The debate over whether patents are a worthy safeguard or a money sink is long-standing on this site. But given that so many startups are cash poor (as we’ve been discussing over the last few days “here”:http://www.foundread.com/view/zero-cash-plan and “here”:http://www.foundread.com/view/a-zero-cash-case) we want to know, *when a cash-strapped founder decides patent protections are necessary, is it a good idea to try and do the application process yourself?* Do you really need a high-priced lawyer? Or are there other low-cost ways of getting, at least, your “patent pending” docs filed with the U.S. Patent & Trade Office so you have the initial protections you need? Or are self-filed patent docs simply not good enough? Do you really need the “endorsement” of a lawyer, and a marquis lawyer at that?
*If you’ve done this, and have suggestions, please share.*
My startup has hired the marquis patent firm, Fish & Richardson, to handle our patents. (F&R is considered the #1 patent firm in the world.) This is after working with another patent firm, then asking F&R to review their work and they pointed out numerous loop holes someone attempting to work around our patents could use. Although using patent firms is quite expensive, and we are the typical cash poor startup, their experience is quite valuable. Between both patent firms, the sophistication of our description and claims is significantly higher than what we could have done ourselves. Additionally, they handled filing our PCT (international patent) applications across a broad range of international territories.
Do we really need this? I think we do. We’re launching a significant technology with disruptive applications in multiple industries. We’re also aware of at least two, possibly three, other stealth startups working on variations of our main concept. If our early patent filing can block or force license payments from them, that is great for us. Without the patents, they could do the same to us.
I seem to remember that Friendster received a patent on their Social Network business model, and with that they were able to force the other social networks to pay them a royalty. For a company that innovated like they did, I think that it is just for them receive royalties.}
I agree with Blake, patent lawyers aren’t cheap but they are worth it to make sure your patents are enforceable and valuable. Most of what they provide is the ability to write your patent application in such a way as to avoid loopholes but also make it defensible.
However, because of that it’s very important to understand how you expect to use your patents. Will you license the technology? Will you use it to attack the competition? Is it for defense?
Understanding your motivation is critical so that you can run a cost benefit analysis. Patenting for the sake of getting patents is most definitely not worthwhile. However, if it does have strategic value many patent lawyers can help you understand if you should file more than one patent to cover your technology. Such an approach is more cost, but can provide returns depending on your model.}
I have three patents pending, two of which have been in the pending process for more than 5 years. Patents are important, but most investors look at pending patents as lottery tickets… if the patent is granted, it could be big, but otherwise it’s the business model / traction that is most important in current valuation. Getting a patent is hard and it’s been made more difficult by flak that the patent office has taken regarding handing out frivolous patents (i.e. Amazons One Click purchase patent) and recent Supreme court rulings, especially for software or business process patents. My suggestion is that if you can, file a provisional patent application that is as complete as possible on your own, then you have one year to determine if you want to spend the MAJOR bucks(i.e. granted patent search, previous art search, filing fees, etc.) required to get a good patent attorney to tackle it.}
Unknown Founder, since I’m currently bootstrapping my startup idea, your approach sounds very practical. Advice appreciated.}
Whenever I wasn’t sure about potential IP we had developed I would file a provisional patent application. The requirements are very simple and the cost of filing is very low ($100). We paid a patent clerk to take our rough drafts and turn them into nice documents for less than $1000. The provisional application allows you to have a ‘patent pending’ technology or method without the high cost of a ‘patent application’. Before the year is up you then need to determine if what you have is worth spending $5000-10000 to file the actual final application. Nine times out of ten you never file the final application…}
As someone with a couple hobby businesses, in which I’m not working full time, the legal patent methodology is too expensive. That said I’m not sure where to start for a self generated patent. Can someone put down a short “How to …”? It would be good to even know the first few steps to getting started on your own patent application (and of course any “whatever you do don’t do this”).}
We also intend to file a provisional initially. However, the rigor required for the “detailed description” and “figures” part of the provisional is the same as that for the regular patent application. So, we realize that doing the provisional without expert help is risky. We will file for the regular as soon as finances allow us. I would advice the same for all.}
Ram, you are absolutely correct that the more detailed the provisional is, the more likely you’ll be able to claim an earlier invention date once the patent has been granted. That being said, filing a provisional does not in any way stop you from filing a patent later that IS NOT based on the provisional. If your lawyer thinks the original provisional is too weak to support your claims then all you loose is the filing date of the provisional. The earlier your invention date, which the provisional gives you, the less likely you’ll have prior art and commercialization issues (you can’t patent something if you’re already offering it for sale for instance).}
I filed a provisional application using the help of a patent lawyer, who agreed to do it for merely $500, expecting a much larger future fee for the complete patent.
The reason I used an expert is just fear:
I’m pretty good at writing in “legalese”, and prepared what I considered a good provisional application myself, but there’s always this nagging thought that I may have did something wrong and it’s better to have an expert take a look. However, seeing the changes that this expert made (which were meaningless and looked as if he just made them to justify his fee) I decided that in the future I can count on myself for the provisional application.
Another issue was how to submit the application. Though I think I’m pretty good at following instructions, the USPTO website gives instructions that are so unclear, that I was afraid I’d miss something in the idiotic bureaucracy and have my application dismissed on procedural ground. However, having followed what the lawyer did this time, I know exactly how to do it next time.
I have two more aspects of our technology that I intend to submit a provisional application for, and it’s obvious to me now that I’m going to do it unaided. That leaves the price at $100 a piece, definitely worth it even if all you can use it for is tell investors that you’re technology is pat. pending.
Full patent applications of course are a different matter…}
[...] Ok, so if you’re not worried about fundraising, chances are you’re worried about your IP. We’ve written a lot about the question of whether a startup’s precious cash should be spent on the laborious and expensive process of acquiring patents on intellectual property. See, Patents, why Bother? and Question of the Day: Self-patenting. [...]