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Question For The Lawyers


Spockydog

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For the first time in my life, I need to hire a lawyer. A patent lawyer, to be precise.

Covid-19 prompted me to solve what has for years been a pretty massive problem in the field of 420 hydroponics.  I did a pretty cool invent, and have a working prototype with documented proof of concept.

We had our initial meeting with one of Europe's top IP law firms this week, and they've agreed to represent us.

However, in order to get things rolling, they're asking for a sum that's a bit more than we'd expected.

My question is, is it okay to haggle? Are they entitled to be miffed if I attempt to get a better deal?

I'd really like to work with these guys, but they're the first law firm we've spoken to, and seeing as securing a patent is going to be our single biggest outlay, should I be wary of jumping into anything?

Any advice would be greatly appreciated.

 

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I don’t know much about patent law, but what I do know is that it’s a bloody expensive process, since patents have to be registered around the world. 
 

It’s not unreasonable to ask them to have a further discussion about fees and why they are asking for so much. Ask for a explanation of costs that will be encountered, particularly the immediate ones and then the anticipated future ones. What are these fees going to cover. You may find out this is just a down payment on  fairly large expenditure.

Good luck with your patent. It’s certainly a pathway to possible enormous riches.

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9 minutes ago, Fragile Bird said:

I don’t know much about patent law, but what I do know is that it’s a bloody expensive process, since patents have to be registered around the world. 

Yup, about £8k in the UK alone. 

9 minutes ago, Fragile Bird said:

It’s not unreasonable to ask them to have a further discussion about fees and why they are asking for so much. Ask for a explanation of costs that will be encountered, particularly the immediate ones and then the anticipated future ones. What are these fees going to cover. You may find out this is just a down payment on  fairly large expenditure.

Good luck with your patent. It’s certainly a pathway to possible enormous riches.

Okay, cool. I was worried they might think me cheap if I didn't just spunk up the money without question.

I'd also like to ask them what value they can add, other than the writing and filing of our initial patent application. 

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yeah, nothing wrong with negotiating rates, asking what they intend to do to earn the fee, and talking to their competitors. it would be a childish attorney who is miffed by these things.

what would be annoying would be agreeing to the fee now but then trying to haggle after the work is done.  that's what trump does. don't be like trump. though this happens with a great frequency.

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11 hours ago, Fragile Bird said:

I don’t know much about patent law, but what I do know is that it’s a bloody expensive process, since patents have to be registered around the world. 
 

It’s not unreasonable to ask them to have a further discussion about fees and why they are asking for so much. Ask for a explanation of costs that will be encountered, particularly the immediate ones and then the anticipated future ones. What are these fees going to cover. You may find out this is just a down payment on  fairly large expenditure.

Good luck with your patent. It’s certainly a pathway to possible enormous riches.

You should also seek to agree to capped or fixed costs.  At the very least you want to be notified if the costs cross a certain threshold rather than being stuck with a nasty surprise at the end. Negotiate but do it politely.  And definitely speak to other law firms.  HGF seem like a good firm (although patent law is not my field) but there seem to be many other excellent firms in the field on the same FT list.  Also you may not need the best of the best for this work and may want a more cost-conscious option.  You can always tell them you got a fixed quote for Y pounds from a competitor of theirs but you will go with them if they match it.  

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Ah, this is all great advice. Thanks everyone.

In terms of what's been agreed, absolutely nothing yet. HGF emailed on Friday to say the conflict check had come back negative and they'd be delighted to represent us.

I shot one back and told them, yes, we would love to work with them, but as the quoted costs were a little bit more than expected, we needed some time to see how we could make it work. 

Got a meeting with my partner tomorrow, so plenty to discuss. 

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I'm a US patent attorney, so I'm not really familiar with the fees charged by European IP firms for drafting a patent from the beginning.  I've engaged many European law firms to handle my European patent work, but the initial drafting and filing has almost always been done my myself or someone else in the US, so I don't know what they would typically charge in the UK.

In the US, 10K to 15K USD would be a typical estimate provided to a well-funded client for drafting a complete patent application that would be in condition for further prosecution down the road overseas without much additional work (assuming no new changes need to be added to the initial filing).  Simple mechanical inventions could be on the lower end or even less than 10K, while biotech or pharmaceutical type inventions can cost even more.  This would be a typical price range in a major legal market in the US (i.e., NY, DC, LA, SF) from a well regarded law firm.  It's possible to get it done for less, but you would probably need to engage a much smaller firm or solo practitioner, which is risky if you randomly seek these types of firms out.  That said, they can do great work if you can find the right one, which usually means you need to get a reputable referral, preferably from another patent attorney who has worked with that solo practitioner.  I can't help you with that in the UK.

On the handful of times I've worked with garage inventors that were not backed by venture capital and had to pay out of pocket, I've provided lower estimates.  However, the US has a type of patent application called a provisional patent application that can be filed in a much more informal shape, which potentially can significantly reduce upfront costs, although it will mean more costs down the road in 12 months when you need to convert the provisional application to either a Patent Cooperation Treaty (PCT) application for worldwide protection or a US nonprovisional application.  I don't know if the UK has anything like the US provisional application.

There are other things you can do to help reduce costs, assuming they are billing by the hour.  Or if they are asking for a fixed fee, maybe they will be willing to come down on their fee if you can provide them these things.  One is clean black and white line drawings, which are the standard in the patent drafting work.  If you have CAD type drawings, you can print them out in black and white with the shading turned off, or you can provide them with the files in an easy to view format, like Solidworks.  If you have the ability to generate these types of drawings yourself, let them know that you can provide them the drawings they need, and see if they'll knock off some of the cost.

Another thing would be to provide them with a rough draft of the application, but I would only recommend that if you have extensive experience in the patent drafting process.  If you do, let them know that you can provide them with a first draft because you have relevant patent experience, and maybe they'll be willing to drop the estimate.

I've worked with HGF as well as many other European law firms.  They all were fine, but yeah, they weren't cheap either.  I would talk to at least three firms just to get an idea about the potential range of the costs.  One firm might quote you a substantially lower number.  Other firms in the UK that I've worked with that you might want to check out include: J A Kemp, Marks and Clerk, Mewburn Ellis, Potter Clarkson, and WP Thompson.  Any one of these firms should be able to do a competent job.

To give you an idea about the costs from filing the patent application to actually getting a granted patent, here's some additional info.  Let's say you file the initial patent application in the UK for 10k.  If you want protection in other countries, typically you would file a PCT application within 12 months of filing your first application.  Minimum cost for the PCT application is about 5K USD, and this assumes the first application was drafted in a formal manner that doesn't require much further work by the attorney.  If you have new improvements you want to add to the PCT it can easily push the price to 10K USD or more, depending on how extensive the new work is.  About 18 months after filing the PCT (about 30 months after filing your first application), you will need to make a big decision on which countries/jurisdictions you want to enter (called entering the national stage), such as the US, Europe, China, Japan, etc.  This can be very expensive in part because many of the jurisdictions will require translations to be prepared.  US less than 5K, China 10-15K, Japan 10-15K, Europe 10-15K, would be rough estimates.  Filing in all these countries/jurisdictions will cost about 50k USD.

These are just the costs for preparing a filing the patent applications.  In Europe, Japan, China, and many other jurisdictions you will need to pay a maintenance fee or annuity fee (not huge at the beginning usually but can add up if you have many applications) every year or so to keep your patent application pending before the patent office.  And once the patent office picks it up and starts the examination process, most likely you will begin to incur attorney expenses for them to respond to the patent office communications.  If very common for the patent office to reject all the claims in your patent application, and only after responding back and forth will you get the patent issued (if at all in some cases).  Each response by the attorney can cost around 5K USD.  The good thing if you proceed down the PCT road is that you can delay the really big costs by around 30 months.  Hopefully, by then you either have funding or your business is making enough money to justify the further costs of getting a patent.  Also, even after you enter the national stage, it usually takes 2-3 years for the patent office to pick it up and issue a communication that your attorney needs to respond to.

This is a long ass post, so I'll end it here.  I'm sure you can ask the firms you interview additional questions, and they'll know how the process works in the UK.  My perspective is only from my practice here in the US.  Good luck!

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On 8/30/2020 at 9:31 AM, Mudguard said:

Good luck!

Thank you, everyone. In particular, Mudguard, for such an informative, well thought out post. I really appreciate it.

Had a meeting with my partner today, and we're going to approach a few more lawyers. Having gotten over the excitement of what I heard at our initial meeting, it would be negligent of me not to seek a different perspective. I'm currently drafting a letter of introduction, and I'll certainly go into these next few meetings with more of an idea of what to ask.

To be fair to HGF, they more or less said exactly the same as you. What they didn't say was if their rates are the same whether you're Coca Cola, or Mr Inventor. I'll certainly ask them that question, along with a few others based on everyone's feedback.

Though, if things go half as well as I think they can with this invention of mine, all talk of cost will be moot. With just some aluminium, fishing tackle, and climbing equipment, plus a dash of ingenuity and the magic of physics, I've come up with something that will probably cause a minor bidding war amongst the world's leading grow tent manufacturers.

And that's just for starters. HGF reckon the patent can be crafted to allow us to upscale the invention and possibly revolutionise the growing practices of indoor commercial cannabis cultivators, all over the world.

Either that, or they're blowing smoke up my ass.

 

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So we've reached out to a few more law firms, based on @Mudguard's recs, as well as some others we received. One of the partners at J A Kemp came back and was keen to help, but it turned out they had a conflict of interest. We're awaiting responses from three more firms.

Meanwhile, HGF are going above and beyond.

Over the past few days, we've been exchanging emails, in which they've outlined the scope of our claims, and the potential applications of my invention. I'm still trying to wrap my head around the implications of what they've told me. It doesn't feel real. I mean, I've always been a bit of a dreamer, but shit like this doesn't happen to me.

 

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Glad things are going well.  Sounds like you've got at least one good match with HGF.  If you asked them what value they can add, one of the things is to help you broaden the scope of the invention by asking you or suggesting to you whether your invention can be used in other applications, which it seems they've done.  Another common thing we do is to get you to think about potential design arounds to your invention.  For example, can certain elements of your invention be replaced by an alternative?  You'll want to capture all this in the patent application, and particularly in the claims where it is important to have a good understanding of what is really essential to the invention and how it can be applied.

One of the things many patent attorneys enjoy most is learning about new technology, so I'm not surprised that they would be enthusiastic about your invention, especially if you have a good pitch.  They might also have a personal interest in the subject matter of your invention.  

I'm actually curious, but please don't disclose anything else about it publicly, at least not until your patent application is filed and publishes in 18 months (you can disclose after filing and before publication, but please talk to your attorney first - might want an NDA).  I think you're already aware, but just in case, I wanted to mention this.

Let us know how things go in 18 months or so.  I actually have a couple grow tents that I mainly use to grow vegetable seedlings for my garden, but a couple years ago when growing weed for personal use was legalized in California, I tried growing a couple cannabis plants as an experiment.  I just grew them in dirt though.  It didn't go well, and I ended up tossing them out after getting hit by powdery mildew.  I've occasionally thought about giving it another try, but since I don't actually smoke, not much point besides for fun.

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10 hours ago, Mudguard said:

I'm actually curious, but please don't disclose anything else about it publicly, at least not until your patent application is filed and publishes in 18 months 

 

Here's the introduction of my presentation to HGF. It outlines the problem I set out to solve, but not how I did it. 

Spoiler

 

My name is xxxx xxxx, and I am not an inventor.

At least, not in any traditional sense of the word.

What I am is a former project manager who, over a decade ago, gave up work in order to care for a family member who suffers from a pretty serious medical condition.

Today, this condition is managed with the aid of some equally serious medication.

Most of this medicine, we can get from the doctor. The stuff we cannot, we get from a family friend.

Over the years, supply has never been an issue. When it was needed it was always there. However, in early 2020, as a strange new disease swept the globe and lockdowns came slamming into force all over Europe, uncertainty began to set in.

As the great Sir Alex Ferguson might once have said, it was squeaky bum time.

Had we lived in one of the dozens of countries where medical cannabis was legal, we would just have gotten an extra prescription or two. But given the status quo here in the UK, that wasn’t an option for us.

For the first time in years, we could no longer be certain of our supply.

This, along with the general horror of Covid-19, combined to form a highly volatile cocktail of stress and anxiety. As the weeks went by, with tension in the household approaching dangerous levels, I knew I had to do something.

By the time the UK finally went into lockdown, I already had my lights, seeds, and a very small grow tent. All I had to do was decide upon a growing medium. With limited floor space, efficiency was by far the most important factor, whatever would provide the largest yield per square foot.

Despite my lack of growing experience, I quickly decided that Deep Water Culture hydroponics was the way forward. With DWC, plants are grown in a modified bucket with the roots suspended in a nutrient-rich solution, delivering growth rate and yield unsurpassed by other, more beginner-friendly growing methods.

The day after my DWC equipment arrived, I discovered SCROG.

Immediately, I was hooked. Here was a way to dramatically increase the yield of a single cannabis plant. Instead of having to grow three or four plants at a time, with all the legal peril that entails, I could grow just one plant. Per year.

Oh, hang on a minute.

From my research, I knew that DWC reservoirs had to be thoroughly cleaned every few weeks. If neglected, the resulting build-up of excess mineral salts could seriously impede plant growth.

So, quite what one might do with an enormous plant, attached to a bucket lid and a 3ft x 3ft screen, whilst exposing its roots to the air while you cleaned the inside of the bucket was, well, anybody’s guess.

Okay, I thought, there must be some kind of solution.

Hours later, the only thing my Google Fu had come up with was a whole bunch of other reasons why scrogging was viewed as incompatible with DWC.

I took to the forums, to see what seasoned growers had to say. Mostly, it was, "Choose another medium if you want a successful scrog."

But I really did not want to do that. Besides the fact that I’d already sprung for a bucket and air pump, the concept of SCROG was so attractive, especially if able to harness the growth potential of DWC. There had to be a mechanism to combine the two methods.

If there wasn’t, I’d build one myself.

And so, with a crude imagining of what a solution might look like rattling around inside my skull, I decided to go for it.

 

 

10 hours ago, Mudguard said:

Let us know how things go in 18 months or so.  I actually have a couple grow tents that I mainly use to grow vegetable seedlings for my garden, but a couple years ago when growing weed for personal use was legalized in California, I tried growing a couple cannabis plants as an experiment.  I just grew them in dirt though.  It didn't go well, and I ended up tossing them out after getting hit by powdery mildew.  I've occasionally thought about giving it another try, but since I don't actually smoke, not much point besides for fun.

I tried growing a couple of plants in my garden a few years back. Total disaster. Turns out it's much easier with indoor hydroponics. If you can keep conditions optimal, there's really no reason why you should fail. 

Here's how my first grow is looking, with about two weeks until harvest. And yes, that is just one plant. :cool4:

3 hours ago, Fragile Bird said:

Need any investors?

Oh, yes. Quite a bit more than I imagined before talking to HGF. :D

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21 minutes ago, john said:

Hey, congrats mate, sounds like you’re gonna be rich. And what a noble path to riches helping to grow God’s special greens. :thumbsup:

Cheers, man. As I said, I can't really believe this is happening to me. Back in April, securing a patent and launching a product was the very last thing on my mind. Ever since v2.something, I've been struggling with imposter syndrome. Having not only the invention, but my entire crackpot vision, validated and expanded upon has been enormously rewarding. 

Anyway, first things first, need to get the patent filed. But because it's green technology, we get to jump some queues, and could possibly have our first patent in as little as nine months. 

Then there will be a bunch of decisions to make.

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