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   Contingency!
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rougie
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Contingency!
« on: Nov 25th, 2007, 10:59pm »
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Hello,
 
How do IP lawyers or IP litigators really feel about working on  contingency basis? Or in the event where I would be faced to undergo an infringment case targeting my patent, would I have a difficult time finding a lawyer to defend me by contingency.
 
Also, is finding a lawyer to work on contingency possible only in specific and rare occasions? Or is this typical practice that lawyers come across quite often and commonly accept this type of arrangement.
 
In laymens terms, what I am trying to say is if I go to a lawyer firm and produce a solid patent and ask them to defend me by contingency, will they look at me as a risky case and be reluctant and unwilling to defend me?
 
Robert
 
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Bill Richards
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Re: Contingency!
« Reply #1 on: Dec 15th, 2007, 11:28am »
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Although some attorneys will handle a plaintiff's case on contingency, I don't know how it would work on the defendant's side.  The main reason being that how does one evaluate the value upon which the contingency is based?  It's not like damages from the defendant to the plaintiff that can be idetified.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
patentsusa
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Re: Contingency!
« Reply #2 on: Dec 15th, 2007, 2:02pm »
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It is easy enough to find a litigator willing to enforce a patent on a contingency basis, if you have a strong enough case.  I can help anyone who has such a case find help.  
 
As stated above, it would be unusual for a lawyer to defend on a contingency basis.  
 
It would also be very unusual for a lawyer to prepare a prosecute a patent application on a contingency basis.  The problem is that procuring a patent is a negotiation between the applicant, who wants to cover a wide range of alternative designs, and U.S. Patent and Trademark Office, which want to limit the applicant fairly specifically to what they have designed or to deny a patent altogether.  After the application is filed, the first office action is typically a rejection of all claims or perhaps a narrow claim may be indicated as containing allowable subject matter.  As the applicant chips away at sequential office actions with sequential responses to rejections, amendments to distinguish over the prior art applied by the examiner, with arguments, continuations and divisionals, and possibly with appeal, broader and better protection may be obtained.  At what point would the contingency be met and who would decide?  No patent agent or attorney that I know would take a patent prosecution case on contingency.  If the deal was the contingency is met and a fee is earned after ANY claim gets allowed, the applicant may end up with a very narrow patent.
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Deepak Malhotra, JD, BSEE
Registered Patent Attorney
Malhotra Law Firm
www.patentsusa.com
Bill Richards
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Re: Contingency!
« Reply #3 on: Dec 15th, 2007, 8:52pm »
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on Dec 15th, 2007, 2:02pm, patentsusa wrote:
It would also be very unusual for a lawyer to prepare a prosecute a patent application on a contingency basis.

Perhaps we're just getting tied up with semantics, but I know of many patent practitioners who do patent prosecution in return for a share of whatever profits/royalties the resultant patent generates.  They set up an LLC to own the patent with each having a share.  The inventor assigns the patent rights to the LLC.  Quite straightforward and happens all the time.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
rougie
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Re: Contingency!
« Reply #4 on: Dec 16th, 2007, 11:41am »
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Hello everyone, and thankyou for taking the time to answer my post.
 
>Perhaps we're just getting tied up with semantics, but I know >of many patent practitioners who do patent prosecution in >return for a share of whatever profits/royalties the resultant >patent generates.  They set up an LLC to own the patent with >each having a share.  The inventor assigns the patent rights >to the LLC.  Quite straightforward and happens all the time.  
 
1) What is an LLC?
2) You mean, the lawer firm that drew up my patent would defend me by contingency only if I would assign part of the rights to my patent (I being the inventor and assignee)?
 
3)If this is so, what are the advantages or disadvantages to this deal?
 
Happy holidays!
 
Robert
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