WHAT IS A RETAINER AGREEMENT?

A retainer agreement is a legal contract between a law firm (or attorney) and the client by which the client agrees to hire the law firm for particular legal services.  The retainer agreement provides a detailed description of the parties to the agreement, the scope of legal services to be performed, the rules and manner in which those services will be performed, and a recitation of the agreed-upon fee arrangement between the parties.  Generally speaking, the law firm will require the client to review the agreement, sign the agreement if there are no changes to be made, and return the executed agreement along with a retainer fee (or deposit) to the law firm before any legal services are performed on a particular matter.

Authored by: Scott A. Meyer and John Sokatch

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Chalker Flores, LLP provides business, corporate, litigation and intellectual property legal services to individuals, inventors, entrepreneurs, start-ups, spin-offs, universities, research institutes, and small to large public and private companies and businesses.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact us 214-445-4040 or info@chalkerflores.com.  Please follow us on Twitter at @chalkerflores.

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Leahy-Smith America Invents Act Imposes Changes to U.S. Patent Process

Signed into existing law by President Barack Obama on September 16, 2011, the Leahy-Smith America Invents Act (“AIA”) presents the greatest change to the patent statute in over half a century.  Most notably, the AIA aligns our patent system most other developed countries by shifting our patenting system to the “First-to-Invent” system, as well as creates several new post-grant patent review processes among other changes.  The following provides a brief summary of the changes soon to be or already in effect under the new patent regime.

Sweeping Changes to the Patent Examination Process

New First-Inventor-to-File System—Starting early next year for those patent applications filed on or after March 16, 2013, the AIA will transition to the “First-Inventor-to-File” system (or “FITF”)—a major shift from the old regime which previously awarded patents to the “First-to-Invent” (or “FTI”) the claimed subject matter.

Under the new FITF system, the first inventor to file an application will receive a one-year grace period for prior art disclosures made publicly available for one year or less before the effective filing date.  These early disclosures may also serve to inoculate the patent from third-party prior art during the period from the disclosure to the patent’s effective filing date (up to one full year).

The new definition of prior art consists of patents and printed publications that describe the claimed invention or instances where the claimed invention was in public use, on sale, “or otherwise available to the public before the effective filing date.”  Therefore, public availability is now a prerequisite for all prior art.  But the AIA removes previously incorporated geographic limitations, as it is no longer a requirement that knowledge, use, or sales occur within the United States.

Moreover, patent applicants are now permitted to rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. § 102.

Supplemental Examination—Section 35 U.S.C. § 257 provides for a new post-issuance, supplemental examination procedure for patentees beginning on September 16, 2012, that can be used to “consider, reconsider, or correct information believed to be relevant to the patent.”  Within three months after the receipt of request, the USPTO will make a determination by issuing a certificate indicating whether or not a substantial new question of patentability is present.  If so, then the USPTO will institute an ex parte reexamination proceeding.  This new process is already in effect as of September 16, 2012, and applies to any patent issued on, before, or after the effective date.

Prioritized Examination—A patent applicant may now opt for prioritized examination, which will accord special status during prosecution before the USPTO, with the specific goal of providing a final determination of patentability within twelve months after receiving prioritized status.  Requests for prioritized examination will be limited to 10,000 requests per year, subject to adjustments by the USPTO.

Creation of New Interpartes Proceedings

New Inter Partes” Review—The AIA introduces the new inter partes review” process as a replacement for the previously implemented inter partes patent reexamination.  This new process will be conducted by the Board to review the patentability of one or more claims in a patent upon the grounds permitted by §§ 102 and 103.  Unlike the former inter partes reexamination, a petition for inter partes review begins with a third-party filing of a petition after the later of the termination of a post-grant review or nine months following issuance of the patent.  The USPTO will grant a petition for inter partes review upon a determination that there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”—a new standard which replaces the previous “substantial question of patentability” standard previously employed for inter partes reexaminations.

Post-Grant ReviewThe AIA creates new a process that allows for any person, including third parties, to petition for review of a patent upon any invalidity theory under § 282(b)(2) and (3) within nine months of the grant or issuance of a reissue of a patent.  Under this post-grant review process, a party challenging the validity of a patent must overcome a rebuttable presumption of patentability by demonstrating that it is more likely than not that at least one of the claims challenged is unpatentable.  In response to any challenge for review, the patent owner will then have one opportunity to amend the claims, as well as additional opportunities to amend allowed claims with the consent of the petitioning party.  This process is now in effect as of September 16, 2012.

Transitional Program for Business Method Patent ReviewThe AIA creates a special transitional program for business method patent review which reviews the patentability of one or more claims in a covered business patent.  This program will last for eight years following its recent date of effectiveness starting on September 16, 2012, and is limited to “covered business method patents,” which the AIA defines as those certain patents that claim a method or apparatus for performing operations “used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”

Derivation Proceeding—The newly implemented derivation proceeding allows the USPTO to make a determination as to whether “(i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization.”  Derivation proceedings will take effect on March 16, 2013.

Impact on Fees and Practices before the USPTO

Inclusion of Oath and Declarations—35 U.S.C. § 115 now requires the inventor or joint inventor to include with its application an oath or declaration that (i) the application was made or was authorized to be made by the affiant or declarant, and (ii) that such individual believes himself or herself to be the original inventor or an original joint inventor of the claimed invention in the application.  Likewise, the AIA permits those persons to whom the inventor has assigned, or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to include in his or her application for a patent an executed agreement  in lieu of filing these statements in a separate oath or declaration.

USPTO Fees—As of September 26, 2011 and in conjunction with the creation of a new Fee Setting Authority, the AIA will increase many USPTO fees by as much as 15%.  The entire list of updated fees is available at http://www.uspto.gov/main/faq/index_feefaq_p.html.

Micro Entities—The AIA establishes a new “micro entity” status for certain patent applicants, which will be distinct from the “small entity” definition found under 35 U.S.C. § 41(h)(1).  The micro entity status, which was made available as of September 16, 2011, will entitle such applicants to a 75% discount on USPTO fees under § 10(a).

Electronic Filing Incentive—The AIA will now essentially penalize applicants by imposing an additional fee of $400 ($200 for small entities) for each original patent that is not filed electronically.

Satellite USPTO Offices—The AIA authorizes the USPTO to open three satellite offices within the first three years of its enactment.  The USPTO states that the purpose of this authorization is to “increase outreach activities, enhance employee retention, improve recruiting, decrease application backlog, and improve examination quality.”

Amendments to Litigation Matters

Misjoinder of Defendants—Under the amendments to the AIA, merely infringing the same patent will no longer be proper grounds to join potential defendants.  Instead, a patent owner may join multiple parties in a single patent infringement lawsuit only if: (i) a cause of action arises out of the same transaction, occurrence, or series of transactions or occurrences, and (ii) there exists questions of fact common to all defendants or counterclaim defendants.

False Marking Claims—The AIA removes the qui tam provision from the false marking statute and now limits standing and damages for filing false marking lawsuits to only those parties that suffer a competitive injury as a result of the alleged false marking.  Damages may now only be collected from the time the alleged infringer was put on notice of another’s patent, which includes marking a product or service with the corresponding patent number.

New “Prior Commercial Use” DefenseFor those patents issued on or after September 16, 2011, the new “Prior Commercial Use” defense now exempts certain subject matter from a finding of patent infringement if the claimed subject matter is “a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process.”  To qualify for the defense, the party asserting the defense must establish, by clear and convincing evidence, that the prior commercial use occurred at least one year before the earlier of the effective filing date or an inventor’s disclosure that establishes a prior art grace period.

Repeal of the “Best Mode” DefenseThe AIA removes the previously recognized defense to patent infringement claims for failure of a patent to disclose the best mode to practice the claimed invention.  Instead, an examiner may simply reject an application for an inventor who fails to disclose the best mode during prosecution of the application.

Further Studies Regarding AIA Changes to be Conducted by the USPTO

The AIA further directs the USPTO to conduct on-going studies regarding how these changes are being implemented, as well as other patent policies and practices.  The studies will focus primarily on innovation, competitiveness in the United States, and access to capital for small business investment.  The USPTO will then report back to Congress within four years from the date of enactment of the AIA and include any further recommendations for changing patent laws and regulations.

Source: USPTO.gov, “Leahy-Smith America Invents Act Implementation,” available at http://www.uspto.gov/aia_implementation/index.jsp (last visited November 23, 2012).

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Chalker Flores, LLP provides intellectual property, business, corporate and litigation legal services of the highest quality.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.  Clients include individual inventors, start-ups, spin-offs, major national universities, research institutes and medium to large corporations.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact us 214-445-4021.  Please follow us on Twitter at @chalkerflores.

CHALKER FLORES, LLP RATED AV BY MARTINDALE-HUBBELL® PEER REVIEW RATINGS™

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Dallas, Texas; October 23, 2012:  The law firm of Chalker Flores, LLP is pleased to announce that it has achieved an AV® Preeminent™ peer review rating by Martindale-Hubbell®.

This is an exciting time for Chalker Flores, LLP, as the firm marches towards its ten-year anniversary of tailoring solutions for the needs of its diverse array of clients worldwide.  The firm just earned an overall peer review rating of 4.8 out of 5.  As a highly rated firm, the special demands of its clients will continue to be met with the same excellent service and boutique feel.

Lawyers and law firms achieve ratings from Martindale-Hubbell through a peer review system.  A rating from Martindale-Hubbell assists consumers in locating legal services of high quality through an expansive network of lawyers and law firms.  Martindale-Hubbell Peer Review Ratings also identifies lawyers with the highest ethical standards and professional ability.  Ratings are an invaluable aid when seeking any type of legal representation.

“This is a distinguished honor for our firm as we strive every day to fulfill our mission to our clients,” states Scott Meyer, Partner.  Mr. Meyer adds, “our lawyers and staff are the true recipients of this honor as it shows their constant integrity and confidence in assisting our clients with their unique legal needs.”

More About Chalker Flores, LLP:

Chalker Flores, LLP provides intellectual property, business, corporate and litigation legal services of the highest quality.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.  Clients include individual inventors, start-ups, spin-offs, major national universities, research institutes and medium to large corporations.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact Eileen Cortez.

Important Rule Changes for Eastern District of Texas

On February 27, 2012, the United States District Court in the Eastern District of Texas announced the amendment of their local rules.  The rule changes are to be effective after a reasonable period for notice and comment.

Starting with Local Rule CV-5, the court made some important changes related to electronic filing, including the following:

  • A waiver of service in a civil matter is now exempt from the requirement of electronic filing under Local Rule CV-5.
  • CV-5(a)(2) regarding registration for electronic filing, has been updated to allow the court more freedom in handling bad email addresses.  The court is no longer going to deal with “bounce-back” email notifications.  The Rule adds, “Documents sent from the court will be deemed delivered if sent to the last known e-mail address given to the court.”  Subsection (i) of this rule was deleted in light of an attorney’s responsibility to maintain their own email account information and because of the time court staff was spending on chasing down good email addresses.  It will be imperative for attorney’s and their staff to update email addresses with the Eastern District.
  •  Under Rule CV-5(a)(4), filers are now allowed to attach files up to fifteen megabytes in size.  This does not change the page requirements of motions and responses however.  The Court further comments that the increase in megabyte size is not encouragement for filers to go overboard with unnecessary attachments.
  •  Still under Rule CV-5, subsection (c), the court adds (c)(1) entitled Letter Briefs.  Letter Briefs that are ordered to be filed by the court must contain a certificate of service and must be served on all counsel of record.  All response and reply dates shall be calculated from the date of service pursuant to Fed. R. Civ. P. 6 and Local Rule CV-6.  This rule clarifies any confusion regarding procedural requirements related to a Letter Brief.
  •  Rule CV-7, Motions Practice, is clarified to expressly state that motions must be accompanied by a “separate” proposed order.  Of course, orders are to be in searchable and editable PDF format for the Judge’s signature, but must not be part of the motion.  This language was changed to mirror Rule CR-47(b), and clarifying further that any proposed order should be filed as an attachment to the motion.  Filing an order as a separate document clutters the docket.
  •  Although many courts require a certificate of conference on any motion filed, the Eastern District of Texas is updating this rule.  CV-7(i) is updated by eliminating subjection (8), the need to have a certificate of conference on “any motion captioned as ‘joint,’ ‘agreed,’ or ‘unopposed.’”  However, they are adding the requirement for a certificate of conference on any writ of garnishment.
  • Local Rule CV-26 is changed to clarify the fact that there is a designated hotline “duty” judge each month regarding discovery.
  • Procedures for a contested bill of costs were changed in Rule CV-54(b) giving the parties the options to:  (i) file a joint motion identifying the areas of agreement and disagreement to be resolved by the court, or (ii) file a motion requesting costs that indicates the areas of agreement and disagreement to be resolved by the court.
  • Local Rule CV-72 (a)-(c) relating to the powers of the Magistrate Judges was rearranged to add current text appearing in Appendix B instead of deferring to Appendix B.  In addition, CV-72(b) regarding motions for reconsideration of a non-dispositive motion adds that any party may respond to a motion for reconsideration within seven (7) days after being served with a copy of the motion.  The addition of the response time closes a gap left in Fed. R. Civ. P. 72 which does not include a deadline in which to respond.  In addition, the court adds a new subsection as follows: (d) “Special Master Reports—28 U.S.C. § 636(b)(2). Any party may seek review of, or action on, a special master report filed by a magistrate judge in accordance with the provisions of Fed. R. Civ. P. 53(3).”
  • Appendix B to the Local Rules of Court for the Assignment of Duties to United States Magistrate Judges of the Eastern District of Texas was recrafted.  The initial Rules 4(A)-(C) were all deleted as they dealt with reconsideration of non-dispositive matters and added into Local Rule CV-72.
  • Local Rule CV-83(b) regarding transferred or remanded cases adds a sentence stating that there is no waiting period for Multi-District Litigation transfers as there are with other transfers or remands.  Therefore, the twenty day waiting period does not apply in MDL cases.
  • Last and most importantly for patent infringement matters, the working group who have proposed the changes for the Eastern District add an Appendix P, a Model Order Regarding E-Discovery to streamline the production of Electronically Stored Information (“ESI”).  Instead of contemplating a separate rule, they wanted to allow for a more flexible plan of action for E-discovery in patent cases.  The order outlines the document image format and requirements of producing text-searchable documents, native files, voicemail and mobile devices, and the requirement of backup restoration.  The order further includes language relating to only the request for email production, which is separate from ESI.  The Model Order avers a proposed timeline for parties to seek email discovery in phases pertinent to a patent infringement matter.  It further requires the requester to specifically identify potential email custodians and why it is believed that the custodian is significant in the matter.  Production requests and depositions to identify potential custodians will be limited by this order, as well as search terms and the time frame for email production.  The order does allow for the parties to limit the discovery requests without leave of court.

The Judges of the U.S. District Court of the Eastern District have approved the changes by General Order 12-6.  Details can be found at the Court’s website under “Court Announcements” at http://www.txed.uscourts.gov/