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Author Topic: Background education  (Read 1680 times)

smgsmc

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Re: Background education
« Reply #15 on: 12-24-10 at 10:26 pm »

If you inform your client that you'll need to catch up a bit on the technology to write an adequate patent application and explain that your hourly rate will apply during that work, you can most certainly expect the client to pay for your education.  Whether you can actually do that depends on where you are and what your client wants from you.  And, they might find some way to get you additional disclosure to minimize your education time.

Jim, you have that option but many associates in firms do not.  Associates often have to eat the hours spent learning.


Also, if I were a client, and a practitioner told me I had to pay $x,000 for him to develop enough technical expertise to handle my application adequately, I would look elsewhere (except under a very limited set of circumstances).
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palmer

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Re: Background education
« Reply #16 on: 12-24-10 at 10:42 pm »

Khazzah, by 'bypassed patent' I meant "patent that is unlikely to be infringed by competitors, or even infringed at all" despite the competitors' use of the inventive concept, that they learned from the patent. This, because the inventive concept was not described in the bypassed patent in a sufficient manner for a court to recognize the infringement. By "inventive concept" I meant the "invention boiled down to its bare essence, in its broadest form, not any narrower than absolutely necessary". If the patent doesn't cover the inventive concept, then it may be more economical for the competitors to find the embodiments of the inventive concept that were left out of the patent, and use them free of charge, thereby bypassing the patent.
« Last Edit: 12-24-10 at 11:07 pm by palmer »
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IntelProp007

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Re: Background education
« Reply #17 on: 12-29-10 at 02:15 am »

It may be risky for an EE patent attorney to attempt to write a first-time patent application on for example a complex biotech invention relying-on for background merely a few books on the topic. The risk is that you may be violating the duty to your client to not take work, or hold yourself out as being able to handle work, that is clearly outside of your competence level. If a clear error in drafting or prosecuting the technology of the case is discovered a couple years down the road after the patent issues (e.g. an error that a PHOSITA would have easily caught), the client could assert malpractice or violation of the rules of professional responsibility. In cases clearly outside of your technical competence level, but that you're still desirous of handling, I think it best to, at the very least, solicit the advice of an expert in the art, or a suitable PHOSITA.
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My post(s) does not constitute legal advice and I do not accept any liability for any loss or damage caused to any person relying on any information or omission in my post(s).
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