Patents · Legal

What are some ideas for applying for patents on a small budget?

Shingai Samudzi

May 23rd, 2016

It's about time we got around to protecting our IP.  Normal going rate for a patent lawyer is out of the question.

What are some things you have done to get patents without spending money you didn't have?
You’re ready to turn your idea into a business. But how do you protect it from competitors and copycats? In this course, an experienced patent attorney explains the different types of legal protections to help you determine which is best for your business.

Alex Chan Co-Founder at DataNovo, Inc.

May 24th, 2016

Having been a patent examiner and a patent prosecutor before started practicing exclusively as a litigator for the past decade, I offer you the following advice:


(1) Never hire a cheap patent agent/attorney. Treat it like you are looking for a co-founder. Creativity, not regurgitation, is what you should pursue in patent drafting. Any qualified patent attorneys can regurgitate what you have invented or written in your white papers. The challenge lies in the attorney's keen ability to envision nuances in your space and provide enough written support and disclosures to cover them. This skillset is even more critical if the relevant space is over-crowded with competing inventions and obvious variations. A well-written patent, therefore, is one that could carry you through the next 20 years of technological advances; one that doesn't become obsolete before you pay your first maintenance fee. There's little incentive to pursue a short-stint or "stale" patent; the cost-benefit analysis simply doesn't add up. What most applicants desire is a patent that would still be relevant in that space now and decades beyond. With a low budget, a patent attorney has little incentive to help you conceive all of such nuances. Most patent attorneys work under the billable hour structure. The proverbial best-bang-for-the-buck model does not work in the patent space.


(2) Never draft the patent application yourself.76% of the pro-se applications become abandoned before issuance (compared to 35% of "represented" applications). This invalidation rate is even higher, actually much higher, for patents written by non-patent lawyers. I could not recall a patent written by a pro-se applicant who has successfully survived patent litigation. A poorly drafted application might put a dent on your bank account in the short term, but a poorly drafted patent could cause collateral damage to even a well-run business for years to come.


3) Provisional application is strategically useful and commercially advantageous if and only if it offers complete and unequivocal written support for the subsequent utility application. Otherwise, the provisional application is effectively meaningless (as it provides no legal recourse for you should the priority date be challenged). Most well-executed companies and businesses generally approach the provisional application in the same way as a utility application (i.e., draft it with a full-blown spec, figures, and a set of claims). This particular approach ensures that there's little to no dispute in litigation as to the written support for the patent disclosures. If your intent is to file a provisional application with some kind of hand-sketched, chicken scratch diagrams or description, please let me counsel you against doing so. Patent examiners are highly trained on spotting priority issues. Knocking your priority down gives them a bigger universe of prior art. A poorly drafted provisional gives you no leverage during prosecution. In that case, you should consider filing a utility right off the bat.

Mark Lemley William H. Neukom Professor at Stanford Law School

May 23rd, 2016

The Nolo Press "Patent It Yourself" book is pretty good. You can also defer some of the cost of a lawyer by filing a provisional patent application, which buys you a year before some of the larger expenditures. But a lot depends on why you want the patent. If your goal is just to announce "this is my space" to competitors or funders, the existence of the application is as important as how it is drafted. But if you hope to license the patent for revenue or think you might have to sue to enforce it, it is definitely worth spending some money now to do it right. Mark Mark A. Lemley William H. Neukom Professor, Stanford Law School Director, Stanford Program in Law, Science, and Technology Senior Fellow, Stanford Institute for Economic Policy Research partner, Durie Tangri LLP co-founder, Lex Machina Inc. mlemley@law.stanford.edu If this email were legal advice, it would be followed by a bill.

Rob G

May 23rd, 2016

If you want a valuable patent (or at least have a shot at one) then you need to bite the bullet and pay for professional help in the right spots. If you just want to say you have a patent pending or even a few issued patents then the costs go down substantially. the difference between a valuable patent and wall paper is the thoroughness of the application, the understanding and knowledge of your market and the quality of the claims and an understanding of how patents get invalidated and how the legal games are played. that, unfortunately, takes an experienced lawyer. Good patent attorneys are absurdly expensive. Realize going in that you likely will never know if your patents have value or not and if you will ever get a return on your investment until someone writes you a check which rarely happens.

Do as much as you can yourself. I would not advise drafting your own claims. hire an experienced patent agent/attorney for this. I would not respond to office actions on my own - have your agent/attorney do this. It is beyond absurd and an obvious nod to the law profession, how arcane patent language and the patent process is, but you are not here to reform the patent process so you need to play the game the bar association has put in place. Go as slow as you can to ease cash flow. Start here: spend time at the USPTO.gov website and read lots of good applications to understand the "language" of patent speak. this doesn't take long. Not that big companies always know what they are doing, but they usually have patent attorneys on staff and spend the $$ on outside firms to draft high-quality patent applications/claims. You are going to use their applications as templates for yours. Find 1 or 2 granted patents applied for by a reputable company or at least assigned to a large company (think IBM, Cisco, Microsoft, etc.) and write your own application using the 'language' of these sample patents as a template. Take this to an EXPERIENCED agent or attorney who can show you that they have experience prosecuting patents and litigating patents and defending their applications on review. The application process is not the expensive part. the expensive part is paying the attorney to argue with the examiner. Realize that the examiners job is to say "no". Your attorney's/agent's job is to show the agent whey they are wrong for saying "no". This process goes on until one of you gives in or you modify your claims. The more you water down your claims the less value they have. You want claims that are broad, but not so broad they run the risk of being invalidated. This is a balancing act that only an experienced attorney will understand. Luck also plays a roll. good luck.

Anne Li Life Sciences Patent Litigation Counsel, Crowell & Moring LLP

May 23rd, 2016

The easy solution is to contact a patent AGENT. There is a list on the USPTO website. Pick someone where the price of living is low - like Iowa. If you do software, then pick someone in Huntsville, AL. You get the idea. A fraction of the cost to file for patents compared to an attorney.

Nikhil Singhal Experienced Technology Executive, Technical Advisor, Agile Coach and Leader

May 23rd, 2016

I have used equity and small token payment 

Jeffrey Gross Managing Member of intellectual property firm, Entrepreneur, P/T Musician

May 23rd, 2016

There's some v valuable advice above; I can't really add to it.  I would just say if you want a good solid patent, it's like structural engineering: unless you're a structural engineer, don't design the house you want to live in.  I can recommend a firm called Gordon & Jacobson in Stamford CT (I have no relationship w/ them) - my impression is their prices are on the reasonable side.  Beyond that, I agree the provisional app can be a good way to go.

Selvan Rajan

May 23rd, 2016

File a provisional patent which will cost less than $500 to buy one year time before filing non-provisional one.

Anonymous

May 24th, 2016

No way around it, they cost a lot, take time. From Bruce

Michael Meinberg Teacher (iOS Development) at The Mobile Makers Academy (A Hack Reactor School)

May 24th, 2016

You should certainly file a provisional patent.  It's kind of like a "patent placeholder" - holding your idea for you for a year without the expense of a full patent.   It costs about $600 and can be done through LegalZoom quickly and easily.

Joel Williams Entrepreneur at EZBadge

May 24th, 2016

Unless you are a big company, it is really hard to get the attention of a "good" patent attorney, in addition to being expensive. You will probably wind up with an associate and the attorney will "look it over".    I can recommend an agent  Nick Ulman at nupat.com.  Worked with him on two patents that I think are pretty solid, both granted with only one rejection.  (I work as an expert witness in patent cases, so I do know a bit about patents.)