Patent attorney

Recomendation for a startup friendly Business Process Patent Lawyer - for provisional patent filing

Celu Ramasamy FX Artist/Developer at DreamWorks Animation

April 9th, 2013

Hi Guys,

I'm looking to file a business process patent(provisional for now) for the product that I'm working on right now.
I have a written description and some drawings outlining the steps already made. I just want to make sure that the provisional is worded correctly so that I don't run into unintended consequences later on when i file my non provisional.

Anyone had good experience with patent attorneys specializing in "software business process" patents that don't cost a ton of money (at least for the provisional stage).

Any recommendations greatly appreciated. Thx.

Carlos Herrera

April 9th, 2013

Hi Celu - 

Provisional patent applications are not published to the public and allow a year before they expire or you convert them into an actual patent application. This is a good approach for software, as it allows you to get your provisional patent badge and application number without going through the hassle of filing an actual patent. This is important since software patents are taking upwards of 3 years to process, so chances are your tech will be obsolete before you even hear back from the patent office (we've submitted 9 software patents in the last 3 years, 0 responses from the patent office).  Submitting a provisional patent allows you to put a time-stamp on your invention, without revealing the actual contents of your invention. In general, I submit my provisional patents with as little information as possible, since only you really know what the content is.

If you are just looking to get the "patent pending" status or an application number, I would suggest either filing the provisional patent yourself or using a service like legalzoom. - The practical first step.  

Once you are ready to write your actual patent application, I would focus on solidifying your claims and finding a patent attorney who it willing to craft the application for you (it's a mind-f*%@ if you try to do it yourself). In terms of finding a good attorney (yes there are bad ones), the one question I would ask an them, is how involved they are in writing the patent. The best ones, are very hands on and for all intents and purposes 'write them for you' based on your provided artifacts :). Prices we've paid have ranged fro 5k - 10k. 

Carlos

Anonymous

April 9th, 2013

I can also recommend Beacon IP. They're in Boston, MA and offer competitive rates for startup patent searches. Try contacting Pallavi Singh <pallavi@beaconip.com>

Christopher Burrage MBA Candidate at Columbia Business School

April 9th, 2013

Hi Celu, Reach out to Lenny Kravets at lkravets@panitchlaw.com[image: Look up in Salesforce]. He is a great Startup IP Attorney with reasonable rates. He also blogs at www.startupsip.com.

John Knapp Entrepreneur, innovator, leader, developer

April 9th, 2013

I've only ever filed utility patent applications but now that the USA has switched from "first to invent" to "first to file" I can say provisional applications will become much more important. (File early, file often.) And since we no longer have the one year grace period to decide if your invention is commercially viable (and fundable) you probably should file provisional applications for each promising iteration of your invention. Related to that, remember that now that the "America Invents Act" (aka Patent Reform) has become law, if you disclose your invention to anyone - investor, customer, friend, anyone - before you file a provisional or utility patent application, you lose your right to file. Some background information here and here.

Chris Murphy Director of Corporate and Legal Affairs at E2open

April 10th, 2013

Be sure to take a few minutes and read the attached (by an attorney) on how you can save a LOT of money during the process by following a process that will make things much clearer for both you and your attorney.  Best of luck!



Dave Korpi President, Take 5, Inc.

June 14th, 2015

I want to help you to come to understand that in order to file ANY patent that you will be well advised to become profoundly aware how the system works. BTW: We are a "First to File" country now, meaning the FIRST to file IP gets the rights, should they be granted. You can ALSO get Patent Pending for a mere $65... Read on...

You NEED to know this is rather simple! If you invented it the filing of a provisional application for patent is MUCH easier... You also need to know that you are NOT required to use an attorney and you do NOT need a prototype. What you DO need to do is to adequately explain how to "build" your invention to one skilled in the art. In exchange for that, if you are granted a patent, you have the "right" to sue others for infringement!

I have a bunch of patents on crazy geeky engineering things and a bunch of provisionals and I help folks get their own. I am always surprised at how complex folks make this process seem... 

Did you know you can get Patent Pending from the USPTO for $65? 

Know why the USPTO, part of the Federal Government allows YOU to start a patent for only $65? 

They want YOU to be a zillionaire so they can tax you and YOU stimulate the economy AND they have bragging rights for your art and our Countries health. They ALSO know that MOST useful inventions come from folks like YOU, sitting in that chair right now, come up with novel inventions and they KNOW you are scared and think it is too costly. 

Their solution? Tell you it oncly costs $65.. But they "forgot" how to tell you HOW to do that. AND they DO NOT require you use a lawyer, EVER, for ANYTHING. The REASON you want a patent lawyer is they are HIGHLY SKILLED in the art of drafting claims and claims are NOT required in a provisional... 

When you file a non-provisional you NEED NEED NEED a very good lawyer who is highly skilled in YOUR particular art. They are rare... And hard to find.. And sometimes VERY costly. When you draft a proper provisional you can reduce the cost as you have done much of the work.. 

Why would you need a Provisional Application for Patent fast? 

Some companies will NOT entertain looking at an "invention" if it does not have some sort of IP in place. The REASON is they do not want to expose themselves to potential lawsuits brought on by folks claiming they copied your stuff! You can ALSO have folks sign an NDA as well for further protection. 

When you file a Provisional you have the very same "Patent Pending" you have on a non-provisional. The DIFFERENCE is you only paid $65 to get this AND you MUST, within 365 days file a follow on non-provisional that claims preference to your provisional... 

FREQUENTLY a provisional covers MORE than one invention! And this is OK because if you "hook up" with folks with sufficient funding your association with them will likely result in multiple patents that THEY pay for and you have the benefit of royalties or whatever arrangement you create. 

NOTE.. Lawyers hate provisionals because there is no "money" in it for them because there are no "Office Actions" on a provisional. As such they will insist you go straight to a non-provisional which, on a new invention, is foolish especially if the time to draft one is long enough for some other smart clown to file a provisional tomorrow on YOUR invention and OWN it because the USA is a First to File country! 

And... NO... you do NOT need a model or a prototype, that ended in the 1800's! 

If you have a VIABLE invention then it is a good idea to protect it. 

Do you know about the Provisional Application for Patent? It only costs $65 and was designed by Congress to give individual inventors a chance at bringing their inventive ideas to market easily. It is SUPER EASY to do.. 

There are LOTS of ways to move forward with your invention. I would caution you away from paying ANYONE ANYTHING until you COMPLETELY understand what and when they will give you what you want. 

DO NOT pay anyone $5,000 to start your invention... DOI NOT PAY invention companies until you COMPLETELY understand exactly what they will do for you. I have talked to way too many folks who have spent from $1800 to $5000 to get nothing. 

Not to worry.. there are ways to get what you want ant YOU can do it yourself, for the most part, and it is fairly easy to do everything. Just know the USPTO if a branch of the Federal Government and the Federal government wants YOU to be a millionaire so you can pay taxes. Therefore, the Federal Government, via the USPTO, makes it EASY to file a Provisional Application for Patent. Extremely easy. 

Here is my site about the Provisional Application for Patent. If you are interested you can watch these Videos that show how it all works.. 

http://provisionalpatentvideo.com/patent... 

Here is where you can get the FREE NDA you should use.. Use this with EVERYONE! Scroll to the bottom. 
http://provisionalpatentvideo.com/ 

If this is your FIRST patent and you are not filing with a company name and you, or ANY of your Co-Inventors, did not make more than $150,000 LAST year AND the rights in the application been NOT been promised or licensed to a non-micro-entity then you likely qualify for the 75% reduction in USPTO fees with the Micro-Entity-Status at the Patent Office. 

See this USPTO FAQ page. 
http://www.uspto.gov/patent/laws-and-reg... 

Fee Schedule: 
http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule  

Here is an overview on how to do a Patent Search: 
https://www.youtube.com/watch?v=y5KeiRa2FNQ
 

Bill Kelley

April 9th, 2013

Hi Celu!

I am very impressed with Kyri Tsircou. His firm, Tsircou Law, is here in LA. Very smart guy and definitely understands software and process (that's what he researched for us). Give him a call. 323.660.9916

Dan Rubinsky VP, Senior Product Manager at Bank of the West

April 9th, 2013

Celu, I filed a business process patent through a patent attorney acquaintance of mine. I had a description of the process and some use cases. Very reasonable price and when I eventually turned it over into a full patent he allowed me to use some of the cost of the provisional patent to the full patent.. I'm not sure if he's taking clients now but he's worth reaching out for a discussion. His name is Adam Boscovich and his e-mail is adamboskovic@yahoo.com You can let him know that Dan Rubinsky gave you his information. Good luck, Dan

Celu Ramasamy FX Artist/Developer at DreamWorks Animation

April 9th, 2013

Thanks a lot for the quick recommendations guys. Will follow up with them, This really helps. Thx.

Anonymous

April 9th, 2013

Jason Webb is as startup friendly as they come. I am working with him. He is faculty at CEO Space, and so works primarily with start-ups.
jason@webbiplaw.com
866-273-0388