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)
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.
“In contrast, groundbreaking patents like the Segway can be shorter because they are so clearly distinguishable from prior systems.”
ONLY 25 pages!!!!
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.
Malcolm,
Re: “most infamous commenters”
Another kettle calling the pot black.
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?
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.
“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.”
“A pack of attorneys, an ordinary inventor, and a doctor walk into a bar…”
And all of them say “ouch” at the same time.
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.
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
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.
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.
“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.
“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.
This exchange should be on the discovery channel.
A pack of attorneys, an ordinary inventor, and a doctor walk into a bar…
Doctor — is there any significance to the fact that you “treat one patient at a time”?
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.
Not that I mind put-up jobs – they intrigue me – trying to figure out, what’s up doc.
“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.
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.
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.
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?
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.
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?
“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.
“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.
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.
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.
“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?
“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?
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?
“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.
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.
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.
Aawh, what’s up doc?
It takes one to know one.
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.
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.
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…
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.
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?
(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
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.
BTW 6 – the early ’70s was well after the wheel was invented. Back then, you could buy a whole car for $5000.
He must’a thought I was born on a banana boat yesterday.
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.
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?
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.
Good Doctor–
The only ones among us who “passed” the “test” are those who offered no comment whatsoever.
“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.
“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.
Legal advice, schmegal advice, some of you guys are way to uptight.
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.
Dear Carnac:
It would be the same story if the big firm had previously prepared and filed the provisional itself.
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!
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.”
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.
“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?
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
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.
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.
“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…”
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.
(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)?
please explain in detail the ethical violation which you contend occurred?
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.
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?
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.
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.
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!
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.
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.
“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.
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.
“… 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.
“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.
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?
“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…
“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 🙂
“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.
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
“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.