NDAs. But thinking that this is all a hoax is a real long shot. You’ll have better luck looking for the UFO that shot JFK than looking for the “hidden answer” here.

  18. 153

    Not that I mind put-up jobs – they intrigue me – trying to figure out, what’s up doc.

  19. 152

    “Well, less than $64K. But not far from that range. And far more than the highest end of the upper range mentioned by “i thought.””

    Well doc, that more than raises an eyebrow. I think Mr. Cooper’s advice above is pretty good. If you haven’t already, find out whether your state’s bar has a fee dispute resolution program.

    Good luck to you.

  20. 151

    Dear D@W,

    My take:
    Either you were born on a banana boat yesterday,
    or this whole thread is some kind of put-up job.

  21. 150

    Well, less than $64K. But not far from that range. And far more than the highest end of the upper range mentioned by “i thought.” And, no, I couldn’t afford it, not by a long shot; and without that money now, getting this product to market will be far more difficult. Clearly my enthusiasm got taken advantage of, but at the end of the day I have only myself to blame for being so trusting. Live and learn.

  22. 149

    Dear D@W,

    Please see “i thought we were professionals” above:
    I agree with his dollar figures.

    So, now for the $64,000 question:
    How much were you billed?

  23. 148

    No, I have not given out the amount yet. I’m just waiting to see what your dollar figure is. Remember, I was kind enough to answer your questions in detail.

  24. 147

    Dear D@W,

    Please see “i thought we were professionals” above.

    To me, it is getting curiouser and curiouser that you haven’t mentioned how much you were billed.

    Did I miss it?

  25. 146

    “6, if your stated desire to go to law school is based on an expectation that you can charge $20K per application, then you are seriously deluded, and might want to reconsider.”

    I just said that it was a ceiling, as in, that is the very most that would ever be acceptable even when things went a bit crazy. As you just noted, 10k is generally accepted, I see no reason why 15k wouldn’t be considered a ceiling, and that’s what I’ve heard on here before, I’m not speaking just from “what I think”. I’m just repeating what’s been said.

    I should add that, to me, a ceiling should be 5k or less. That isn’t the case however.

  26. 145

    “A reasonable ‘ceiling’ might be 15k for a simple one. I’m betting you paid 20-30k didn’t you?”

    Patent examiners are now providing advice on legal fees? Incredible!

    Doc, although your particular situation might be unusual, I would expect a reasonable fee for a mechanical invention with relatively uncomplicated drawings to be south of $10K, not including filing fees, and perhaps well south. I’ve never charged anywhere close to $15K, and generally would be too embarassed to do so even if I actually put in that much time. While my firm’s attorneys are not expensive, we’re not a “discount shop” either.

    There are a lot of factors, of course, including whether a good search was included. However, I often find that a decent search doesn’t add much to the total cost, because the results help me to focus the claims and the specification on the distinctions over the prior art. It is also true that individual inventors require more time to explain what’s going on, such as why the claims don’t list every component in your new widget. That affects cost, but not dramatically unless the client is unusually difficult.

    6, if your stated desire to go to law school is based on an expectation that you can charge $20K per application, then you are seriously deluded, and might want to reconsider.

  27. 144

    Just an ordinary inventor, please let me know what your price ceiling would be for what YOU would consider a simple mechanical invention. You can tell us what your example of the invention is for clarification.

  28. 143

    Dear D@W,

    Re: “I don’t know what you mean by ‘cost conscious.’”

    I used plain terms in my questions; no trick meanings:

    “cost conscious” = “under a tight budget” = “try[ing] to cut down on costs”

    With all due respect, if you are admittedly
    “not versed enough in the art of patenting,”
    I cannot trust your judgment as to:
    (i) what is a “simple mechanical invention,” nor
    (ii) the myriad other factors affecting the time required in drafting a proper patent application.

  29. 142

    “For self-pay patients, fees are in the $100 to at most $200 range for most office services”

    Does that include the Brazilian shave using your modified lemon zester?

  30. 141

    “performing a time-consuming examination that can best be described as a total violation of my personal space.”

    “To which I replied: how did you know about that?”

    LMFAO!

    “I invite anyone else to comment about a reasonable price ceiling for a patent application for a simple mechanical invention. ”

    A reasonable “ceiling” might be 15k for a simple one. I’m betting you paid 20-30k didn’t you?

    “Noise above Law, what would your ballpark figure be for a patent application fee for a simple mechanical invention?”

    The problem is doc, that most people here are going to think that you invention seemed simple, but as many seemingly simple inventions, they are complex when it comes to applying the law to them.

    Two line claims are often some of the harder ones I deal with. But at first, upon reading it it seems that it will be an easy kill. The attorney, having seen my 102b presented to him will think, gosh, 6 here just took three important words from my claim, googled them, and out popped this 102b. Sometimes they’re right. Sometimes I didn’t use 3 words from their claims, sometimes I used words that I knew described what was covered by the claim but wasn’t stated. And some other times I use those different words, find a close reference, spend 8 hours backtracking through citation to citation to find what I needed.

    All that can happen for 2 lines of text.

    It could be describing a wire with atoms falling out at a lesser rate than a wire without a special procedure performed on it. Or it could be describing a bicycle with specially coated reflectors on the handlebars. Both very simple things, but who know how long it could take to find it?

  31. 140

    All of my fees are clearly presented prior to service. Remember, I work by the job, not by the hour. If I have to spend an extra hour to take care of a patient’s needs, I still get paid the same amount, so there is no impact on the patient’s charges.

    Most of the charges that insurance-covered patients are hit with are copayments of $25 to $40. This is usually considered cost effective, especially when an office visit can uncover a life-threatening condition that is caught in time. For self-pay patients, fees are in the $100 to at most $200 range for most office services, and I usually discount these from our fee schedule because the prompt patient payment spares us the cost and effort of fighting with health insurance companies.

    In the event that costs are more in the $1,000-$2,000 range for rare procedures, I carefully explain the costs, risks, and benefits of the procedures prior to performing them. If I don’t feel that a procedure is in a patient’s best interest, I recommend that they not have the procedure (even if another doctor would do it). I am acutely conscious of the need to get excellent outcomes from those procedures, especially with patients paying so much for them. My practice relies on word of mouth from happy patients; such successful procedures can be life-changing and I think they are often a bargain at the price paid.

    However, I have definitely had patients who believe that they are overcharged. The most common complaints come from Medicare patients and other insured patients who complain about their coinsurance and copays. For example, many patients with copays of $15 to $20 will sometimes have to pay a double copay, and they complain bitterly about this. In addition, Medicare patients often believe that Medicare should pay the entire amount of their visit, so they complain about the 20% portion that they have to pay. This is typically in the $15-$20 range for a routine visit. I have never yet had a patient complain about the cost of the expensive procedures because the benefit to the patient is extremely positive relative to the cost.

    I am very sensitive to patients’ financial concerns; most of my patients are on tight budgets.

    My management of the financial aspect of my patients’ health care is, I feel, part of my responsibility as a professional. Their finances affect their well-being just as much as their health does.

    I hope this answers some of your questions.

    Noise above Law, what would your ballpark figure be for a patent application fee for a simple mechanical invention? At what dollar figure would you consider that the attorney had overbilled the client?

  32. 139

    “A question for the Doc – how do you handle patients that complain about the high cost of medical service? Do you blame the system, insurance, offer rebates..?

    Posted by: Noise above Law | Mar 26, 2009 at 10:28 AM”

    Dear Doctor at Work,

    First, thank you for the house visit – it was more than I expected.

    Second, I reposted my question so that you do not have to search for it. I struggle to see how your answer of “the questions sought to get specific dollar figures and other information that would be potentially identifying” really fits into my specific question. Your insightful conclusion of “I don’t get the sense that either of you (or many of the other posters) are really interested in logical analysis” fails in the first instance. Is it any wonder why you draw so many snarky comments?

    “If I were your client, would you advise me to post such information in a public forum?” Of course not, but then again, I wasn’t the one seeking advise in a public forum, now was I? Or do you always seek advise while withholding pertinent information? You may at this point recall that the answer I and many others gave was that without the proper information, there could be no substantive answer. Perhaps that logic eluded your analysis.

    Anyway, if you are still game, the point to my question was that the “client believes he has been overbilled” situation happens in many environments and perhaps has happened to you personally. How would you handle the questions you put forth if the setting was a medical case rather than a legal one?

    I promise that I am interested in your logical analysis.

  33. 138

    Ordinary inventor,

    1. I was not versed enough in the art of patenting, and, yes, the invention is too important. That’s why I went to an IP attorney.

    2. I don’t know what you mean by “cost conscious.” I can answer your question better if I know what your assumptions are about the ballpark figure that I paid the attorney. How much do you assume I paid? Above what dollar figure would you no longer call me “cheap” or “financially challenged”, and begin to say that the attorney truly charged too much? I invite anyone else to comment about a reasonable price ceiling for a patent application for a simple mechanical invention.

  34. 137

    Dear D@W,

    Re: “Actually, I drafted half the application myself, did a full prior art search before going to the attorney, and updated the prior art search during drafting. I edited and re-edited the entire draft myself to try to cut down on costs.”

    Two multiple-choice questions:

    What stopped you from doing the other half and filing yourself?:
    Did you think
    (i) you were not versed enough in the art of patenting?, or
    (ii) the invention was too important?

    Why were/are you so cost conscious?:
    Are you
    (i) cheap?, or
    (ii) financially-challenged?

    Please feel free to elect “other” and be so kind as to explain.

  35. 135

    Dear DAW,

    “I can only assume that those who have voiced the most vocal and aggressive attacks on me do not have a strong ethical orientation themselves”

    And my guess it’s the old story of the kettle calling the pot black.

  36. 134

    Actually, I drafted half the application myself, did a full prior art search before going to the attorney, and updated the prior art search during drafting. I edited and re-edited the entire draft myself to try to cut down on costs.

    Yes, it is absolutely critical to keep open lines of communication between the expert and the client/patient. Most medical malpractice lawsuits occur because of poor rapport between MD and patient. Patients often don’t understand the true nature of disease, risks of procedures, etc., even if these are clearly explained, so it’s very important to spend extra time discussing problems if/when they arise. I’d imagine there are some legal parallels here.

  37. 133

    Most important lesson that stands out in my mind is the importance of attorney-client communication and good communication in business generally. Good communication ahead of and during prevents misunderstandings afterward. We don’t know what went on here. For example, it could be a situation where the attorney did some diligent searching based on the initial disclosure, returned to the inventor with some anticipating references, and the inventor changed the story numerous times, requiring extensive prior art review, re-drafting, and edits. The culmination of which the attorney feels morally justified in billing her time, but the inventor/client who is used to judging value as the tangible final product (e.g. the quality of a medical instrument) doesn’t understand. Had the attorney and client had better communication up front (e.g. “Dear Mr. So and So, per our agreement this is NOT a fixed-fee matter and we intend to charge based on actual time spent…) and during the process (e.g. “Dear Mr. So and So – due to the additional embodiments you have disclosed and the number of references we have discussed, I want to keep you informed that this is creating additional billable work….). Sounds like the communication channels were not open, and the result is a surprised inventor who by his nature is not a sophisticated party (he may be a sophisticated guy, but he is a novice about patenting) is not quite sure how the project snowballed into such a pricey endeavor…

  38. 132

    Lee Waiting, you are comparing apples and oranges. If you had said that the large medical center charged thousands of dollars to check the patient’s blood pressure and pulse, that would have been a more appropriate comparison. Treating prostate cancer is a major undertaking that clearly warrants extensive time and effort. Similarly, the Segway is a major undertaking and warrants extensive patent-preparation time. My patent did not require such extensive time.

    Noise above Law, as far as my “not answering questions”–the questions sought to get specific dollar figures and other information that would be potentially identifying. If I were your client, would you advise me to post such information in a public forum?

    I don’t get the sense that either of you (or many of the other posters) are really interested in logical analysis, however. I didn’t realize this was primarily a trash-talking forum–my mistake.

    As far as doctors vs lawyers, both professions are prone to ethical violations. I know of doctors who have violated professional and ethical codes, and lawyers have told me that they know of members of their profession who have violated similar codes.

    I can only assume that those who have voiced the most vocal and aggressive attacks on me do not have a strong ethical orientation themselves, and would not want their own actions to be held up to an ethical/professional analysis.

  39. 131

    Very droll, but I doubt that the Doctor is still in the house.

    I noticed as well that the good doctor did not answer my questions for him.

    If we call him back, will he come to the house?

  40. 130

    (Entries from a parallel universe on PatientlyO Blog)

    Dear Mr. Crouch:

    I am a patient. I am wondering if you can point me in the generally right direction to resolve this issue.

    I went to a large, well-respected, nationally-known medical facility for a yearly checkup. As you know, yearly checkups are not that complicated. Unfortunately, I recently discovered my medical treatment took much, much longer than typical yearly checkups.

    The doctor, after learning that my grandfather, my father and my brother had prostate cancer, took advantage of me: she insisted on performing a time-consuming examination that can best be described as a total violation of my personal space.

    As if that wasn’t awful enough, she later made me go through a series of radiation and chemotherapy treatments, which exploited my enthusiasm about preventive health care for her own profit.

    When I told a second doctor about what the first doctor charged me for my yearly checkup, he told me that my medical bills were astronomically high compared to what he charges for a yearly checkup. He told me that he was shocked that someone purporting to be a professional would bend me over like that. To which I responded: “How did you know about that?”

    Anyway, can you tell me whether I have the basis for an ethical complaint?

    Signed,

    Lee Waiting, Patient

    ————————

    Dear Patient Lee Waiting:
    That’s why you should never go to big medicine. They’ll screw you over every time! Come to us. We only charge $100. We’ll just take your blood pressure and your temperature and you’ll be out in 15 minutes.
    Posted by: Small Medical

    ————————

    Dear Patient Lee Waiting:
    Help us out. Did you actually have prostate cancer? Because, if you did and the medical procedures were appropriate, reasonably priced and actually worked, we don’t see an ethical problem–no matter how long they took.
    Posted by: Tons of People

    ————————

    It’s pretty clear from the postings above that my first doctor was unethical and, when compared to the $100 price noted by Small Medical, it’s even worse than I thought.
    Posted by: Lee Waiting

  41. 129

    And cars had style back then – really creative design-patented style. Not like today’s rubber stamped models. Boy, those were the good’ole days.

  42. 128

    BTW 6 – the early ’70s was well after the wheel was invented. Back then, you could buy a whole car for $5000.

  43. 126

    One old experience takes the cake:

    Back in the early 70’s, I had a complicated buy-out case where my good’ole boy lawyer almost flubbed the deal with his incessant nit-picking. I finally had to demand that he end the endless tedium.

    When he sent me his final bill (which was un-itemized), he had the balls to include a $5,000 “bonus.” When I asked him about his “bonus,” he said, “Well, I put you on easy street, didn’t I”?

    Boy, I had fun with him after that – I made him account for every minute and then I nickel-ed the bill down – it was the principle, not the principal, of the thing.

  44. 125

    Has anyone given thought as to what level of over-charging makes it worthwhile to follow the complaint route? There is cost (actual cost or opportunity cost) in doing the research, telephone calls and meetings and possibly making a formal complaint. At what point might the possible recovery exceed the expected cost?

  45. 124

    There’s definitely not enough information to comment on the propriety of the fees, though it never hurts to ask a service professional to reduce their fee if you have good reason.

    Don’t most ethics classes law school teach the importance of communicating with a client and agreeing about fees in advance? Isn’t it a basic skill to communicate with a client about fees? Is the client fee sensitive (e.g., nearly all solo inventors)? Is the client savy about procuring patent services? Is there an established pattern of work/billing with the cient?

    For the fee sensitive client, avoid conflicts by communicating often and clearly about what work will be performed, what it will entail, and the maximum it will cost (that’s a skill in and of itself). As work is progressing, as soon as there is any sign that the anticipated time to do the job will take more than originally expected, talk to the client about it, preferably before doing the unexpected extra work. Give them a lower-cost solution (cover less embodiments, let them prepare figures, etc.) or a chance to stop work altogether. Communicate clearly at the onset about the variables that can affect price. An hour on the phone talking about costs is chump change compared to the damage a disgruntled client can do.

    For the small inventor, get a retainer up front. That’s good for weeding out clients, and its good for keeping budget in mind when doing the work — it’s no fun to go to a client and ask for additional fees.

  46. 123

    Good Doctor–

    The only ones among us who “passed” the “test” are those who offered no comment whatsoever.

  47. 122

    “I am not sure where you obtained your sophomoric psychoanalysis …”

    Actually, he already told us, Lionel. He got it in 1968 from retired Vice-Admiral Sir Peter Gretton. I doubt that Sir Gretton ever met President Bush, however.

  48. 121

    “Extroverts and doers take responsibility for all that happen to them. … Introverts and victims have things done to them by other people and complain”

    Extrovert does not equal doer and introvert does not equal victim. I am not sure where you obtained your sophomoric psychoanalysis but simple empirical evidence refutes your statement. Take Bush, for example. He was an extrovert that was unable to take any responsibility for his incompetence.

  49. 119

    Seems to me that if an attorney posting here a comment regarding whether the client was overcharged constitues giving of legal advice, then a non-attorney doing the same ought to be prosecuted for practicing law without a license.

  50. 118

    Dear Carnac:

    It would be the same story if the big firm had previously prepared and filed the provisional itself.

  51. 117

    Moral of the story:

    Stay clear of Big Firm USA. They will take you for a ride and wipe you out. They will be eating Lobster while you are left with Raman Noodles. Small Firm USA loves and cares about you. We also have reasonable, realistic rates. Come to papa!

  52. 116

    Dear Doctor,

    I wouldn’t let the nay-sayers on here dissuade you from 1) complaining to the attorney about the total bill, 2) speaking with the attorney’s firm’s quality control officer or head billing attorney, and 3) speaking with someone at your local state bar. The PTO may not be too well equipped to handle such complaints.

    Concerning those posters who think there are serious ethical violations lurking here, let me suggest 1) if I’m not an attorney, am I somehow banned by state bars from stating my opinion “you waz cheated!”?, 2) if I am an attorney (as I am)am I somehow banned by state bars from stating my opinion “you waz cheated!”?

    State bars may be largely useless (except as money-makers for bar bigwigs and for helping established lawyers keep their tushies warm), and may not be much help to the Doctor, but I don’t think they’ve yet repealed the First Amendment.

    However, the fear of an ethical complaint may motivate the money-grubbing ripoff artist attorney to pony up.

    Next time, perhaps offer to pay half the projected bill upfront. If the work quality is poor, or you are overchanged, then you still have some leverage, and can request a bill adjustment all the way up the line at the ripoff artist’s firm. Remember: “The Client is #1–until the lawyer has their money.”

  53. 115

    This is in response to the post by “I thought we were professionals”.

    Moving on means developing the invention, prosecuting it in the most cost-effective manner and continuing MD’s professional practice with the minimum of distraction e.g. from acrimonious, time consuming and probably unproductive efforts along the complaints route. I hope we will hear what happens – I could be wrong about the complaints route but what I have said remains my view.

    On the whole, I respect those who take the knocks that life hands out to us all more than those who devote a substantial proportion of their energies to whining and complaining. I acquired this attitude in 1968 during an interview with Vice-Admiral Sir Peter Gretton who was then retired from the navy and serving as bursar at University College, Oxford, and whose memory and wise advice I revere. He encouraged me to leave the second group and to join the first group, and it was a hard but important lesson. If you are an ambulance-chasing lawyer, however, you probably prefer the second group.

    MD was quite right to get his second opinion. But I think that there are more profitable things for him to do than attempt to recover the excess charge for the bill.

  54. 114

    “Please accept my sympathy for what has happened and my good wishes for the successful development of your invention.”

    Cole, aren’t you the guy who wrote “It’s time to move on, MD!” and:

    “On reflection I am more worried about MD as a matter of his character. … Extroverts and doers take responsibility for all that happen to them. … Introverts and victims have things done to them by other people and complain. Their attitude to life is passive, not active. They pay up, and when it is too late learn that they may have been bilked and whinge. The noise that comes from them is a steady whine.”

    How much do you charge for your psychoanalysis?

  55. 113

    I agree with Mr. Cole but add that you should seek a 3rd opinion to be doubly sure, then if you are not 100% satisfied, you may want to seek advice from at least 3 other law firms on how they handle disputes regarding their billing practice.

    As for your application, definitely pay some additional fees for an attorney to review it and check it for errors (I assume they will find some issue with the application). Then pay an additional fee for your second attorney to advise you how to change your application.

    Finally, consult a 3rd attorney to see if the second and initial attorney’s work was done in good faith and provided the best protection for your invention.

    /sarcasm off

  56. 112

    Dear Dr at Work

    I read your recent post with interest and would first like to express my sympathy with what has happened.

    In UK where I work the pressure within firms to obtain billable hours is less than in some US firms, and most of us here look at the overall bill as calculated from our records and consider whether it is reasonable in all the circumstances. Most of us try to avoid sending excessive bills to small clients and know that our businesses grow from the efforts of small clients whose businesses succeed and grow.

    Again in UK we have complaints procedures, and I have personal experience of handling such complaints. Complaints about billing happen and are usually resolved by mediation. But this is most frequently where a firm has given an estimate and that estimate has been exceeded without notice.

    I think you were right to obtain a second opinion. But the best course of action for you now is to move your work, possibly to the firm that rendered that opinion but in any event to a new attorney that you get to know and trust.

    I would carefully check the specification that has been written for you for completeness and accuracy. The fact that it is long and perhaps detailed does not mean that it has been well prepared and really expresses your invention – it may be that mistakes have been made, critical detail has been omitted and undesirable limitations have found their way into the claims. A patent specification is like an answer to an examination paper having two questions: (i) write all you know about your invention and (ii) provide definitions of it in its broader and more specific aspects. If the necessary information does not find its way into the specification as filed, it is very difficult to put matters right later, just as a student who fails to put important facts into his or her examination answer cannot return later to the exam room and add more information. Apart from your own careful check, you may wish to ask your new attorney to review the application he is assuming responsibility for, probably for a fixed fee agreed in advance. What is most important is to have a well written specification which will be a good vehicle for your licensing efforts, assuming that you do not aim to produce the invention yourself but through licensees. It should be mentioned that it is foreseeable that your specification will be closely scrutinized as part of due diligence in any license negotiations, and that any actual or perceived defects will prejudice those negotiations. For that purpose you need a document which, if anything, is prepared with more than usual care and attention to detail and ensuring that you have such a document should be your primary concern. If you are right about the ethical violations, the resulting specification may not be so good since good attorneys do not have to resort to overcharging.

    As regards getting money back now that you have paid the bill, I will stick to my advice that it is likely to create more aggravation than profit. You have to factor in the time and effort you will be investing in the complaint, the probable return and the delays inherent in any complaints procedure. Unless the sums involved are very large indeed, you are unlikely to see a good return. By all means use the complaints procedure in your existing advisor firm, but don’t expect too much and put a stop-loss check in place for those efforts.

    As regards attention to detail, we are trained to get the essential facts and filter out the inessential ones. The essential facts in your situation are (a) this was a large firm, and hence likely to have somewhat inflexible computerized billing procedures (b) you are a sole inventor without a large budget, (c) the bill you received was large and ought to have been reviewed by the responsible attorney for reasonableness before it was sent out, and (d) nevertheless you paid the bill. The obvious conclusions from this analysis are firstly that you need to change firms because even if there had not been explicit ethical violations that firm is proabably the wrong advisors for you, and secondly if you stay with your existing advisors the problems you have experienced are likely to recur.

    Please accept my sympathy for what has happened and my good wishes for the successful development of your invention.

  57. 111

    Mr. Stein, are you aware of any malpractice or professional discipline cases stemming from this sort of public, online discussion? I’d be very surprised if there are any bar discipline cases, or any malpractice cases that got passed a demurrer/12(b)(6) motion.

  58. 110

    “However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.”

    Inventors must closely work with their attorneys and form close working partnerships. This applies throughout and at every stage of patent prosecution, this strategy avoids matters like “recently discovery…”

  59. 109

    Dear Howler:

    A big city law firm really does not want the trouble and potential liabilities of simply filing a non-provisional as a provisional application.

    Go to a small patent firm or a solo practitioner.

  60. 108

    (1) what was the patent attorney’s billing rate?

    (2) how long was the application? (a) how many sheets of drawings? (b) how many pages of text?

    (3) did the attorney do any kind of patentability search?

    (4) how much was the bill (not including disbursements)?

  61. 107

    please explain in detail the ethical violation which you contend occurred?

  62. 106

    I am the MD in question, and I think it’s about time I wrote in. In a way, I feel like Prof. Crouch’s posting of my email was a kind of test to all of you:

    Question 11. Based on your analysis of this writing sample, is the writer A) a reasonable person with a legitimate grievance against an unscrupulous IP attorney, or B) a crank inventor who is just fussing over a bill that, while high, is, under the circumstances, reasonable?

    Just as in any test with essay questions, those with the most thoughtful and intelligent comments are the ones who came closest to the right answer (basically, more information is needed before any counsel is given). Those who jumped to conclusions without carefully reading and interpreting the text, and who accused me of being, in various ways, a miserable excuse for a human being (in fact, so awful as to not even be a real doctor!) might want to consider pursuing something other than a profession in which judgment and thought and attention to detail are actually supposed to have value.

    The simple truth is that I am a generally capable physician who came up with a clever invention, which really has patentable features. (I was being a bit modest before: though some components are readily known, others, albeit mechanically simple, are my creation.) During the development phase of the invention, I only dealt with engineers and designers, who were good decent people and billed appropriately for their work. I was referred by a colleague to the unnamed law firm for my IP issues. I quite frankly expected the same kind of good treatment that I’ve received from lawyers in the past. The end result is that I got taken in by a real player who did not share my sense of ethical and professional responsibility, and who exploited my inventor’s enthusiasm for her own profit.

    Yes, it’s a painful learning experience. But here at Web U., we can all learn from it. So now, according to me, HERE is the…

    ANSWER to Question 11: Advise the client, before doing anything else, including talking again to the initial attorney, to get a second opinion from a more trustworthy IP attorney. The attorney rendering the second opinion should review the details before making a determination. (It’s up to the client to determine who is trustworthy enough for a second opinion. If the client is inept enough to choose a dishonest attorney a second time, then he is a Darwin award winner and not worth your sympathy.)

    Why get a second opinion prior to any discussion with the first attorney? Because:

    1. On the one hand, if the inventor is right, and his first attorney hoodwinked him enough to rip him off in the first place, the inventor is likely to get taken advantage of AGAIN in any one-on-one discussion with that attorney. Remember, the inventor has clearly demonstrated at this point that he can’t be trusted to defend himself against an unscrupulous attorney.

    2. On the other hand, if the inventor is wrong, and the first attorney WAS honest and industrious, and the inventor comes across as unjustly accusing her of unethical behavior, the inventor is going to destroy a relationship that would have been better left preserved.

    Does that make sense? Second opinions are exactly what I would recommend for suspected harm by a physician as well.

    By the way, while I obviously cannot give out the full story of my own case, I did get some second opinions today, and was able to reveal some specific details that are not in the query at the top of this blog. Let’s just say that the early feedback I have gotten indicates that there was indeed a sizable ethical violation (if anything, more significant than I had initially thought).

    Thanks to many of you for your thoughtful comments–I will continue to learn from them and to follow along with the blog. Many thanks also to Prof. Crouch for posting my query!

    Signed,

    A real, live doctor who, despite the injury of a bad legal experience and the insults of many of the bloggers here, is still good-natured enough not to have lost his respect for the legal profession…but who is definitely a bit tougher and savvier than before.

  63. 105

    RE: DS
    “This scenario is pretty clearly addressed by the Model Code of Professional Responsibility and/or the Model Rules (and by the ethics statutes of your local states.) Expressing an opinion here – “you were probably charged too much,” or “you were probably charged fairly,” etc. – may well constitute legal advice. Either you are authorized to issue legal advice (which may put your bar license in jeopardy), or you are not so authorized (which may put you in jeopardy of the unauthorized practice of law according to the laws of your state.)”

    You cannot create an attorney-client relationship on a public blogosphere by providing “advice” available to the public, nor would any such advice constitute “legal advice.” This should be obvious, what were you doing during your ethics course DS?

  64. 104

    Three thoughts,
    1) Will a state bar really do anything about a fee dispute in front of the USPTO which regulates its member independent of state bars (Sperry v. Florida)? I know our state bar thinks we should follow their rules to the exclusion of USPTO rules, but they have not been able to advise me when their rules are at odds with the PTO’s. So far, I have been able to resolve everything within all rules, but I will bet you that if I told the OED that I should maintain my registration because my local bar doesn’t consider a certain infraction a crime of moral terpitude, but the OED does, I would not get much sympathy.
    2. Price of non-payment. Many independent inventors or one-off’s will just not pay you, which is why we require payment up front when there is no history. The price of non-payment for a class of clients is probably figured into the price as well. I recall that the strategy decisions are left to the client, but the attorney has a wide latitude on tactical decisions, such as length. Not to say that I haven’t inherited a 70 page application to a composition where the unique ingredient is described in one paragraph, generically in functional terms, as a color, density and form. The translation fees of the runaway word processor were killers, let alone the predicted 112 rejections from around the world.
    3) In the end, the value of the application is based upon what is granted relative to the prior art, not the length of the initial application, and you can darn well bet when the first office action comes in, the inventor and attorney will wish the specification had included the other narrower embodiments or further elements, particularly when all this is is an assembly of known elements, I hope that the inventor has been advised that that statement now probably needs submitted in the IDS as well. My hope is that the attorney searched hard and wide to find patentable matter with strict support for the international arena as well to overcome prior art. I like the analogies here – I can hear it now – Why didn’t you uncover that prior art? We were on a budget, and you only wanted me to spend 2 hours on the art search. Why didn’t you find my cancer? We were on a budget and you only gave me 2 hours to review all the biopsy slides.

  65. 103

    I may be missing something, but for an attorney to be held liable for given legal advice, doesn’t an attorney-client privileged have to be established? Is posting on board contacting a representing client?

    And posting anonymously on a blog an act of unlicensed practice of law? Surely, we can think of examples that cross the line, but it seems most of the posts have been commentary and snarks.

    I disagree that these scenarios are pretty clearly addressed by the MCPR/Model Rules. There are a ton of novel issues that a court/sanctions board might face. I think this would make for an interesting case (and I am sure similar cases have already happen or will happen soon.).

    The scenario that is clearly addressed by the MCPR/Model Rules (and a ton of case law) is the one outlined by the doctor’s letter—a fee dispute. But as others have said, more facts are needed.

  66. 102

    You want a real howler?

    Tell a “big city, big law firm” that you previously had a provisional having 20 claims, three of which are independent, prepared and filed and you want them to give you an estimate for converting it to a nonprovsional. Stress to them that they need not make any substantive changes to the application; this is a “straight, bare bones” conversion.

    When they come back with a quote of $2-2.5K (inclusive of the $435 small entity fee owed to the PTO), then ask them to itemize their quote, being sure to estimate the number of hours spent on the conversion, the title(s) of the professional(s) that will work on the conversion, and the billing rate of said professional(s).

    Then: howl at the moon with laughter!

  67. 101

    Ethical rules for attorneys, which also bind patent attorneys, state that it is an ethical violation to charge an excessive fee.

    You might consider a frank talk with the attorney, stating to her that your concern is so great that you might consider an ethical complaint against the attorney with the state bar or with the patent bar, or both.

    Many, if not most, firms review bills for overall reasonability. It seems you have mustered the facts well, and have the basis for an ethical complaint. Since no attorney wants to be a defendent in such a complaint, and since yours is neither malicious or frivolous, it seems that contacting the attorney, the attorney’s “quality control” senior attorney supervisor, and state bar, perhaps in that order, might be a good place to start. Many state bars offer assistance to clients such as yourself who feel they have gotten a raw deal.

  68. 100

    IMHO, this guy is not a doctor. I know several very well, and they are continually worried about malpractice and baseless claims. I seriously doubt they would run so quickly to another professional’s licensing board to file a complaint.

  69. 99

    “I expect them to snipe at each other, but the gleeful attacks on an anonymous inventor are disappointing.”

    Oh, spare us the crocodile tears already. This poor anonymous physician with his lame turkey baster speculum invention is threatening to report a prosecutor to the state bar for allegedly overcharging on a patent application …. but only AFTER he paid her the agreed hourly fee that he admits she earned?!?

    I’m not buying it.

  70. 98

    I would agree that the attacks on the good doctor seem, in many cases, highly disingenuous and possibly indicative that the problem the good Doctor speaks of, exists.

  71. 97

    “… this is a blog comment section, so there is only so much you can expect.”

    Yes, but it is one ostensibly populated by some of the smartest and best-trained professionals in the world. I expect them to snipe at each other, but the gleeful attacks on an anonymous inventor are disappointing.

    And yes, those of you using your real names have been polite, even if defensive.

  72. 96

    “By all indications, this is an actual client writing to ask about an actual case of representation. And the client, if he were to run across this post, would likely rely on the comments submitted.”

    Dave, with all due respect, one would have to be a total idi0t to rely on the comments submitted on this blog. I think your commitment to the Rules of Professional Conduct is admirable, but I believe that in most places an attorney-client relationship is not established unless a reasonable person would believe that one has been established. Would a reasonable person really believe that he has established a lawyer-client relationship via an Internet blog with someone named “snippy” or “the way it is”? I tend to doubt it.

  73. 95

    True, big firm attorneys can only comment on inherency in the unpredictable arts, Feinstein’s two proposals for amendments to the damages language S.515 to be proposed next Tuesday, or draft a amicus in the Alcatel case…yup – I as an in house attorney I would never do these things, or would I?

  74. 94

    “Unfortunately, maximizing fees and billed hours is often more important than service these days – one reason I went in house. This is not a comment on these facts, just a general observation of large firms…”

    and now that you’ve done so, you have become a complete and incompetent dolt, unable to even draft a suitable claim, let alone understand the intricacies of DOE or the like. Poor patent attorney. Only big firm attorneys are competent…

  75. 93

    “Following a restriction requirement and widrawal, rejoin inventions from different classifications into a single bogus set of claims under one issued case. For example a
    dishwasher/chainsaw patent. This is a crooked examiner/SPE move I’ve discovered.”

    You’re going to have to tickle my funny bone this afternoon with how a rejoinder is crooked.

    “In an amendment changing “comprising” to –consisting of– as the transitional phrase. There is a PTO examiner that has run amuck and forced at least 6 different applicant,s attn’s into performing this unspeakable bit of sabotage.”

    Well sht, if the attorneys in my cases allowed me to make the amendments then I might do that too! Sadly, they have hitherto reserved the privelege to amend for themselves and their clients. I can hardly blame any good examiner for taking liberties that the applicant has allowed them to take in order to place the case into condition for allowance. And I mean seriously, such a small change, consisting of, comprising, really, come on man, what’s the difference? ;)

    “Do you really think that the US Patent Office will bow before your greatness and give you a patent? ”

    I don’t have my clip of Achilles v Boagrius handy, but that really shows how we work it :)

  76. 92

    “I thought we were professionals”, this is a blog comment section, so there is only so much you can expect. Those of us who signed our real names to our posts have been generally civil and, I submit, helpful.

  77. 91

    I’ll be honest – I’m surprised to see so many opinions expressed here.

    This post is not a general or hypothetical question about the rates of patenting, the complexity of the typical case, or best practices in attorney/client relations. By all indications, this is an actual client writing to ask about an actual case of representation. And the client, if he were to run across this post, would likely rely on the comments submitted.

    This scenario is pretty clearly addressed by the Model Code of Professional Responsibility and/or the Model Rules (and by the ethics statutes of your local states.) Expressing an opinion here – “you were probably charged too much,” or “you were probably charged fairly,” etc. – may well constitute legal advice. Either you are authorized to issue legal advice (which may put your bar license in jeopardy), or you are not so authorized (which may put you in jeopardy of the unauthorized practice of law according to the laws of your state.)

    Just some food for thought. After all, this is *supposed* to be a professional website (notwithstanding the nonprofessionalism often demonstrated by particular members.)

    – David Stein

  78. 90

    “The invention is not that complicated. In fact, I can make prototypes in my kitchen fairly quickly.” Yet, you somehow expect to magically receive a patent grant at the end of the process. Has it occurred to you that “the application is much, much longer than patents of similar complexity” to give patent practitioner maneuvering room (ability to used the specification text) to address the inevitable 103 obvious rejection? Even you state, “The invention mostly relies on a new combination of existing devices/technology.” Do you really think that the US Patent Office will bow before your greatness and give you a patent? Apparently not since you don’t mention anything about not having a patent practitioner represent you before the US Patent Office.

    Getting off my high horse, there are two steps to approach this. First, determine whether your application contains fluff text – text copied in detail from a book or the internet to pad the word count. If so, you might point that out to the patent practitioner. Second, every other year, the American Intellectual Property Law Association (AIPLA) issues a “Report of the Economic Survey” that gives ranges as to what patent applications should cost. See www .aipla.org/Content/NavigationMenu/Professional_Development/Law_Practice_Management/Law_Practice_Management.htm Get a copy of the AIPLA 2009 Report of the Economic Survey, see whether the amount you paid is within the ranges provided, and, if not, address this with your patent practitioner.

  79. 89

    “The invention is not that complicated. In fact, I can make prototypes in my kitchen fairly quickly.” Yet, you somehow expect to magically receive a patent grant at the end of the process. Has it occurred to you that “the application is much, much longer than patents of similar complexity” to give patent practitioner maneuvering room (ability to used the specification text) to address the inevitable 103 obvious rejection? Even you state, “The invention mostly relies on a new combination of existing devices/technology.” Do you really think that the US Patent Office will bow before your greatness and give you a patent? Apparently not since you don’t mention anything about not having a patent practitioner represent you before the US Patent Office.

    Getting off my high horse, there are two steps to approach this. First, determine whether your application contains fluff text – text copied in detail from a book or the internet to pad the word count. If so, you might point that out to the patent practitioner. Second, every other year, the American Intellectual Property Law Association (AIPLA) issues a “Report of the Economic Survey” that gives ranges as to what patent applications should cost. See link to aipla.org Get a copy of the AIPLA 2009 Report of the Economic Survey, see whether the amount you paid is within the ranges provided, and, if not, address this with your patent practitioner.

  80. 88

    Dear Doctor,

    My old man used to say, “The first thing a good salesman does is to x-ray your wallet.”

    Your title made this diagnostic test unnecessary.

    My guess is you got ripped off.

    Beyond just padding the bill there are any number of ways to draft, prosecute and examine patents fraudulently. You might be the victim of this as well.

    Here are some examples:

    1. Amend a claim for a combination into a single means plus function element/claim. (There is an issued case with this weird looking claim, the result of an examiner’s amendment.

    2. Insert a step within a device claim, usually toward the middle or back of the claim. There are thousands of these.

    3. Following a restriction requirement and widrawal, rejoin inventions from different classifications into a single bogus set of claims under one issued case. For example a
    dishwasher/chainsaw patent. This is a crooked examiner/SPE move I’ve discovered.

    4. Add critically important matter to the inventor’s unpatentable disclosure, then sabotage the claim relative to Section 112. A smooth quid pro quo. Thousands of these as well.

    5. In an amendment changing “comprising” to –consisting of– as the transitional phrase. There is a PTO examiner that has run amuck and forced at least 6 different applicant,s attn’s into performing this unspeakable bit of sabotage.

    Good luck with uncovering anything crooked in your case.

    Earl Gray

  81. 87

    “All many of us are saying is you need to examine this much more closely to see if your attorney did anything inappropriate here.”

    Actually, it appears to me that many of us are saying that this particular gentleman is “eccentric”, whining, unreasonable, an introvert whose approach to life is passive and makes him a victim, a doofus, and a representative of a profession that routinely “rapes” people and rakes them over the coals and thus unworthy of sympathy. Others of us are saying that it’s the doctor’s fault if he was surprised by the fees or was charged too much, implying that an attorney has no obligation to make the expected cost of the representation up front and that the proper approach to employing a patent attorney is “caveat emptor.” I am ashamed, personally.

  82. 86

    Dear Doctor,

    Re: “My attorney knew from the start that I am a solo inventor and under a tight budget.”

    Something has been bothering me about your letter. I know several doctors and they are all far more than comfortable. It sounds like your priorities are screwed up – on a cheap budget for your invention. Why would you cheap-out on your invention? Have you no pride?

    Here’s one for you Doc …

    ‘Flipping the Bird’ is Protected Speech
    A Pittsburgh motorist was exercising his constitutional right of free speech when he gave the finger to a police officer and another driver during an argument over a parking space. U.S. District Judge David S. Cercone ruled this week that David Hackbart’s display of his middle finger was a non-verbal gesture protected by the First Amendment, according to a report in the Pittsburgh Tribune-Review.
    link to legalblogwatch.typepad.com

  83. 85

    Among experienced patent attorneys who have been stiffed on the bill by small inventors numerous times during the course of their careers, the general concensus of opinion seems to be that doctors are the worst clients.

    That said, if the application really was more than 50 pages, I’d want an explanation too. The only time I write an application that long is when I’m handed a ridiculously lengthy disclosure (e.g., doctoral thesis, standards committee proposal, 100 page power point presentation) and told to cobble it into a patent application. Some people seem to think that doing so should be easy, but I find it more difficult and time consuming than writing a concise patent application from scratch with 5-7 Figures.

    For some reason, it really bothers me that I’m agreeing with a lot of 6’s comments on this topic, minus the overly adversarial snark of course.

  84. 84

    Dr. __:

    There’s an important pricing anomaly in the patent market. Things that are *really really* new (like Dean Kaman’s Segway) are easy to patent. The specification can be much shorter. Prosecution sails through.

    Paradocially, the “simpler” something is, the harder it is to patent. The attorney *must* get way down into the details, and get everything on paper. And it all has to be done on day one, because if something is omtted, it can’t be done later.

    The *hardest* most expensive applications to prosecute are the ones on “simple” devices where the specification is too brief. Man is it expensive to recover from over-simplification.

    Yes, I think you should talk with the attorney. Unquestionably. But don’t be surprised if the attorney’s answer is that he/she did exactly the right thing for exactly the right reasons. In that case, you should count your lucky stars.

  85. 83

    Wow — 80 responses, and counting. I hope we aren’t too annoying, doc.

    Someone above suggested that we are just looking out for one of our own. I don’t see it that way at all.

    Flip this around and imagine that someone tells you that he believes a doctor charged far in excess of reasonable fees for care. This person says he is contemplating filing a complaint to the Medical Board. I suspect that your first reaction would be something like, “hold on — let’s go over the details of your situation to see if that’s warranted”.

    All many of us are saying is you need to examine this much more closely to see if your attorney did anything inappropriate here.

  86. 82

    This is more advice on how to lock the barn door in the future rather than how to get your horse back, but here goes:
    1. Some patent drafters are wordier than others. Since you’re comfortable with reading others’ patents, search for some by the same attorney or firm in the same field before engaging, so you can see what their style is like. As an in-house patent counsel, I routinely do this before farming out overflow to a new firm. I do all the hand-holding for “my” inventors, and the less comprehensible the writing style, the less time I’m going to save by using the outside drafter. I certainly consider many other factors too – claim quality tops the list – but the time it takes to get draft approval from an inventor who’s already working 14-hour days directly bears on the filing date.
    2. A concise, elegant patent application with the same breadth of coverage and claim support as a verbose one can actually take LONGER to write. First you’ve got to write the long one (or at least generate a big outline) and then decide where it can shrink.
    3. Unless you’ve already decided you’re only going to file in the US, a significant amount of extra work goes into making sure other countries will accept the priority date. PCT helps but it only goes so far; for one thing, there are significant players in world tech trade that haven’t signed PCT (I’m looking at you, Taiwan).
    4. I don’t know how the discussion actually played out, but a qualitative statement about “being on a tight budget” leaves an awful lot of room for misinterpretation. What’s expensive to me wouldn’t be expensive to, say, Donald Trump or Microsoft, who might be the kind of clients “large reputable firms” are used to. You have to talk actual numbers, right up front (maybe you did but didn’t say so in the letter). And if something unexpected comes up and the numbers change (which can legitimately happen), it would be good ethics and good business if your att’y told you immediately and asked if you still wanted to go forward – but that doesn’t necessarily mean her Bar has a
    rule that says she must.

  87. 81

    Went to a big firm. Told them he was a sole inventor and short of money. Did not ask how much it would cost? Doh!

  88. 80

    “My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).”

    By the way, there isn’t a big law firm on the planet that does not underestimate the cost of filing a de novo patent application. Costs will be gladly written off because, assuming the client remains solvent and content with the service, the long term gains outweigh the initial loss many fold.

    Some clients try to exploit this softness by putting truly ridiculous caps on initial application filing. This strategy is ill-advised. The human being that ends up having to rush to assemble the resultant pile of garbage will likely remember how rotten the experience was for a long time. Wouldn’t it be better to have your attorneys associate you and your IP with a more pleasurable, respectful beginning?

  89. 79

    That the application seems longer than an average application involving “simple mechanical” technology could be an indication that your attorney did a thorough job.

    It’s easy to write an application that describes and claims the exact embodiment that you showed your attorney, but it takes an attorney’s skill and experience to “see the invention” and write an application that ensures you get the scope of protection to which you’re really entitled.

    I haven’t seen the application and don’t know the exact circumstances, but absent any such additional information I think I’d feel comforted by the fact that your attorney apparently devoted some extra thought and perhaps extra pages to the goal of protecting your invention.

  90. 78

    Dear Doctor:

    After having been raped and raked over the coals by physicians my entire life, I have less than zero sympathy for your plight and I offer only the following:

    didn’t you have insurance to cover it?

  91. 77

    “On reflection I am more worried about MD as a matter of his character. … Extroverts and doers take responsibility for all that happen to them. They make things happen, and are the leaders of society. … Introverts and victims have things done to them by other people and complain. Theirt attitude to life is passive, not active.”

    Wow, now we’re providing psychological profiles of the man, based on a 6 paragraph letter? You guys are even more gifted than I thought.

    Do you really counsel all of your clients who feel they’ve been wronged to “take responsibility for all that happen to them” and to stop complaining?

  92. 76

    Just wait until the doctor tries to enforce the resulting patent against an accused infringer! (Assuming one is even granted for this new combination of old elements.) If she thinks the bill at the front end was high (no dollar amount was given in her letter, but it probably was no more than $12K), the cost of litigating the patent ($100K plus) will really get her blood boiling. Sadly, it is only then that we truely find out whether the patent is any good. She may discover that the patent drafting expense, as large as it seems to her right now, was well worth it and perhaps even a real bargin.

  93. 75

    Most attorneys are like used-car salesmen: we sell overpriced products that people don’t really need and will ultimately be dissatisfied with anyway. Most law firms are “for-profit”, and, like any other business, are concerned with making money (though they won’t tell you that in law school).

    Having said that, it never ceases to amaze me that inventors who invariably believe they have incredibly valuable inventions don’t want to invest a few thousand dollars to properly protect them.

    Doctor, you could have drafted and filed your own application and avoided all attorney fees, but you didn’t do that because you wanted the benefit of an attorney’s expertise. Don’t now balk at paying for that expertise.

  94. 74

    “The invention is not that complicated. It’s mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly.”

    Now just relax, ma’am. You’ll never feel this thing that looks like a potato peeler.

    /Dr. Expensive Application off

  95. 73

    What kind of a doofus writes to a blogger for advice on handling a fee dispute?

    “The invention is not that complicated. It’s mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.”

    Odds that this thing is patentable are 1 in 100,000, my friend. Your pile of wasted money is very small right now compared to what it’s going to look like in a few years.

    “The final fees were astronomical. I paid them at the time because the lawyer had obviously worked hard and I had agreed to pay the hourly rate she had quoted.”

    ROTFLMAO. Absent some genuine malpractice, you are screwed. Try begging for some money back. Whatever you do, don’t spend any more.

  96. 72

    Unfortunately, maximizing fees and billed hours is often more important than service these days – one reason I went in house. This is not a comment on these facts, just a general observation of large firms…

  97. 70

    The ship be sinking.

    Seriously, if you’re looking for high quality services at reasonable prices contact me at tech.guy@momsbasement.com. I charge a maximum of $2K for an application. If you’re paying a penny more than that, you are being ripped off.

    Incidentally, this flat fee charge includes a fully written and bound Examination Support Document (ESD), patentability search and opinion. I don’t charge clients for such rudimentary services, and any one that does is flat-out stealing.

    These fancy-pants attorneys and their “computers” and “Internets” are just using their status to steal money from you. My firm cuts additional costs by marketing our services exclusively on message boards and LikedIn. It’s about time you wake up, lose the zero and get with the hero.

    Word.

  98. 66

    On reflection I am more worried about MD as a matter of his character.

    Extroverts and doers take responsibility for all that happen to them. They make things happen, and are the leaders of society.

    Introverts and victims have things done to them by other people and complain. Theirt attitude to life is passive, not active. They pay up, and when it is too late learn that they may have been bilked and whinge. The noise that comes from them is a steady whine.

    I am surprised that MD has so much time on his hands that he can write the letter. He should be selling his invention, operating on his patients, or reading the technical literature. No way should he be crying about spilled milk.

    If my appendix needs treating, I think I will find someone else.

  99. 65

    You can’t compare a patent from 1994 to a patent in 2009 for starters. Secondly, he really should have discussed cost from the beginning and spoken to more than one patent attorney if it was an issue. And thirdly, now he knows how we feel when we get our doctor’s bills.

  100. 64

    Not to get on a high horse or anything, but I have to say that I find it a bit disturbing to see the eagerness to impugn the inventor and/or his invention exhibited by some of the supposed professionals on this thread.

    Gleaning evidence of obviousness from the doctor’s letter is a bit much. How many applications do we really write that don’t “mostly rel[y] on a new combination of existing devices/technology”? And concluding that he is a difficult or “eccentric” client also seems a bit premature.

    To me, the doctor’s letter suggests that he was surprised by the “final fees.” If that is indeed the case, then there was at least a communication problem. And that is an ethical concern, in my opinion, even if it doesn’t rise to the level of a sanctionable violation. Being a professional means more than simply avoiding sanctionable behavior.

  101. 63

    For the avoidance of doubt, I was not expressing any views about the relative merits of large firms and small firms. There are good firms of both kinds. But it is a fact of life that large corporations on the whole are more comfortable dealing with the larger firms, and private individuals and small entities on the whole are more comfortable dealing with the smaller firm. It is a matter of finding the right firm, and agreeing the terms of reference beforehand. It may be that this firm is excellent of its kind, a leader in its standards of drafting, but not well adapted to the needs of the solo inventor.

    But as regards the fees, the time to query them was BEFORE they were paid. All this work of looking for comparables and doing word counts could have been done at that time and used to re-negotiate the surprisingly high fees. But if this was not done and the fees were paid, it is TOO LATE to do more than learn from the experience and be more careful next time. As Brutus said:

    “There is a tide in the affairs of men.
    Which, taken at the flood, leads on to fortune;
    Omitted, all the voyage of their life
    Is bound in shallows and in miseries.
    On such a full sea are we now afloat,
    And we must take the current when it serves,
    Or lose our ventures.”

    You omitted to take the tide. You were unhappy about the bill, but did not investigate at the time and decided to pay it because you assessed that it was fair, even though it was high. That was your decision, and you would be best to stick with it. It is time to move on, MD!

  102. 61

    “we will crush you…”

    yep, right up to the point that you realize you have won your own race to the bottom, and you cheaped yourself right out of business…

    You are not doing your clients any favors by working in your underwear.

  103. 60

    new models have been emerging that cut through Big Firm waste and save clients tons of cash. the same people are doing the work, only there is no cream for the pool. no overhead, not low overhead. we will crush you.

  104. 58

    Per the good doctor: “The invention is not that complicated. It’s mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.”

    The application was likely drafted to avoid prior art and in preparation for the inevitable obviousness rejections. If the invention is old in the art, you need to support those narrow claims.

    Its unfortunate, and likely overkill, if the MD indeed files a complaint with the state bar. My advice: “Good luck finding another lawyer to help you.”

    The inventor sounds a bit eccentric, and perhaps has unrealistic expectations regarding patent preparation. Conducting a comparative word count of patent applications? Whoe does this???

  105. 57

    Dear Balzac,

    Your cynicism is admirable, but the fact is, for an important invention and a corresponding application the quality of which, as han correctly notes, will not be known until the patent is tested in litigation, a on-the-cheap approach will bear rotten fruit.

    Large institutional filers can get good rates on patent applications to incremental inventions because they file a lot and can gain a few economies of scale with their service providers related to attorney familiarity with the technology and established courses of dealings and the like. One off applications from medium sized companies who are shooting for the crown jewels are just going to cost more and rightly so.

    If you want a bargain go to a flea market.

  106. 56

    #6, I have never had an inventor complain about me pushing for additional disclosure and embodiments. The reality is that the initial disclosure rarely ends up being what the commercial embodiment is and we have to try to plan for that in the patent to ensure coverage in the long term. If you stick to the limited disclosure only you have very little room to modify your strategy in the future based on the actual development of the product. That is an illogical business decision. Particularly if you have a great idea but you’ve only narrowly enabled it. Your claim scope will be similarly narrowed but meanwhile you’ve given your better financed competitors a leg up.

    I recently wrote IP for a company that was able to flip it to a large company in 11 months. It was precisely because we started with the initial concept and then beefed it up to provide a basis for broad coverage.

  107. 55

    Dear Big Firm Patent Attorney,

    Cheaper is always cheaper, money-wise. But not always cheaper work. An atty’s billing rate goes up with yrs on the job. So it is possibe that the work of an atty with 10 yrs experience is 2 or 3 times more expensive that someone with 3 yrs experience. Yet the quality may only be slightly different. Patent work is expensive because of the system in which it is provided. Perhaps the field needs to change, but only if clients demand it.

    Baltazar

  108. 53

    Dear Solo Inventor,

    Did you consider that every time you called my office and kept me on the phone for 1/2 hour, I charged you a fee? Did you consider that every time you complained about the claims I wrote and wanted to “rework” them, I charged you? Did you consider that every time you called and asked me questions like, well exactly what is the enablement requirement and why do you need that other information that I charged you?

    This is why the application was $10,000 instead of $6000 like someone else told you they could have done it for.

    Best regards,

    Your former attorney

  109. 52

    IMHO, the quality of a patent will become apparent during the course of a litigation or prosecution. In general, refining the claims, adding description/evidence to avoid 103 obviousness, etc. require a considerable amount of time (and therefore higher costs). Still, it is better than filing a medicore application and later on found out the application is merely a publication or is not enforceable because of a poorly written specification. This is especially true regarding solo inventors who do not leverage on creating a large patent portfolio.

  110. 51

    As this site is read mostly by patent Attorneys, I am not surprised that most comments seem critical of Mr. MD. No patent attorney would truthfully say or imply she/he overcharges. But at the same time, atty work (opinion and drafting) is expensive. How much of it is justified? I don’t know. But I do know that atty billing rates can reach unbelievable levels. No surprise why patent Attys are some of the riches people. Attys charge such rates because they know that clients will pay for it. Perhaps clients should demand more reasonable rates or altogether seek alternative help. Perhaps smaller cheaper firms or individual patent agents/attys. The expense of patent work is due to the high billing rates that firms need to charge to pay for large overheads, bonuses to partners, and profits. The point is that patent work is expensive because of the billing system, firm structure, and willingness of clients to pay such high rates, however reluctantly. The final cost is more than it should really be.

    Full disclosure: I am a patent agent with seven yrs. law firm experience and 1 yr in-house.

  111. 49

    Dear Doctor,

    What you say is enough to raise an eyebrow but certainly not enough to reach a conclusion. How many embodiments did you have? Is the art crowded? How many independent claims did the lawyer write? How many total claims? Writing claims is an art, and having a variety of good claims of differing scope will serve you well in licensing or litigation. How many pages of specification? How many figures? How much prior art was discussed? Did you choose a big firm in a big city where overhead is high? What level of lawyer wrote this for you? At what billing rate? Did you discuss the billing rate first? Could this have been done by a less expensive lawyer within the firm? Did you discuss this or ask for this? Was this work done by someone relatively inexperienced (so the job might take twice as long as if a seasoned professional did the job)? It’s not uncommon for an associate in a big prestige firm to have a billing rate in the ballpark of $300-400 (or more). If they took 40 hours, you’re already into a 5-figure bill, and that does not include partner time to review the work. If that were the case, the firm would often make a downward adjustment.

    That said, a simple mechanical case does not need to cost as much as you seem to be projecting, absent special circumstances. On the other hand, you went for prestige and maybe what you got is worth the bill. Maybe your patent application is really exemplary. Patents are NOT commodities.

    I hope you can sort it out.

    What are your thoughts on whether people should shop around for the lowest price physician when looking for medical care? My guess is “no.” They want the job done right. Experience and knowledge count for something.

  112. 48

    “The invention mostly relies on a new combination of existing devices/technology.”
    Without knowing fine details, I think the problem may lie right in that sentence. If I were a betting person, I would bet that in this situation the patent had to be longer to get around ample prior art and to prove non-obviousness.
    Some medical device patents are “simple”, but some have to be quite particular and hence lengthy just as in pharma & biotech.
    (Funny, I am studying to take the patent agent exam, and I just studied the 103 chapter this week. This blog is a great supplement to my studies.)

  113. 47

    “I would look at the patent and say, well the attorney wrote up only what you gave them and didn’t add an iota more, including likely work around or areas to reach into for the future, so we have no legitimate basis to complain. It was very frustrating because the engineers were smart and talented and making products that saved lives.”

    Wait wait wait, an attorney filing an app for the inventors invention rather than that invention and 5 other ones he can come up with himself is “frustrating”?

    That’s logical.

    Not.

    Moreso, would claims to the competitors product be valid if they had been filed as of the initial FD of the patent? Good chance that they wouldn’t be anyway.

  114. 46

    Dr. Complainer,

    Your situation kind of reminds me of the time I went to the emergency room. I needed 1 band aid and paid for the entire box.

    All joking aside, as you point out, your application is fairly comprehensive for the art, thus more work than usual. You may not want to hear this, but, generally, independent inventorship is not reason for a discount, in fact, most competent firms will quote you a higher price for the inevitable hand holding and endless phone calls.

    You can always find someone that will quote you a lower price, if you had gone with the cut rate firm you would be complaining right now about quality and inadequate claiming/description. You are wasting your time with a bar complaint.

  115. 45

    “However, MD made a considered decision to pay the fees because he had agreed the hourly rate and the attorney concerned had “obviously worked hard”.”

    That is why it is blatant that the is disgruntled about how long the app was and “well written” when it should have been a simplistic nothing.

    I’m going to repeat this for all you slow witted folks:

    “However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.

    To give you a comparison, based on a word count, my patent application was literally twice as long as Dean Kamen’s patent for an early Segway device in 1994. My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).”

    Do you think he went into the word count for GIGGLES? Looking at Dean’s patent 5701965 we see that this fellas patent for a “simple medical device” is probably 50 text pages long. All too sad a story, I’ve seen plenty of patents that go on for 25 pages for something that needed 1 1/2 pages and others that go on for 50 that could have summed it up in 5. I’m quite sure that the attorney that wrote it felt he was entirely justified in blabbing on and on.

    D must be rofling himself some MAO at you guys expense.

    Long and short of all this is simple though MD, lawyers overcharge. Simple as that. They can because there is an artificial demand for their work created by laws that disallow the unauthorized pratice of law.

  116. 44

    Dear Inventor,

    Since it was an hourly basis deal he must have provided you estimated bill. There may be a maximum of 5-7% deviation. So you work out on it.
    Also, don’t judge his work based on prior published applications of others. A well drafted application may need more words to describe it. You should see how he has drafted claims – (boradness of claims), and how he has described. A mediocre drafter can define an application in two sheets with narrow claims while a skilled drafter may enhance scope of patent claims and draft accordingly which will surely appear as a big application. A few months ago, an analysis was done on word counts and posted on patenly. The result has shown that applications are getting verbose than earlier. the simple reason is drafter are getting more greedy in a sense that they are drafting broader claims and explaining in more details which is actually a good practice. a drafter has to be greedy to cover more in scope of the said invention.
    I hope i am able to explain you utpo some extent.

    you may contact me for anyother clarifications on sglakshimi@gmail.com

  117. 42

    How do I react to the following letter?

    My reaction would be along the lines of many of the named lawyers and their postings. Kudos to Dhuey, Stein and Spangler, as well as several pseudonym lawyers. Generally, these reactions express concern for the doctor and the need to understand the actual individual fact situation.

    How do I react to the posted reactions? A few observations:

    The anti-lawyer Malcolm with an off-the-wall derisive comment against lawyers– no surprise.

    The gamester 6 with a “you lawyers are dumb, the trick is…” – again no surprise.

    A few posts against big law firms and an almost balanced number of posts against individual inventors, which ties into a surprising agreement with ever-Euro Max – customer satisfaction is a continual management issue and one decidedly difficult in the industry of legal services. Big firms don’t want to hold hands and independent inventors very likely need hand holding (but are prone to sticker shock).

    A question for the Doc – how do you handle patients that complain about the high cost of medical service? Do you blame the system, insurance, offer rebates..?

  118. 41

    I read these posts and I think it is a shame that folks have had such bad experiences. Your patent attorney should be your trusted advisor.

    I also think it is a shame to paint everyone from a large firm as a hack that overcharges. I’ve inherited plenty of applications from small firms and solo practitioners where basic procedural mistakes were made (which result in statutory abandonment and loss of patent term) or the application was written so poorly that it isn’t fully enabled or enabled in such a way that the patent is commercially relevant. It ends up being very time consuming and expensive for the inventor to fix.

    As an example, a few years ago I had a new client come in and ask me to look over an application written by another firm (small local firm). They sought my review because of my extensive background in the area. When I read the application (which had cost him $20k already), I thought it was competently written. The attorneys had been dutiful scribes capturing the features of the invention. What I didn’t get was why anyone would care about this invention commercially – and they were looking for several million in funding. I had the client send me the VC pitch which had all sorts of sexy information in it about why this invention was the greatest thing since sliced bread. Unfortunately none of that was in the application. My recommendation was a re-write. It was actually more expensive for me to re-write than it would have been to write in the first place. In spite of the fact that I gave them a deep discount on my work (because they had already paid $20k) the end product ended up costing them more. That said, when the client read the new application he said. WOW. This is the first time I have ever read a patent application and been excited about showing it to people. Usually I hope no one will look at them.

    The point is, at the end of the day you are hiring the attorney and you need to feel that the attorney gets what you are doing and cares. You also need to feel the attorney is honest and is going to do right by you.

    That said, you get what you pay for and cheaper isn’t always as good or better. Sometimes, cheaper is just cheaper.

    As another example, I used to work for a large Fortune 100 company in the patent department. We handled a LOT of patents. We also required applications to be written for under $8k and the quality of what was provided to us showed that. Moreover, for the most part, the attorneys who worked on our matters did not really care about what we were doing. It was just a turn the crank and shut the clock off at X process. I routinely had inventors come to me and say “big competitor y is copying what we are doing.” I would look at the patent and say, well the attorney wrote up only what you gave them and didn’t add an iota more, including likely work around or areas to reach into for the future, so we have no legitimate basis to complain. It was very frustrating because the engineers were smart and talented and making products that saved lives.

    To the doctor. If your attorney gave you an estimate and is an honorable person you should be able to go to her and ask for an explanation or ask her to honor the estimate. If you can’t do that, it sounds like you don’t have a very good relationship with her. That is a shame. Sometimes, and I’ve had this happen, the bill goes out without your knowledge and the time you spend does exceed the estimate because you want to do a good job. Fortunately for me, my relationship with my clients is such that they will call me and I have the opportunity to make it right. I always make sure my work meets client expectations, I give clients an honest assessment of the work involved and whether using me is like using a sledgehammer to kill an ant (in which case I will offer to refer it to someone who is more cost appropriate). I also am generally afforded the opportunity to review the bills and I make sure we adjust it to the estimate before it goes out the door.

    As with the prior post, I don’t see that just because someone was more expensive than you like gives you a basis for complaining to the state bar.

  119. 40

    1. Talk to the attorney. Ask for a fee adjustment.

    2. If the attorney refuses, and you are convinced that the fee was excessive, call the bar association in your county and ask if they have an attorney fee dispute resolution service. If so, use that service to resolve the fee dispute.

    Do not complain to the state bar unless you have a concern regarding an ethical issue (e.g., a conflict of interest, failure to keep you informed concerning your matters, incompetence, misappropriation of trust funds, etc.). Most state bars will not get involved in fee disputes.

    Another word of caution — if you anticipate needing the services of a patent attorney in the future and are not in a major metropolitan area, consider treating this as a learning experience. If you pursue a fee reduction through the county or state bar, you may have a harder time finding another patent attorney to represent you — or you may find them asking for big $$$ up front.

  120. 39

    Can’t agree with Jon more. On my first patent, I hired a DC-based “large, well-respected, nationally-known firm.” My minimum monthly fees were several thousands of dollars for several years. When the “large, well-respected, nationally-known firm” dumped me to focus on large corporate accounts, I retained a local Dallas attorney. When I hired him, I was shocked at his retainer to finish the prosecution: $1500. For what, a day? I was so used to padding partners, I wrote him a check for $3500.

    However, it would be ridiculous to think about going back to a previous firm and demand a refund. The time for those discussions is when the dolly arrives with the bill.

  121. 37

    “I have been managing IP for large and mid-side pharmaceutical companies for some time. I NEVER use a “large, well-respected, nationally-known firm” for patent prosecution.”

    Touche! If I go to a nationally recognized physician for an elective procedure, what would I expect to pay?

  122. 36

    Totally agree with Jon’s comment. I am IP counsel at a Fortune Global 50 company, and we long ago stopped sending patent prosecution work to “large, well-respected, nationally-known firms”. We realized that we could get the same or better quality at a fraction of the cost from small 5-10 attorney shops in the Midwest. We have been so successful with this formula that we are now sending our patent litigation work to these types of firms as well.

  123. 35

    Advice to MD is practical rather than legal.

    The attorney knew that MD was a sole inventor and under a tight budget. Under these circumstances MD would have had good grounds for re-negotiating the fees for drafting and filing the application, and such renegotiation could well have had a successful outcome. It is not in the interest of any firm to have a dissatisfied client who leaves feeling over-charged and aggrieved.

    However, MD made a considered decision to pay the fees because he had agreed the hourly rate and the attorney concerned had “obviously worked hard”. The fact that MD now regrets his past decision is no reason for re-visiting it, and the trouble and acrimony involved in doing so will in all probability rapidly become disproportionate to any cost saving involved. MD lost most of his negotiating power once he paid the fees, and the avenues for recovering any excessive element (even if such is provable) are tedious and difficult. The proposed frank discussion and the putative complaint to the state bar will most probably generate much heat and little light.

    The large firm is almost certainly geared up to deal with large clients, and has internal procedures and an internal culture accordingly. It is no criticism of them to say that they are probably the wrong firm to handle MD’s patent application. If MD continues to use them, he will probably find prosecution as expensive as the drafting stage, since the costs incurred and the time spent simply reflects the way the firm is set up. The way forward is to find a new and smaller firm more used to dealing with sole inventors, to reach an understanding with them as to the future handling of the patent application and the costs likely to be incurred, and then transfer the case to the new firm with thanks for the work so far. That enables MD to exit from the situation gracefully and to control his future costs with his new firm.

  124. 34

    Dear Doctor,

    I am sure that the crooked patent attorney cheated you.

    Everybody knows that typical medical device patent applications are simple to draft.

    You don’t even need an experienced patent attorney with a university and legal education, you could go to the lowliest trainee.

    Have a look at EP 1 674 040 or US 7,112,219.

    They are mechanical and not electrical or chemical.

    I am certain that those Applicants did not pay more than $5.99.

  125. 33

    I have been managing IP for large and mid-side pharmaceutical companies for some time. I NEVER use a “large, well-respected, nationally-known firm” for patent prosecution. In all my years of experience, the costs are high ($600+ per hour for patent prosecution partners) and the quality low. The foreign associates of these firms also charge above average for low quality work (Birds of a feather …) In fact, currently my company has multiple licenses with Universities wherein my company is responsible for paying patent prosecution and annuity costs (these are horrible situations, as anyone with experence here can attest), but have limited ability to manage or choose outside counsel. Typically we “inherit” the outside counsel of the university and typically universities like “large, well-respected, nationally-known” law firms. In line with my opinion and experience, the quality of work is bad and the costs are outrageous. To make it worse, I have limited ability to control the situation and cannot fire the law firm. The big firms know this this and routinely take advantage and show little or no concern to my budget needs. The worse offender is a “large, well-respected, nationally-known firm” in Boston with whom I am “saddled” in two licenses with different universities. Short term thinking on their part, as I would never recommend or hire them for the rest of my career based in the way they have repeatedly abused the relationship and charged high costs for limited work.

  126. 32

    I agree with anon at 11:48pm.
    If you had the estimate in advance and your agent hit the estimate, then you need to suck it up. But if your agent blew through your estimate, you should talk to them about it. And, of course, not all patents are created equal. Maybe you have a very high-quality patent now. If so, good for you. Comparing to Cooley might not be fair since it’s a TTT firm.

  127. 31

    “The invention mostly relies on a new combination of existing devices/technology.”

    That doubled the cost of the patent app. right there…that is, if you ever want an issued patent. I hope the attorney said beforehand, “This will be a tough expensive argument we will probably lose. I don’t want to waste your money. But if you really want to have a go at it, I’ll need to write a masterpiece app. showing why the combination was NOT obvious. After KSR, that burden is effectively on us.”

    Also, independent inventor. That usually means lots of expensive hand-holding. Same app. for a big corp. is usually cheaper (well-trained inventors submit a *complete* disclosure at the outset and forget about the app until asked).

    Perhaps the good Doctor realized that having the patient provide new information throughout the operation would be a bad idea and therefore he stayed under. In that case, he showed remarkable restraint.

  128. 30

    Thank you for contacting me. This is the type of matter for which mediation is an ideal process. Mediate is a process by which the parties get together to resolve problems. A mediator is not a judge. The parties work out their own solution. As both a registered patent attorney and certified mediator specializing in patent disputes, I consider myself well-qualified to mediate this dispute. I charge a flat fee which is divided equally between the parties. It is far less stressful than dealing with state bar associations. In many cases, a mediation can be completed within weeks of the parties’ agreeing to mediate. Complaints to bar associations can take years and often result in nothing. If you wish to mediate this dispute, please contact me.
    Thank you. James R. Coleman Jr. 45793

  129. 29

    I agree with Bobo – why should we care about this? It appears there is plenty of blame to go around, but it’s pretty evident that the responsible attorney will fork over a partial refund regardless, because of the threat of an ethical complaint.

    This letter reminds me why I avoid individual inventors as much as possible.

    Nevertheless, you can always guarantee that whenever there’s a “I obtained legal services from someone other than you (or your firm), and now I am not happy” story, you will find scores of douchebags ready to leap forward and brag about how they provide brain surgeon services at barista prices . . .

  130. 28

    The inventor writes, “My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents . . . .”

    Well, this might NOT have been a “routine” patent application. There may be other factors involved. By way of example, there may have been best mode disclosures which REQUIRED extensive description.

    Also, we do not know if the inventor, when comparing the Cooley Godward “estimate,” is comparing apples to apples. Cooley Godward might have been quoting attorney service fees while the inventor may be complaining about attorney service fees, application filing fees and costs for drawings. We also do not know whether the inventor was providing the attorney “updates” which required revisions or additions to the work being done by the inventor’s attorney.

    Hey, I guess we’ve only seen one side of the story.

  131. 26

    Big Law stinks and it is going down in IP!

    Reasonable averages:

    simple mechanical: 3k to 4k (simple – e.g., 4- drawings)
    computer/software: 5.5k-10k
    electrical: 4-6k

    Stop ripping people off with your ridiculous rates.

  132. 25

    Impossible to tell from the facts here. The attorney may have done a very thorough, well thought out job. They attorney may have spent some time searching and cleverly drafting claims that carve around the prior art.

    Or the application could be a pile of crap and the Doc could have overpaid. We just can’t tell from what we’ve been given.

    This goes to show why doing work for individual inventors is just not worth it.

  133. 24

    It may be that the state bar association has a fee dispute resolution procedure. For example, The Missouri Bar has this one link to tinyurl.com. (Not suggesting this happened in Missouri, it’s just my home bar so I knew where to find the web site.)

    Local bar associations have them, too. Chicago’s is here: link to tinyurl.com. (Again, not suggesting this happened in Chicago–it’s just a good example of the type of program.)

    A quick google search for “fee dispute,” “bar association,” and the name of the city in which the lawyer practices will likely turn up a web page with helpful information.

  134. 23

    I’ve had experience with several patent attorneys on several patents, and if I were filing as a private individual, I now know that I would go with a guy who works out of Lee, Massachusetts (other end of the state, kinda rural). I worked for a company that interviewed him and BigFirm for some work, and chose BigFirm, but he had a nice portfolio, and his patents were clearly written, and if I call him on the phone, I’ll get him, not some junior person.

    I don’t think it is worth going the state bar route, and I would not normally spend time (and money) getting into a legal tiff with a lawyer. It might, however, be instructive to include the total cost of a patent filing in the database with each patent.

    10 years ago, my off-the-cuff estimate for legal costs for a computer-related patent was in the ballpark of $25K, +/- $5k. I’m not sure what it is now, and given the recent uncertainty about what may or may not be patentable, it might not be worth bothering (50% chance of not patentable means the expected value of the patent is 50% less, right?). I notice a certain reluctance to mention dollar numbers in the letters above.

  135. 22

    Everyone seems to have missed one quote from the letter:

    “The invention mostly relies on a new combination of existing devices/technology.”

    In today’s PTO that’s just asking for a 103. Maybe the attorney had to beef up the application to overcome this. That would surely explain the application being much larger than was expected.

  136. 21

    Maybe the doc was overcharged. Maybe not. Impossible to tell from the facts here, and the answer may not be known for some time, when he tries to license, sell or enforce his patent. I see that 6 remains clueless as ever: plenty of lawyers upthread who were willing to consider that the lawyer fleeced the doc, or that the doc is crying over nothing, but that the facts given are too few to lead to a conclusion.

    Dennis, is this beta-testing for an exam question you’re thinking of using?

  137. 20

    I’ve had experience with several patent attorneys on several patents, and if I were filing as a private individual, I now know that I would go with a guy who works out of Lee, Massachusetts (other end of the state, kinda rural). I worked for a company that interviewed him and BigFirm for some work, and chose BigFirm, but he had a nice portfolio, and his patents were clearly written, and if I call him on the phone, I’ll get him, not some junior person.

    I don’t think it is worth going the state bar route, and I would not normally spend time (and money) getting into a legal tiff with a lawyer. It might, however, be instructive to include the total cost of a patent filing in the database with each patent.

    10 years ago, my off-the-cuff estimate for legal costs for a CS patent was in the ballpark of $25K, +/- $5k. I’m not sure what it is now. I notice a certain reluctance to mention dollar numbers in the letters above.

  138. 19

    bubba bubba bubba Dr. _______. Look, I have large mohaggany office in a plush downtown skycrapper that I rent. Your lucky you didnt get my bill for one of my design patents which is almost the same price for my magical language “your invention as shown and described”. Give me a break!

  139. 18

    Sounds like he got caught up in the BIGLAW billable hour requirement. If the attorney charged for 40 hours of work at $325/hr, then the MD got a 13k patent application. I bet the attorney worked every one of those hours and, at the same time, maybe half of them might have been overkill. Who knows? Not enough facts to really say one way or another.

  140. 17

    6: only a patent attorney can decide which part of the length is unnecessary. EPO examiners marvel at the absurd length (and repetitiveness) of stuff coming from the USA, but folks like me are glad to have a bloated reservoir of disclosure from which to draw during prosecution at the EPO. So, prior to filing, I’m not ready to strike out any words at all. i think you’re wrong. I think he’s complaining because he thinks he’s paying more than he would have done, if he had gone to another firm.

    This problem is set to get far worse though. The best protection a client has against overcharging is to choose an attorney with a bulging in-tray, impatient to finish each job so he/she can deal with the hot due date on the next file down. How many patent attorneys will still be in that lucky position, 18 months on from now?

  141. 16

    Guys guys guys, you are all missing the forest for the tree. The correct response is: patent length and number of claims have gone up in recent years, for reasons unexplainable.

    How do you miss the connection between this guy’s plight and D’s ongoing chronicle of exploding size of apps?

    Look right below D’s name in the upper right hand side and you’ll find a link to a chart that is in fact a link to: “The Rising Size and Complexity of the Patent Document”

    For folks so smart, I’m surprised he could pull this over on you. Seriously, can you not read well enough to tell that the Good doctor’s problem is not with the cost per se, but rather that the document was drafted in long winded fashion thus leading to the cost?

  142. 15

    So sad. All so avoidable. Imagine a second run. Lawyer asks one simple question, at the outset: “Have you an idea what you are willing to pay?” Thereafter, client and lawyer agree a budget. Job gets done, within the budget. Everybody happy.

    Tell me, are there some patent lawyers in the USA who routinely draft for private individuals, and others who never do? Did this aggrieved individual suffer the misfortune to choose and then instruct a patent attorney who is trained to kill poorly drafted patents in mega bucks litigations, and had never before drafted an app for a private individual? For her, USD100k would be peanuts. I imagine most patent attorneys who earn their crust on instructions from private clients would give an arm and a leg to have as a client somebody as reasonable as this doctor appears to be. BTW the doctor client emphasized his “tight budget”. Doctors think lawyers swim in money. What opinion do struggling young lawyers have, about the wealth of successful senior doctors?

  143. 14

    Having read many of the comments, obviously written by lawyers, I understand why lawyers in the US have the reputation that they have!!!
    Most comments are apologetic, giving explanations as to why the bill might be so high. Obviously without details one cannot make a valued judgment but how about accepting that the client was simply overcharged. What? I hear you all cry, Never could happen.

  144. 13

    ” plan to go to the state bar and file a complaint.”

    my step-mother died in the hospital many years ago from what was obviously (from numerous reliable opinions and witnesses) malpractice.

    my father and the family never did anything about it. guess we should have filed a complaint with the medical boards and filed a lawsuit now in view of Mr. physician-inventor’s reactions

  145. 12

    the attorney gives a quote and then the inventor comes back with scores of changes and arguments over exact claim language and then wants to add alternatives which have come to mind,and insists on four meetings (in contrast, you plead to meet with your corporate inventor once). and then he does not get back to you for months despite all your reminder communications.

    been there, done that

    I’d like to see that application — it just may be a high quality application which avoids all of the potential problems (including pointed spikes an consoles). It may have a well thought out and prepared set of claims.

    You can go to a mens clothing store and buy a wide variety of suits at a wide variety of prices

  146. 11

    There isn’t enough info to really give a great answer, but the advice above is solid.

    In particular, next time you work with a patent attorney set a budget on the fees for any particular work product (whether it be an application, office action, etc.).

    Next, definitely work this out with your attorney. I know it will be a difficult conversation, but I think that is the best thing to do particularly from one professional to another. Contact the state bar if other avenues haven’t worked out.

    Finally, if you intend to continue with more patent work I would suggest shopping around some. I bet you can find some really good attorneys that will charge you much less and do a great job. I evaluate work from many different attorneys and can unequivocally say that the size and recognition of the firm doesn’t equate to much as far as quality for drafting apps. It all comes down to the particular person.

  147. 10

    Without having seen the application, it’s difficult to know if this was a well-drafted application that’s long because it’s describing many alternative embodiments, or defining many terms, or if it’s a mediocre or bad application (or even a good application) that’s long because the lawyer used 14-point font (a trick I’ve heard of someone using in order to tell their client that the application was longer and therefore the bill was higher than if they’d used 12-point font), or if it’s long because the lawyer incorporated a lot of (unnecessary? necessary?) background (note that Kayton says to write NO background in US applications, but that doesn’t fly in Europe), or for some other reason. And we have no idea what disclosure the physician gave to the lawyer.

    Maybe it’s just a lack of communication issue – the lawyer found prior art and needed to deal with it, but didn’t adequately explain to the client what was going on. If that’s what happened, it was a bad business strategy on the lawyer’s part, and it may violate bar rules too, but I’m not sure that rises to the level of conduct that warrants anything more than a slap on the wrist from the bar association, especially if the app itself is good.

    So maybe the lawyer ripped him off, or maybe Mr. MD is being a whiny tight-wad who (as another poster suggested) is annoyed because he’s now discovered he could have gotten someone else to to do the (same? better? worse?) job for less $$. Can’t tell from the letter.

    “Advice”‘s advice is pretty good for individual inventors. I certainly find it easier to get paid when I can give the client – small or large – a fixed cost up front for preparing and filing the application. But that doesn’t mean I’m unjustified in asking for more money when a project takes significantly longer than I expected, especially if I didn’t quote a fixed price or the client provided new information after I’d quoted a price.

    As someone once posted in a comment on Patentlyo, you’ll never get sued for writing a bad patent application. That’s a bit of simplification, but basically if the lawyer here can make out a reasonable case for what she did, Mr. MD should forget about getting sanctions from the state bar and move on.

  148. 9

    Simple mechanical cases are done by many good firms for flat fixed fees, and even large corporate clients demand flat fees for specific tasks in patent prosecution. The state bar wil likely decline to get involved in fee disputes beyond offering arbitration which the law firm can refuse. Or you can try to shame them into a partial refund by going public with your grievance, but that may not be wise. Good luck.

  149. 8

    NOTE:

    This is sensitive ground, because it seems very likely that Dennis’s post was neither hypothetical nor overly general. It probably relates to a specific, real incident. And it’s not impossible that posts here might be construed as legal advice (even if characterized as “off the record” or “I will idly speculate that…”)

    As we all remember from law school ethics class, we must be very careful about giving legal advice about a particular situation.

    – David Stein

  150. 7

    I agree with David Stein – without knowing more, go discuss the situation with your attorney and then if you still feel ripped off or defrauded go to your state bar association.

    As a complete aside, an individual inventor should generally be able to find a patent prosecutor that will, beforehand, agree to fixed rates for patent prep and filing, with acceptable quality. A good strategy for finding decent lower-cost prosecutors is do a patent search in the class of your invention and find patents assigned to individuals and look at the attorney on it. You can also call a parter at a full-service expensive firm and ask for a reference to a soloist. They are often have decent references and are happy to hand you off.

  151. 6

    Although this advice isn’t perfectly pertinent to your situation, the advice I give you will serve you in the future whether you are looking for someone to prepare a patent application or remodel your bathroom.

    #1A) Avoid paying by the hour. A good attorney/plumber, when given a general idea as to what you want to do, should be able to give you a pretty good estimate as to what the end cost will be. You may be asked to pay more if you change the scope of what you are looking to do or if something unexpected pops up, but that usually is not the situation. In most instances, asking to pay a flat fee for the entire project (excluding draftsman and USPTO fees), up until the first office action, is not unreasonable.

    #1B) Set a budget. If the attorney is going to go over the budget, they need to call you and explain to you why they’ve gone over the budget.

    #2) Shop around. The application that costs you $10K at one place might cost $5K at another with no appreciable difference in quality. If the attorney is meeting you in a mahogany paneled room with great views of the city, remember who will eventually be paying for that view.

    #3) If you are paying by the hour, ask for continual updates as to how much time has already been spent and how much more time should be spent (see #1B). When paying by the hour, you’ve given the attorney a blank check, so you need to keep on top of what is being spent.

    As I was typing, I was thinking of your situation, and I would simply ask the attorney for a rebate. Being a successful attorney is all about developing relationships with clients. If this attorney is smart, they’ll cut you a deal because they want to continue the relationship. However, you need to make sure that what they’ve billed is unreasonable, which will require some research on your part.

  152. 5

    If the attorney gave you a total estimate and then the final bill was astronomically high above that, I’d go to the attorney to work it out. If the attorney came in at the estimate, but you’re bent because you found another firm that said they would have done it for much less, I’d chalk that up to experience and move on.

    The reality is that, if you paid an astronomically high price, but the application, while long, is of great quality, you should happily pay the bill. Not all patents are created equal and a well drafted application is worth a hundred times its drafting costs.

    That said, it’s clear that your expectations were not met and I have to wonder whether the attorney gave you a total estimate, as opposed to just an hourly estimate.

  153. 4

    Its entirely possible that the attorney spent more of his time (and therefore your money) on the application than was necessary. If so, you’ll never be able to prove it.

    However, every invention is different, and its impossible to say that all patent applications for inventions of a certain type or complexity shouldn’t exceed X pages or Y dollars. For example, a simpler invention often needs more of a foundation to fight the inevitable obviousness rejection.

    And consider this analogy: one doctor may jump straight to a diagnosis, while another doctor may require a battery of tests first. Is the latter “milking” the system or just being thorough?

  154. 3

    Dr. Inventor,

    This is not a special situation, and it doesn’t require special advice. You went to a professional; you think the professional charged you too much. Your options include talking to the professional about it; complaining to someone; or doing nothing. You seem to know this already.

    I will say that I don’t quite understand what’s behind your suggestion that you might complain to the state bar. What’s the complaint: This lawyer was inefficient? Some lawyers — like some doctors — are more efficient than others. The state bar doesn’t rate lawyers’ efficiency.

    And Mr. Crouch: I don’t quite get why you passed the letter on to your readers.

  155. 2

    Dr. ______:

    I have reviewed your letter, and I fully understand and regard as significant your unhappiness with the legal services that you have received. However, I cannot render legal opinions (such as evaluating the quality of the service rendered or the fairness of the fees charged) based on this brief summary – just as you would hesitate to render medical advice based on a patient’s anecdote.

    I believe that your course of action (first discussing the matter with your counsel, and then consulting your state bar association) is suitable. I urge you to follow these steps promptly, as delaying may create further problems. I hope that these steps bring about a satisfactory resolution of the dispute.

    Regards,

    David Stein, Esq.

  156. 1

    Doctor, Doctor, Mister MD,

    I’m sorry to see you had a such a negative experience with your patent attorney. I’m also sorry to say that I don’t think you can get useful advice here without disclosing a level of detail that would also disclose your identity, and your attorney’s (I’m not saying you should do that).

    Some applications sail through the PTO, and others endure numerous office actions, each of which can require a great deal of attorney time. There are other factors that can increase the reasonable attorney fees. I’m not making excuses for your attorney, but I am suggesting that nothing you’ve stated so far indicates that she overcharged you.

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