As authorized by the Board of County Commissioners by action on June 6, 2017, the Office of the County Attorney (“Office”) engaged the law firm of Peretz Chesal & Herman, P.L. (“Peretz”), to provide outside counsel patent law services. In March 2018, the Office received notification that the lead attorney assisting the County in this matter was leaving Peretz and joining the law firm of Fowler White Burnett, P.A. Because the lead attorney has been the primary counsel providing patent advice to the County in this matter, the Office recommends continuing the County’s engagement of this attorney, and, therefore, his new firm, Fowler White Burnett, P.A.
To provide legal services in connection with obtaining a patent, the attorney must be registered to practice before the United States Patent and Trademark Office (“the Patent Bar”). Due to the specialized nature of patent work and the infrequency of this type of work, the Office does not have an attorney in-house who is admitted to the Patent Bar.
The process of obtaining a patent in the United States, as well as in other countries, is estimated to take approximately three years and cost up to $100,000, which includes costs for the patent applications and patent counsel’s fees and costs. This item, if approved, would authorize the Office to negotiate and execute a new agreement with Fowler White Burnett, P.A., for a term of three years with two optional one-year renewals, with a maximum expenditure of $89,000. The lead attorney’s rate is $400 per hour.
To date, the engagement of patent counsel for this matter has incurred fees and costs with the Peretz law firm of approximately $11,000.
Information regarding the firm’s experience with intellectual property is attached as Exhibit 1.
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