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Anyone have experience getting software patents?

5 points by ratsbane ↗ HN
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).

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.

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.

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:

- 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?

Thanks in advance for suggestions.

  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

15 comments

[ 2.6 ms ] story [ 86.0 ms ] thread
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.

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.

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).
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
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.

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 th...