Anyone have experience getting software patents?

#1

Post by ratsbane » Sat, Oct 27, 2007, 1:09 AM UTC

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

Re: Anyone have experience getting software patents?

#2

Post by eusman » Sat, Oct 27, 2007, 3:04 AM UTC

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.

Re: Anyone have experience getting software patents?

#3

Post by noonespecial » Sat, Oct 27, 2007, 7:08 AM UTC

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.

Re: Anyone have experience getting software patents?

#4

Post by rms » Sat, Oct 27, 2007, 7:52 AM UTC

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.

Re: Anyone have experience getting software patents?

#5

Post by pixcavator » Sat, Oct 27, 2007, 3:05 PM UTC

- 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...

Re: Anyone have experience getting software patents?

#6

Post by wayt » Sat, Oct 27, 2007, 3:21 PM UTC

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.

Re: Anyone have experience getting software patents?

#7

Post by ratsbane » Sat, Oct 27, 2007, 4:47 PM UTC

pixcavator wrote: post #5

- 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…

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?

Re: Anyone have experience getting software patents?

#8

Post by tocomment » Sat, Oct 27, 2007, 5:03 PM UTC

"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.

Re: Anyone have experience getting software patents?

#9

Post by Shooter » Sat, Oct 27, 2007, 7:00 PM UTC

rms wrote: post #4

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.

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 ;-)

Re: Anyone have experience getting software patents?

#10

Post by Shooter » Sat, Oct 27, 2007, 7:15 PM UTC

wayt wrote: post #6

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 ha…

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.