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Filing a patent

Advice and strategy for the little guy

9:01 pm on Apr 19, 2003 (gmt 0)

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My partner and I have formed a US company to provide an internet service. We believe that the technology we have developed is novel and could be used extensively, therefore we want to protect it with a patent.

At this point I have had a patent lawyer with online/technology experience read through a technical summary of our product, and he believes that we have a strong chance of getting a patent provided of course there are no prior claims. This lawyer comes recommended by my current employer who used him to get their patent done.

We have done our own searches and have found no prior patents that cover our technology, but I am going to have a professional search done just to be sure. The professional search will be the first time we have spent any money on a patent, but from then on in it will be all $$$.

Our company has yet to raise any outside money, and I have decided that I would rather file our patent application first for a couple reasons: 1. I want to protect our technology ASAP and raising money is going to take awhile. 2. I feel that we will be more comfortable and in a better position trying to raise money knowing that we have a filed patent application.

I am leaning with avoiding a provisional application because it would still need to be reviewed by a patent lawyer and ultimately cost more money in the long run.

I have been told that a good patent lawyer with online experience charges $300 per hour, and that I should expect it to cost me $10k to cover the entire process.

Has anyone out there been through this process and offer any advice on this? Do these costs seem reasonable? How much of the cost is in preparing the application and how much comes in the review? How long does it take to prepare a patent application? Any other advice on this would be greatly appreciated.

1:04 am on Apr 20, 2003 (gmt 0)

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I have never applied for a patent myself; however, I spent several months writing patent applications themselves for a small firm. I can't go into any specifics, thanks to a wonderful 2-year NDA, but...

In a nutshell, yes, those costs seem about right. I expect $300 per hour is a reasonable rate for a patent attorney; I got a tiny fraction of that writing the actual applications.

Creating an actual patent application is very easy; I used to write two or three a day. I would expect that the largest amount of time and money would be spent on having the application reviewed and researched. The research isn't easy to do, because most often people patent specific techniques, and describe them in as general of terms as possible, so that if you've, for example, found a new way of protecting widget bearings from losing lubrication, you can't just search for patents about "widget bearings", you have to look at "widget lubrication", "bearing assemblies", "nonpermeable membranes", "synthetic lubricants", "cohesive friction in stainless steel", and dozens if not hundreds of other terms and phrases. Found a new way of determining relevancy in search engine results? (we all wish, right?) The lawyer won't just check for search engine-related patents, he (or his paralegals) will be searching for phrases like "database array relevancy", "weighted responses to database queries", "recursive search algorithms", and so on. You get the idea.

Assuming you have all the pertinent details already available in a coherent layout (I just *loved* getting piles of handwritten notes to work from), a patent application can be written in anywhere from thirty minutes to three hours; an hour is about par. (Thirty minutes is probably unrealistic unless you already have a lot of written material you can cut-and-paste from.) The USPO has a guide somewhere, but it's not really helpful. It's often easiest, at first, to download someone else's patent application and follow the outline.

Sorry I can't be of more help, but all I really did was take gobs of notes and produce coherent applications from them.

1:23 am on Apr 20, 2003 (gmt 0)

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Thanks for the information Ankheg. Can you tell me a little more about the process?

From what it sounds like, I hire a patent search firm to make sure the core of my idea has not yet been patented. Based on that, I then go to a lawyer and say I want to file a patent application for X. I hand over whatever documentation I have, and then someone at the lawyer's office would write up an application. Once that application is written up, the lawyer's office then conducts a second search to make sure anything in the application has not been patented yet. That eats up a big chunk of time. Once that is done, the application goes to the USPTO. They then review it, and make whatever objections that have to the application. The lawyer needs to resolve any/all of those objections, and ultimately a patent is issued or denied.

Does that sound right? Also any idea how much of the cost is in the application and how much is in the review?

4:57 am on Apr 20, 2003 (gmt 0)

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cfx - You should know about Nolo Press... They're a local SF Bay Area publishing company that publishes a lot of excellent self-help legal books.

I just did a Google search for nolo press patents. Nolo has a whole introductory Law Encyclopedia section online. Take a look at their Patent & Trade Secrets section here [nolo.com]. They encourage do-it-yourself patent searches and applications.

I also came across this [polysurfacesbookstore.com] page from another bookseller that lists a lot of the Patents and Intellectual Property books from Nolo, including "Patent It Yourself, 9th Ed." and "Patent Searching Made Easy: Patent Searches on the Internet and in the Library, 2nd Ed."

Good luck!

5:18 pm on Apr 20, 2003 (gmt 0)

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CFX: your understanding sounds correct to me, but, as I said, I've only been involved with a small part of this confusing field. I've no idea what the cost of the review could be; IIRC the USPTO's actual fees for a patent application are relatively low, like $75, or somesuch, though a lawyer undoubtedly adds fees on top of that if he does it for you (1 envelope @$3.75, 2 stamps @ $1.29, addressing and handwriting, 1 minute @ $2.25/min, 3 licks of the flap @ $1.09 per...)...
5:02 pm on Apr 21, 2003 (gmt 0)

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Just a bit of warning, according to this Associated Press article [wtopnews.com], the U.S. Patent and Trademark Office is taking up to 2 years to approve or decline patents due to the backlog that has built up. So even after you take the time to do the searches, you probably won't get a response for another 24 months. If you are confident that your patent will be approved (the USPTO has a habit of declining first-time applicants in order to make them prove they really want the patent), decide if you can wait for another 2 years for it to go through or start in on your internet service now.
5:17 pm on Apr 21, 2003 (gmt 0)

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cfx211 - I've been through this. Be prepared for pain. :)

I assume you (or your partner) is some sort of engineer. Your quotes about the initial lawyer's fees are about right.

Here's some advice: US Patents give you a 1 year grace period from the time your invention is public. International patents DO NOT have this grace period. Ie, if you've released your website publically already, you won't be able to get an international patent. As a web technology, this is increasingly important.

The provisional patent protects you there (I think - ask your lawyer).

Next, don't expect your patent lawyer to understand your invention or write your patent application. This will end up costing you far more than $10,000. Probably closer to $30,000-$50,000.

You should essentially use them to correct legal jargon and fix obvious mistakes. They will also write your claims. Buy some books on filing a patent and write the whole thing, documents, diagrams and all, yourself.

Theoretically, patents are designed to protect the "little guy" and you should be able to file a patent without the help of a lawyer. So write it on your own, have it completely finished, and then use your expensive IP lawyer to review it.

Set a cap on the number of hours they can bill. Make it less than your budget, because they will charge you upwards of 2-3K just to stick the bleepingn thing in the mail.

Finally, determine why you really want this patent. Contrary to popular belief, patents are not really "defensive" legal documents. Once the patent is granted, it does very little for you unless you are then willing to pay that same $300/hour lawyer lots of money to sue infringers. There are a lot of patent holders out there right now who can't afford to sue infringers.

Sometimes, the big corps will just buy out your patents to save them the hassle. But many times, they'll just continue to infringe and there's nothing you can do. They have lawyers on retainer and that's what they do all day anyway, and it doesn't really cost them anything (relatively) to file a motion to delay your lawsuit for another year.


PS - Have fun trying to figure out what "non-obvious" means. ;)

6:13 pm on Apr 21, 2003 (gmt 0)

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I have a few patents and they are excellent discussion pieces for a party.

Unless your patent is of great revalation, like the wheel or sliced bread, it most likely will fall into obscurity.

If your invention is a business process, I suggest you review your "patent" very very closely. There have been several large firms who tried to patent things and failed. Having a patent does not mean you do not have to defend it in court. Or you might end up watching someone with more capital taking your idea, changing the "color", and beat you to the finish line. As a matter of fact, you can end up your patent withdrawn, AND fined for knowingly filing a false claim. Ouch.

My suggestion is Contact Open Source Initiative OSI, (<http://opensource.org>) and find out if they have an open source for patents. Albeit you will not be making money on the sell of the patent, but you would be the keeper and maintainer of the basic patent development, and your user/participant base would grow much faster then you can imagine.

7:26 pm on Apr 21, 2003 (gmt 0)

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Thanks for the advice so far. Here is a little more background. Our technology is not yet publicly available, and we are aware of the one year limit on filing once it does become general knowledge.

We want to get a patent for 2 reasons. The first is that our technology will give us a significant advantage over the competition in that we can take the product to places that they will not be able to, and we want to preserve that edge. The second is that this technology can be used outside of the niche we operate in and we will want to try to license it.

Enforcement can be an issue to worry about, but my priorities are building a great product, making sure we have the rights to the technology, getting a happy growing user base, and having sound financials. If I can do those things then either someone will buy us out and they can worry about enforcement or we will have the money to deal with it ourselves.

Once we file the application, we plan on launching as soon as we can so we are not going to be sitting around twiddling our thumbs for two years. Actually after filing the patent application, I am then going to work on raising a few bucks while my partner finishes the product. We are in a low capital business so in my mind the clock is ticking louder for getting the patent application done than raising money.

I have a small vacation coming up, so I will probably be spending a lot of time beachside with the Pressman book. I know that at some point I will need professional help, but I would like to be as informed and do as much of the work myself before getting there.