

Anyone have experience getting software patents? - ratsbane

I'd like to hear from people here who've had first-hand experiences in applying for software patents or otherwise dealing with them or who have thoughts on the matter.  I read PG's article on the subject(2).<p>I've always been a bit suspicious of software patents - perhaps not all, but the silly ones(1) are what everyone talks about - but now I find a situation where patenting a technique (method?  what's the right word?) that I first implemented a few years ago might be a good idea in a specific current situation.<p>Also, it seems like everyone is getting them so I may some day get a bill from someone whose patent I've accidentally infringed, so there is a defensive angle to the thing.<p>I've read various articles(3)(4) about how to do this and I've printed out some software patents and read through them, trying to figure out how to state my application.  I've got an appointment with an attorney/patent agent Monday afternoon (I picked her out of a list because she majored in math) but I'm wondering:<p>- Really, how much should I expect this to cost?
  
- How can I do it for less?
  
- How long does it take until patent is awarded?
  
- Can I license the method to someone before the patent is awarded?
  
- How do you choose a patent agent/attorney or do you even need to?  (I know you don't HAVE to, but is it a good idea?)
  
- What am I not aware of that I'll later wish I had known about?<p>Thanks in advance for suggestions.<p><pre><code>  1) http://www.gnu.org/philosophy/amazonpatent.html 

  2) http://www.paulgraham.com/softwarepatents.html 

  3) http://www.uspto.gov/web/patents/howtopat.htm 
  4) http://en.wikipedia.org/wiki/Software_patent</code></pre>
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benb
I have been through the process of successfully filing and completing a patent
(more than one actually) as a very small company and even a single person at
the start. I would agree with the comment about how useful they are for small
companies. I could drone on about stats, but the short of it is that 1 out of
100 patents will ever be picked to go to court on contingency (where you do
not have to pay the fees). Otherwise it is, on average, 2 million to get to
court against a foe. The flip side is it costs the opponent hundreds of
thousands to fight even going to court. I would not do it unless your plan is
to simply license it out and that is the primary business plan as opposed to
bringing it to market. You will not be able to fight a company with deep
pockets with a patent unless you have a firm that is essentially your partner.
In other words, while I think it is worth having patent protection, it is not
something you should think provides much unless you succeed in the market.

Second, if you do it - ignore anyone that states you should do it yourself.
The short of it is this - you will write a worthless patent. The claims will
be malformed and even something as simple as the description can be destroyed
by choosing one word over the other. With technology, I would make an attempt
and then take it to a lawyer to proof to save money. The Nolo book is okay and
there are others, by Aspen publishing that will help. I would expect to spend
up to 20k... keeping in mind every rejection will cost you more money (you
will likely get rejected at least once). Every step has fees in addition to
the lawyer fee. I would highly recommend Software Patents and Drafting Patent
Licensing Agreements from Aspen publishing as a start. The Nolo book is okay,
but even if you ask the author (which I have) about the specifics with tech,
it is only cursory. Even if you think you can pick up things such as the
wording, it is highly unlikely unless you want to put in a lot of time...
there is a very specific language to it.

Per licensing, I would recommend the book above. Specifically regarding your
question - sure you can license your tech before it is patented (granted), but
if they are infringing you cannot compel anyone to until it is granted. In
other words, it is good to file the patent before you are seeking people to
license your product, but you cannot have any teeth until you do.

Choosing a patent lawyer is somewhat tough. I would start looking at the
patent list of firms. I do not have the link handy, but Google it. Every year
there is a list of the top 100 or 500 firms listed by patents granted. __*One
thing to keep in mind though before you go into detail, if you have any for
certain competitors, I would ask them up front if they have a conflict of
interest with any of them.

One thing that REALLY concerned me is this. You stated that you implemented
something a few years ago. If this is true you may no longer be able to get a
patent on it... or file it. You MUST file either a patent application -
provisional or otherwise - within a year of anyone knowing about it. Thus, if
you created something and people knew about it more than a year (people
outside of the inventors), you are not able to get patent protection. That is
a hard line law. As the post above stated, filing a provisional gives you an
extra year BUT you have to file something within a year of it being public
otherwise it is over.

As of type, yes, always choose methods if possibe and if you have code, it is
recommended to file with that. Anything that strengthens your case.

Finally, while you may think it is easy to just get a patent, it is not. The
average time it takes to get through the process is years.... It takes over 2
years just to have the intial viewing of it and then it goes from there. Many
average ones take 5 years to go through. In that same vein, while many like to
point out how there are many silly ones, it is not entirely true in this
sense. What seems obvious as an overall concept may not be when you get down
to the nitty gritty with the actual method of how it is done. Further, if you
do end up sneeking one through that is silly, it will be worthless and you
will have done nothing but waste your time and money. Unless you are the 1
person that gets a company to back you, likely for other reasons.

I would be happy to answer anything more. Sadly, for small businesses or micro
sized startups, there seems to be very little real info that leads to a lot of
wasted time and money.

------
noonespecial
I think that small startups should ignore patents altogether. They cost a lot,
detract from your mission (coding) and provide very little.

You will not have the resources to prosecute should someone use the patent to
steal your idea.

The patent will provide no defense for someone else claiming that you
infringed on theirs. You won't have the $ to mount a defense anyway.

Worse still, the fact that you considered patents may give an aversary the
ability to claim triple damages by implying that because you were "patent
aware" you must have willfully infringed.

Just file copyrights on your code as proof you were there first and leave
patents to the MS's and Google's of the world. Use your time and effort to
build your product.

I'm not an expert of any kind, just my 2 cents.

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wayt
I am a former patent lawyer (EE), and more recently an entrepreneur who has
founded and sold s/w businesses for large sums. If I were you I would forget
about patenting your idea and focus on building something people want. Getting
a s/w patent will take you about 4 years and probably cost you $20K-$60k to
prepare, file, and argue to issuance. I'd forget about it, and focus on
solving big problems that real people have.

~~~
Shooter
I also tend to think of patents as a necessary evil...a defensive measure in a
world gone crazy. I've secured a few BUSINESS METHOD patents where software is
a large part of the mechanism, but I've never tried to secure a patent solely
based on software.

TIME: The USPTO has an expedited examination service if you qualify.
Otherwise, you may be looking at 4-6 years. If your claim is very complicated
or is disputed it can take much longer. I just read an article about a company
that got their patent approved after 18 years! The USPTO is supposedly
changing some of their processes, which will theoretically speed up the ordeal
a bit.

COSTS: wayt's cost estimate is more accurate than most. Most patents cost much
more than people initially budget. I've spent as much as $225K getting a
patent...and I've fortunately never had to defend one from a major company,
which could skyrocket your costs into the millions.

Eusman's suggestion about getting a provisional patent is a good one if you
think your startup will be on firmer financial footing within the year. You
should note that you have to have not only implemented your software etc., but
you have to have overcome any objections from the USPTO or
disputes/counterclaims from others before the year is up. A surprisingly small
number of people successfully do that. Most people are just giving their
competitors a cheat sheet.

PPAs are cheap, though, so I would almost view them as using options to
protect a portfolio. Most expire worthless, but if you need it you'll be
thankful you paid for the insurance. The words "Patent Pending" on your
business plan and press releases can also go a long way in some circles. Just
a PPA can secure that.

~~~
ratsbane
Thanks - everyone commenting so far has added something useful. One thing I
didn't mention in the initial question - can you recommend/not recommend any
specific patent agent/attorney? ratsbane at gmail

------
rms
The main thing you are paying the lawyer for is to write the patent for you.
If you're willing to write it yourself, mostly, and just consult with a
lawyer, it's a lot cheaper. Look into the Nolo books on the subject. You can
buy them or download them free on eMule.

~~~
Shooter
Nolo books are great.

But your suggestion that he download copyrighted LEGAL ADVICE books from
eMule? That's ALMOST funny.

You should check out their Criminal Law Handbook, rms...the ebook is only
$29.99 ;-)

~~~
rms
:) Hey, I'm just saying it's possible. Hopefully.

------
pixcavator
\- Really, how much should I expect this to cost? >> A few thousands.

\- How can I do it for less? >> Agents are a cheaper alternative to lawyers.

\- How long does it take until patent is awarded? >> At least 2 years, as far
as I know.

\- Can I license the method to someone before the patent is awarded? >> Yes.

\- How do you choose a patent agent/attorney or do you even need to? (I know
you don't HAVE to, but is it a good idea?) >> They should supply you with
links to patents they have written (or at least applications). Try to figure
out if they are any good. It's a crap shoot..

Do you need one in the first place? I read all the books, then wrote the
patent myself including claims. I thought the claims looked fine but when I
took it to a lawyer he had to rewrite them. We had a lot of back and forth and
now they look dramatically different. The point is if you decide to do it, do
it right.

\- What am I not aware of that I'll later wish I had known about? >> You don't
know the future, so you may never use the patent...

~~~
ratsbane
Thanks. I had looked into using an agent; a friend who has a few medical
device patents suggested his agent but I've left several messages over the
last week and the agent hasn't called back yet. I'm thinking I should
interview two or three attorneys/agents before settling on one?

What sort of rates/amount should I be prepared to pay the agent/attorney?

~~~
pixcavator
I didn't actually interview anyone in person (good idea, of course); I had to
do everything over the internet. So I looked at what they had online. The one
that picked had extensive contributions to forums, etc. Another reason was
that the price was on the lower end of the range (4K or so).

------
eusman
something very important is to be careful to describe your software as a
mechanism or a method and not as algorithm (mathematical formulae cannot be
patented), that functions as a mechanism.

You can either give source code or flowcharts. I am not sure if it's ok with
object code.

Have a look at the ICQ patent and other known patented software, to see how
claims should be written.

Applying on your own online at uspto.gov or epo.org could really cost you not
much.

Or try legalzoom.com.

A lawyer will be helpful if you don't know how to write your own claims.

*update

If the software is an early version you should consider filling a provisional
patent, which costs less. This would give you 1 year to perfect it. Though you
should be careful because if your description in the provisional is out of
scope and doesn't match with the patent application it would not server any
purpose.

------
tocomment
"live by the sword, die by the sword." although they also say "don't hate the
player, hate the game".

So I don't know. I'd be very uncomfortable even patenting an actual mechanical
device let alone an algorithm.

~~~
ratsbane
I agree. I've benefited enormously from unpatented open-source software and
methods, as has everyone reading this. However, as I said initially, there are
specific compelling circumstances in this instance. Would it be non-evil if I
pledged to license the patent(s) for free or for a nominal amount, say a
dollar, to anyone else who offers his patent collection under the same terms
or who otherwise contributes to OSS?

~~~
tocomment
At least you realize the ethical issues. That's a start. I think making a
pledge like that would certainly lessen the damage. Or perhaps just donate
some of your profits to the EFF or other org.

And whenever you talk about having patents as part of your business model,
perhaps mention the ethical dilemnas involved lest you inadvertantly inspire a
future Microsoft or SCO.

