Commercial Forms

Years ago patent attorneys would build up a collection of frequently used forms, from skeleton applications and assignments to transmittal, IDS, 1449, terminal disclaimer, and other procedural forms. That no longer makes sense. For one thing, there are way too many forms to keep track of, and the patent office changes them all too often. For another thing, many of the forms created in that manner were too specialized to be generally applicable.

The better practice today is to utilize forms from one of the national form companies. The annual maintenance charges are absolutely irrelevant when compared with the time and expense of keeping one's own forms up to date, and the possible cost of using an outdated or otherwise inadequate form. There are several good sources of forms.

Matthew Bender™ markets a form library through Lexis™ that has all the patent forms one would normally need.1 The cost is less than $800, and is comprehensive, intuitive, reliable, and easy to use. The forms are all fully automated with HotDocs® document assembly software, so that all one has to do is enter case or client-specific information once, and it will be automatically inserted throughout the form where that information is relevant.

US Court Forms™ includes patent forms among its more than 70,000 forms. The forms are extremely easy to use, and may be more cost-effective than the Matthew Bender forms for firms that are also involved in litigation. Our office recently switched over to the US Court Forms for most patent work, although we still use PCT Easy™ for filing PCT applications because WIPO gives users a discount for filings submitted with PCT Easy.

Some timekeeping and billing systems have their own forms that are automatically completed using data from the client and matter databases. The problem there is that the forms set is not necessarily complete, and one can wind up buying a full set of forms from another vendor anyway. In addition, most or all of the timekeeping/billing systems that use automatic form generation have other issues that outweigh the convenience of the automatic form generation.