Client Notices & Terms of Representation

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Welcome to Fitch, Even, Tabin & Flannery LLP

We are grateful for the opportunity to be of service.

We ask all clients to review the following notices and terms of representation. These terms of representation, and the terms of our individual written engagement agreements with our clients, apply to our client relationships. To the extent a term herein is inconsistent with a term of an individual written engagement agreement, the term of the written engagement agreement governs the attorney client relationship.

CLIENT IDENTITY AND COMMUNICATIONS 

When we accept representation from an entity, that entity will become a firm client during the period we are representing that entity. We will refer to the represented entity as “Client.”

We ask Client to designate one person or group from whom we will take our instructions.

Client agrees to keep Fitch Even advised of its current contact information, including contact name, address, telephone number and email address. Fitch Even is not responsible for any action taken, or failure to take action, when we have been unable to contact Client due to lack of current contact information. 

From time to time, we will request information and/or instructions from Client and, in many circumstances, by a certain date. We are not responsible for any action taken or failure to take any action when Client has not provided the requested information or instructions by the date requested. 

If there is a third-party payor of fees and expenses on Client’s behalf, such as an insurer, it is understood that such third party is not our client. We do not owe such payor any attorney-client duties and as such are permitted to be directly adverse to such payor in any other matter. The same is true for other entities and individuals, even if Client might owe such other entities and individuals any fiduciary duties.   

If we are engaged by an associated firm on behalf of an ultimate client of the associated firm, that ultimate client will be our Client as specified herein. The associated firm represents that it is authorized to accept these terms and conditions on behalf of said ultimate client and that it is authorized to provide us with direction on behalf of the ultimate client. Such associated firm will not itself become our client by virtue of working with us, nor will any other client of such associated firm.

LIMITED SCOPE OF REPRESENTATION 

Our representation of Client extends only to Client itself and not to any other entities. For example, we are not representing any of Client’s parent or subsidiary entities and we are not representing any individual employees of Client. For the moment, any parent or subsidiary companies are not our clients, and, subject to our ethical obligations to Client, we may remain or become adverse to such other entities. An additional conflict check may be required should we be asked to represent any such other entity.

Our engagement extends only to the intellectual property aspects of the subject matter for which we have been engaged, subject to the limitations described in this letter. Client is not engaging us as Client’s general attorney for other legal matters, nor is Client engaging us for any intellectual property matters beyond the subject matter for which we have agreed to act.

Our firm does not provide tax or insurance advice, and Client understands that it is not engaging us to provide any tax or insurance advice relating to the subject matter for which Client is engaging us.  Fitch Even does not act as an investment advisor, accountant, appraiser, insurance consultant, expert witness, or foreign associate, and Client acknowledges that Fitch Even is not liable for the appointment, supervision or performance of such entities that have been retained to perform those services. Any advice we provide is not intended or written to be used, and cannot be used, for the purpose of avoiding penalties under the Internal Revenue Code or promoting, marketing, or recommending to another party any transaction or matter.

To the extent that we retain any third parties, such as foreign associates or expert consultants, Client acknowledges that such third parties are independent contractors and not agents of our firm. If there are particular contractors that Client would like us to use, please let us know. With regard to foreign associates, it is generally necessary in obtaining patent and trademark protection outside the United States to work with such a foreign associate. The foreign associates that we work with are responsible for their own work product, and Client acknowledges that Fitch Even is not responsible for any action or failure to take action by such foreign associate. 

As explained in more detail below, our firm does not docket for patent maintenance fees or annuities, and we do not advance payment for such fees.

INVOICING AND BILLING 

Fitch Even will send invoices on approximately a monthly basis, but may send invoices more frequently. Each invoice will describe the fees and disbursements incurred since the last billing statement. Payment of our invoices is due no later than 30 days after receipt.  

Our fees exclude any sales, use, excise, transfer, value-added or similar taxes, and payment of our invoices must reflect a net sum equal to our full invoiced amount.

If Client’s account is not kept current, Client authorizes us to charge interest at the rate of 1.5% compounded monthly and to cease work and payment of disbursements on Client’s behalf. Client shall reimburse Fitch Even for collection costs in the event Client’s account becomes delinquent. 

In adversarial proceedings, Client agrees that as of 90 days before any scheduled trial or arbitration date (or a later time that we may make such request), all fees and costs incurred up to that point will be paid and that Client will either provide us with a deposit (or augment any existing deposit) or make another satisfactory arrangement to ensure payment of all fees and costs estimated to be incurred from that point through the end of trial or arbitration.

No later than 30 days following receipt of an invoice, Client will bring to our attention any disputed fees or disbursements. Failure to do so within such 30 days shall constitute an acknowledgement that our fees and disbursements are correct and shall constitute a waiver of any dispute.  

Some of our work is billed by our professionals on an hourly basis. We may charge a non-hourly service fee for certain services.

Our rates and fees are adjusted periodically, usually near the first quarter of each calendar year. Our current rates will be reflected on each bill. If Client declines to pay any increased rates, Fitch Even will have the right to withdraw from representing Client. 

Our time may include the time we spend on telephone calls relating to Client’s matters, including calls with Client and other parties and attorneys. The legal personnel assigned to Client’s matters may confer among themselves about the matter, as required and appropriate. When they do confer, each person will charge for the time expended, if the work done is reasonably necessary and not duplicative. Likewise, if more than one person attends a meeting or other proceeding, each will charge for the time spent. Fitch Even attorneys will charge for waiting time and for travel time, both local and out of town, unless the attorney is working on matters for another client while waiting or traveling. 

Fitch Even will incur various costs and expenses in performing legal services under this Agreement. Client will pay for these disbursements in addition to the hourly fees. Disbursements advanced by us may include patent office fees, document processing and duplicating costs (including printing costs for multiple copies and photocopy costs), third party drawing fees, computerized legal research fees, postage and other delivery fees, travel costs (including parking, mileage, transportation, meals and lodging costs).

For expenses exceeding $1000.00, Fitch Even agrees not to incur such expenses on Client’s behalf without first obtaining Client’s approval, which will not be unreasonably withheld when such service is recommended by us. 

Fitch Even is not obligated to advance disbursements on Client’s behalf, but we may do so as a matter of convenience (e.g. when paying patent prosecution fees or lawsuit filing fees). We will not advance to or on behalf of Client any payment for patent maintenance fees, as Fitch Even does not handle payment of maintenance fees. Also, we generally will not advance disbursements where, in our judgment, Client is significantly in arrears or otherwise presents a credit risk. For significant anticipated disbursements, we generally will ask for advance payment or will ask Client to contract directly with the vendor. 

Should any matter on which we function involve court action or arbitration, or develop into a contested matter, Client may be required to pay fees and/or costs of representation. The losing party may in some cases be required to pay fees, costs, and damages of the opposing party. Any such fees, costs, or damages awarded to the opposing party are entirely the responsibility of Client, and Fitch Even is not responsible for same. 

RETAINER 

Our engagement letter with Client may request a security retainer. Also, from time to time, especially if we anticipate substantial time or cost expenditures, we may ask for a further security retainer. Client acknowledges that any security retainer is not an estimate of total fees and costs but merely an advance for security. Fitch Even’s hourly fees and expenses incurred on behalf of Client will be charged against the security retainer. These funds, as well as any future retainer, remain the property of Client until used to pay for services rendered and will be held in a trust account. Client authorizes Fitch Even to use these funds to pay Fitch Even’s hourly fees and other charges as they are incurred. Payments from these funds will be made upon remittance to Client of an invoice. Client agrees to pay any additional balance due upon receipt of Fitch Even’s invoice each month.  

PATENT AND TRADEMARK PROSECUTION 

Should we file a patent or trademark application on Client’s behalf, we will maintain a docket with deadlines necessary to the prosecution of that patent or trademark application. For example, we will notify Client of correspondence received from the Patent and Trademark Office and the related deadline for responding (e.g., notices of missing parts, office actions, and notices of allowance). If Client terminates or if we withdraw our representation of Client, then Client will be solely responsible for these deadlines.

Please note that our representation extends only to the filing of that application. Our representation of Client in one patent matter will not automatically obligate us to file any other application, such as a foreign counterpart, continuing, national stage, or non-provisional application, although we may mutually agree to handle such projects as they arise.  

For issued patents and trademarks, periodic maintenance fees and/or follow-on filings (sometimes referred to as “annuities” or “renewals” or otherwise) are due in the United States and in countries outside the United States. As noted above, our representation does not extend to monitoring or docketing for these fees and follow-on filings. Without limitation, this includes declarations of use or incontestability for trademark applications. Additionally, absent a special arrangement, we will not docket for post-patent deadlines, such as the deadline for filing any reissue application. 

Because Fitch Even does not provide reminders for payment of fees and annuities nor does it process payment of maintenance fees or annuities, Fitch Even recommends that Client retain a professional provider of this service. Client understands that any introduction of Client to a professional service provider is done as a courtesy and that Client is responsible for retaining the professional provider.  

From time to time, we may receive from associated firms or from government offices maintenance fee reminders, annuity reminders, or notices of lapse due to failure to pay maintenance fees. The scope of our retention does not encompass processing such reminders or forwarding such reminders to Client, even if we nonetheless elect to forward some such reminders to Client.

Please be advised that the law provides certain deadlines that may restrict Client’s ability to file other patent applications. Examples of these deadlines include, but are not limited to, the following: 

  • For provisional, utility, and plant patent applications filed in the United States, there is a one-year deadline for filing non-U.S. applications that claim priority to the U.S. filing. 
  • For design patent applications filed in the United States, there is a six-month deadline for filing non-U.S. applications that claim priority to the U.S. filing. 
  • For provisional applications filed in the United States, there is a one-year deadline for filing a non-provisional utility application in the United States and non-U.S. applications that claim priority to the non-provisional. A provisional application will not itself issue as a patent. 
  • Continuing applications (such as continuation, divisional, and continuation-in-part applications) in the United States must be filed during the pendency of the parent application. Other countries may have different rules relating to the filing of such applications. 
  • For trademark applications, there is a six-month deadline for filing non-U.S. applications that claim priority to the U.S. filing. 

Please note these deadlines. The scope of our representation does not encompass docketing for these deadlines (though as a convenience, we may choose to remind Client of such deadlines). 

If our firm files a Patent Cooperation treaty (PCT) application on Client’s behalf, it will be necessary to enter the national or regional stage in the countries or regions of interest before a patent will issue. The deadline for national and regional stage entry varies but, in most cases, is at least 30 months from the application priority date. Some countries and regions apply a longer deadline. Some countries apply a shorter deadline, but those countries may be selected for filing via a regional stage entry. The scope of our representation does not extend to include docketing for the various PCT national stage entry deadlines, although we may as a convenience send Client reminders. If we do so, we ordinarily will remind Client only of the 30-month deadline and will not docket for or send reminders for the countries with shorter or longer deadlines. Again, as set forth above, our representation vis-à-vis filing of a PCT application will not automatically obligate us to file any national or regional stage applications. While the PCT application preserves the ability to file in most countries of usual interest, it does not include all countries of the world. 

Client hereby grants Fitch Even a lien on any and all work product, including, but not limited to, pending applications for patents, trademarks, and copyrights, issued patents and registered trademarks, copyrights, judgments, and royalties, that are the subject of our representation. The lien will be for any sums owing to Fitch Even at the conclusion of our arrangement under this Agreement. The lien will attach to any revenue from such work product Client may obtain. The effect of such a lien is that Fitch Even may be able to compel payment of fees and disbursements from any such revenue from such work product even if Fitch Even has been discharged before completion of the matter. Because a lien may affect Client’s property rights, we recommend that Client seek advice of an independent lawyer before agreeing to such a lien. By executing this Agreement, Client represents and agree that Client had a reasonable opportunity to consult such an independent lawyer.

DISCLAIMER OF GUARANTEE AND ESTIMATES 

Nothing in this Agreement and nothing in Fitch Even’s statements to Client are to be construed as a promise or guarantee about the outcome of our legal services for Client.  Fitch Even’s comments about the outcome of a matter are expressions of opinion only.  

For example, if our work includes patent searching, we caution that patent searching is not without uncertainty. References may become publicly available after the search is conducted or could be overlooked during the search for a number of reasons, including limitations on time and scope of search. Further, the filing of a patent application is not a guarantee that a patent will issue or that a patent will be upheld as valid, if challenged. Patent prosecution is an inherently speculative matter. Even if we are successful in obtaining a patent for Client, there is no guarantee that Client will succeed in recouping the costs of the patent through licensing or enforcement activities. Similarly, patent litigation is inherently risky, and it is impossible to guarantee the result of any patent lawsuit. 

At Client’s request, we will provide an estimate of our fees and disbursements for our work. Client agrees that these estimates are non-binding and Client understands that circumstances outside our control or changes in the parameters for the work may cause the actual fees and disbursements to be higher. 

TERMINATION AND WITHDRAWAL 

Client may terminate our representation at any time, with or without cause, by notifying us in writing. Fitch Even may withdraw from representing Client with Client’s consent or for good cause. Good cause includes Client’s breach of this Agreement, refusal to cooperate or to follow Fitch Even’s advice on a material matter, or any fact or circumstance that would render Fitch Even’s continuing representation unlawful or unethical. If we are representing Client before a tribunal, the consent of the tribunal may be required before termination of our representation. 

Otherwise, when we complete the services Client retained us to perform, our attorney-client relationship for that matter will be terminated absent an agreement to the contrary.  Unless we have other matters pending for Client, the completion of the services will terminate the attorney-client relationship between us, and our representation will end when we remit our final invoice. Unless we have a matter pending before a tribunal or agency, our representation of Client also will be deemed to have ended after three months of furnishing no billable services to Client, without the need for further written confirmation.

If we obtain a patent for Client, we will not remain Client’s attorneys for purposes of maintaining or enforcing that patent.

If Client later retains us to perform further or additional services, our attorney-client relationship will again commence subject to these terms of engagement unless we notify Client of a change in terms.

Upon termination, we will return any papers and other property promptly upon receipt of a request for those materials, unless they are appropriately subject to a lien under this Agreement or applicable law. Subject to our document management policies, we may choose to retain our own files pertaining to the matter or case, including instruction letters, notes, internal memos, and work product, as permitted by applicable law.  

The termination of our services will not affect Client’s responsibility for payment of legal services rendered and other charges incurred before termination and in connection with an orderly transition of the matter (including charges, such as copying and courier costs). When Fitch Even’s services conclude, all unpaid charges will immediately become due and payable. 

After we conclude our representation on a given matter, it is possible that changes in laws or regulations, or in factual circumstances, could have an impact on Client’s future rights or responsibilities. Unless we are retained specifically to provide additional services in connection with any such matter, it is agreed that we will have no continuing obligation to advise Client or others in connection with any change in law, regulation, or circumstance. 

CONFLICTS 

It is not the practice of Fitch Even to exclusively represent only one client in a given technical subject matter area. We provide advice to, and engage in litigation for, a broad spectrum of clients, many of which have patents and trademarks and pending or prospective applications. In addition, we have rendered a large number of opinions over time to various clients. Generally, for patent and trademark prosecution matters, Client acknowledges that our representation of more than one client in a given technical field does not alone constitute a conflict of interest. The firm represents a large number of other clients, and it is possible that, during the course of such representation of Client, other clients may seek to assert or protect interests adverse to Client’s interests. These may constitute conflicts of interest which could prevent or otherwise inhibit the firm’s ability to represent such client. As a condition to the undertaking of this representation by the firm, Client agrees that the firm may continue to represent existing clients in the event of a future-arising conflict with Client’s work, and that the firm may undertake to represent new clients having interests that are directly adverse to or different from the Client’s, so long as such representation is not substantially related to work for Client. Specifically, and without limiting the foregoing, Client acknowledges that Fitch Even may prepare patent and trademark applications for other entities irrespective of whether such other entities compete with Client, and Fitch Even may provide opinions for other clients on any of Client’s patents. 

Additionally, we represent a large number of companies with various interests. It is conceivable that from time to time our activities for one client, or for an association of companies, may run counter to the interests or desires of a particular client. Also, the lawyers at our firm frequently lecture and author publications. It is possible that one of our lawyers might take a position that is counter to the general desires of any particular client. We do not perceive any such matters as creating a present conflict of interest; should Client believe that any conflict will arise, please contact us. 

MISCELLANEOUS 

Except as specified herein, this Agreement has no third-party beneficiaries, even including trust or estate beneficiaries, partnership limited partners, corporate shareholders and members, agency principals, Client’s officers, employees, or directors, or any insurers, insureds, indemnitors, or indemnitees. Without limiting the generality of the foregoing, any advice or opinion that we provide is intended only for Client and such advice is not for the benefit of any third party. This is in part to preserve the attorney-client privilege. Any third party to whom nonetheless is provided with access to our advice is not our client and we do not owe such third party any fiduciary duties. 

Our invoices may themselves contain information that is subject to the attorney-client privilege. This privilege may be lost if the invoices are disseminated, and accordingly, we recommend that Client maintain the invoices as Client would maintain other privileged communications. 

Our firm stores many of its client files and electronic messages in electronic form, which includes storage in secure third-party cloud-based platforms. We no longer prepare or maintain paper files. If you have had paper files with us previously, we may discard such paper files within five years after the conclusion of a matter unless you make arrangements with us to return such files to you.

We also use third-party cloud-based platforms in other ways in the course of performing our work. Client agrees that we may store files or portions thereof exclusively in electronic form. This consent extends to original documents received from Client and from others in connection with Client’s files. Unless specifically requested otherwise, we may, at our discretion, digitize and store electronically any such documents and discard the original. We believe that our electronic systems are at least as secure as storage methods used for traditional paper files. Should Client request a copy of Client’s files, we may provide the files to Client in an electronic form. We invite Client to contact us with any questions on the above.

We will communicate with Client using unsecured Internet email unless we mutually agree on a different form of communication. While we believe unsecured Internet email to be appropriate for our representation, such email can be subject to improper access by third parties. Fitch Even shall not be liable for any loss or damage resulting from the use of email transmissions. 

Irrespective of whether Client remains a current client of the firm, we may discard our files, including electronically stored records, in accordance with our normal document retention practices. Our document retention practices generally authorize us to discard the file (including the electronic record) for a particular matter after the matter has been closed for a period of time. If Client wishes to discuss other arrangements regarding the disposition of Client’s files, please contact us.  

We are not obligated to store or archive any files or records for the benefit of Client on a long-term basis. It is conceivable that our representation may result in the generation of any document that constitutes a vital record (such as a settlement agreement or consent decree, or original patent document, or other document that is required by law to be maintained, or that would be reasonably necessary to establish a right or a defense to a claim). Because we will discard any of our own copies of such records after conclusion of representation, we recommend that Client make appropriate archival arrangements. We will not retain physical or paper trademark specimens.

We will treat Client’s information as confidential and, where applicable, legally privileged, subject to the rules of ethics and Client’s agreement to disclose such information. Our clerical staff will have access to Client’s information contained in our files, as will the provider of third-party platforms used to store and manage records. In light of the security and confidentiality obligations that are in place regarding our staff and the third parties, we do not view our staff’s ability to access such information or the use of cloud-based platforms for messaging and document storage as a breach of confidentiality or privilege. 

It is conceivable that our representation of Client may cause us to become involved in litigation or a litigation-like proceeding with a third party. For instance, we may be served with a subpoena or asked to testify about our dealings with Client. We will first consult with Client as to whether Client wishes to supply the information demanded or assert the attorney-client privilege to the extent it may properly be asserted.

We may be compelled to comply with a request from a court of competent jurisdiction, such as a subpoena. In some cases, we may agree to spend time cooperating with Client or Client’s attorneys. Irrespective of whether Client is then a client of the firm, Client agrees to reimburse us for our costs and to compensate us for our time, at our then-current hourly rates, for complying with these obligations or otherwise cooperating. This provision is for the benefit of the attorneys of Fitch Even, and this is the sole third-party beneficiary provision of this agreement. Should we comply with any court-ordered discovery or cooperate with Client with respect to any such third-party proceedings, such efforts would not constitute the provision of legal services and would not cause Client to become a client of Fitch Even unless already a current client. 

Fitch Even is an Illinois limited liability partnership. Unless superseded by the jurisdiction of the state of practice of any individual attorney, this Agreement will be governed by Illinois law.

Fitch Even may require that any disputes arising out of this Agreement or the provision of legal services will be arbitrated under the then extant rules of the American Arbitration Association. Any such dispute will be arbitrated in Illinois. Client shall not assign any cause of action arising out of this Agreement or the provision of legal services by Fitch Even and agrees that any purported attempt to assign such cause of action shall immediately extinguish same. 

After the fact of our engagement becomes known as a matter of public record, we may advise other entities who may wish to hire us of the fact that Client has engaged us, and we may publicize for promotional purposes any successful results that we obtain on Client’s behalf to the extent that such results are a matter of public record. 

Neither party shall be liable in any way for failure to perform, or delay in performing, its obligations under these terms and conditions if the failure or delay is due to a cause outside the reasonable control of the party that has failed to perform. In the event of any such occurrence, that party must notify the other as soon as reasonably practicable. 

If Client is retaining us in connection with a third-party dispute, or if a third-party dispute should arise on any matter relating to our representation, we recommend that Client consult with Client’s insurance carriers to investigate possible coverage for the costs of litigating the dispute and/or any judgment entered. We in fact recommend this as a general matter when facing any third-party dispute. Failure to do so may result in denial of coverage. We further recommend that Client investigate other possible sources of payment for such dispute, for example, any contractual indemnification obligations. Unless expressly so agreed, Client is not engaging us to investigate the existence of any insurance coverage or any third-party indemnification sources, and Fitch Even is neither opining on the scope of any available insurance nor representing the client in notifying insurers of claims, or in any negotiating or settlement of claims. 

We further note that, as a general matter, upon initiation or contemplation of a third-party dispute, Client likely has an obligation to preserve documents and other evidence that may be relevant to the dispute (including e-mails, electronic files, notes, design information, sales data, etc.). For this reason, any document destruction policies need to be suspended in such event. Depending upon the circumstances, a court or other tribunal would be empowered to award sanctions for failing to preserve documents and other evidence that may be relevant. 

These terms and the terms of our individual engagement letter constitute the entire agreement between our firm and Client. No other agreement made on or before this agreement will be binding on the parties. This agreement may be modified by subsequent agreement in writing and signed by both parties. 

If any provision of our agreement is held in whole or in part to be unenforceable for any reason, the remainder of that provision and of the entire agreement will be severable and remain in effect.