Employees of the Public Works Department ("Department"), using County resources and on County time, have developed a unique device to assist them in the day-to-day operations of the Department. It is expected that the device, if patented, could be marketed and sold to other entities. Under federal law, patent rights lie in the inventor, in this case, the Public Works employees. The Department is interested in pursuing an agreement with the employees, under which the County will pay the costs of pursuing a patent and employees will assign all patent rights to County.
To obtain a patent, the County must utilize the services of a patent attorney admitted into the Patent Bar. Due to the specialized nature of patent work and the infrequency of this type of work, the Office of the County Attorney does not have patent law expertise in-house.
It is anticipated that the process of obtaining a patent with national and international reach will take approximately three years and cost the County up to $100,000. This amount would include the costs for the patent application and attorney's fees and costs. The written agreement with outside counsel will be for a term of three years with two optional one-year renewals and contain a cap of $100,000. The decision whether to pursue a patent will be made, and costs paid, on a step-by-step basis. The attorney fee rate is $400 per hour.
Information regarding the firm's experience with intellectual property is attached as Exhibit 1.
|