Patent Office Hell - Anyone like to help?

[jav6454]

Hi, I am trying to apply for a patent, but I have no idea where and how to start. I thought maybe the MacRumors community may help.

Well, I have read a bit on it and according to people it is a lengthy (2 year) project that requires you to invest quite some time and money into. I have no problem spending the $ knowing my IP will be fine. However, I have no idea how and what to file (except I know I am looking at a Patent for Utility).

Any care to shed any light?

 

[balamw]

That's why there are folks who specialize in this. They're called patent attorneys. Consult one.

If you really have IP worth patenting the attorney's costs are easy to justify.

As a rough ballpark the cost to file in the US with the help of a decent patent attorney is in the $10-$25K range.

B

 

[mac88]

Definitely contact a patent attorney. Do some checking and make sure they are reputable. Good luck with the process!

 

[jav6454]

Problem here a patent attorney charges waay to much for a consult. So, I am trying a DIY approach.

 

[balamw]

Problem here a patent attorney charges waay to much for a consult. So, I am trying a DIY approach.

Ask yourself this question before you proceed any further. "How am I going to make money with this patent?".

Even the most expensive patent attorney I deal with is ~$600/hour, others are closer to $250. If an hour of attorney's time is too much for your budget you probably should not be considering filing a utility application it in the first place.

Your only real DIY alternative is to essentially develop the skills of a patent attorney yourself, which is not an easy, cheap or quick task. Read lots of patents, learn the language, etc...

The best middle ground is to file a provisional patent application ($250 fee for the filing for an individual/small business) and try to shop that around to interested parties to get the funding for a utility application. The problem is that without the help of a patent attorney your provisional application will be weak. It won't have the right language and all of the right pieces for it to be truly useful.

If you really think you have something and still want to DIY, NOLO makes some good products, books and software for leading you through the process.

http://www.nolo.com/legal-encyclope...ssionid=EB6E961E83FF8623D6034F2B4BA953D6.jvm1

EDIT: Another very important thing you need to do is to make sure you know what the "state of the art" really is. This does not mean what current products do, but what other people have filed as patent applications and published in one way or another. You can get some of this by searching in http://www.google.com/patents , but you will need to do a formal patent search before you file a utility application again, not cheap.

B

 

[jav6454]

Ask yourself this question before you proceed any further. "How am I going to make money with this patent?".

Even the most expensive patent attorney I deal with is ~$600/hour, others are closer to $250. If an hour of attorney's time is too much for your budget you probably should not be considering filing a utility application it in the first place.

Your only real DIY alternative is to essentially develop the skills of a patent attorney yourself, which is not an easy, cheap or quick task. Read lots of patents, learn the language, etc...

The best middle ground is to file a provisional patent application ($250 fee for the filing for an individual/small business) and try to shop that around to interested parties to get the funding for a utility application. The problem is that without the help of a patent attorney your provisional application will be weak. It won't have the right language and all of the right pieces for it to be truly useful.

If you really think you have something and still want to DIY, NOLO makes some good products, books and software for leading you through the process.

http://www.nolo.com/legal-encyclope...ssionid=EB6E961E83FF8623D6034F2B4BA953D6.jvm1

EDIT: Another very important thing you need to do is to make sure you know what the "state of the art" really is. This does not mean what current products do, but what other people have filed as patent applications and published in one way or another. You can get some of this by searching in http://www.google.com/patents , but you will need to do a formal patent search before you file a utility application.

B

Thanks for that. I know my IP is worth it. It's just as a college student it is sometimes difficult to allocate the money to protect ideas. Although, with this in mind. I am shifting some of my resources to this now.

 

[balamw]

Thanks for that. I know my IP is worth it.

How do you know that without a complete picture of the state of the art?

NOTE: As a student you also need to be careful that the university doesn't have some claim on your IP. I know that is an issue in some schools. All universities have their own IP offices. This could be a plus, if the university could be convinced to foot (part of) the bill...

B

 

[jav6454]

How do you know that without a complete picture of the state of the art?

NOTE: As a student you also need to be careful that the university doesn't have some claim on your IP. I know that is an issue in some schools. All universities have their own IP offices. This could be a plus, if the university could be convinced to foot (part of) the bill...

B

I am a bit careful when it comes to my IP. My university has no knowledge of it, and I don't think they will. As for, how can I prove it's worth it. Well, if it was already out there, I'd be hearing it all over the news on how energy problems (electrical) are over.

Trust me, simple but never done before. As for my university having an Patent Office, I wish. After Katrina, we lost many things, and I think PO was also lost.

 

[jav6454]

Another very important thing you need to do is to make sure you know what the "state of the art" really is. This does not mean what current products do, but what other people have filed as patent applications and published in one way or another. You can get some of this by searching in http://www.google.com/patents , but you will need to do a formal patent search before you file a utility application again, not cheap.

B

I read that over USPTO and they say to clearly label everything and tell what it does and if there is something similar to explain clearly why x and y are not the same and how y uses different design and purpose as x.

 

[balamw]

I am a bit careful when it comes to my IP. My university has no knowledge of it, and I don't think they will. As for, how can I prove it's worth it. Well, if it was already out there, I'd be hearing it all over the news on how energy problems (electrical) are over.

Just because they don't know about it now, does not mean they do not have a valid legal claim on it if you were a student at the time you made the invention. They will definitely know about it if your patent application is successful, because that is the point of patenting. Publishing, to provide temporary exclusivity for your invention.

Trust me, there is far more in the files at the patent office than ever sees the light of day outside its hallowed halls, especially in the area of energy. Even when you needed a working model, the patent office was deluged with perpetual motion and near perpetual motion machines.

B

 

[FX120]

Good luck.

The patent process is horrifically complex and drawn out, which is why it warrants paying someone upwards of $500 an hour to deal with it.

Keep in mind that the fees associated with submitting a patent are to the order of several hundred dollars on their own.

There is no cheap way to get a patent.

 

[balamw]

I read that over USPTO and they say to clearly label everything and tell what it does and if there is something similar to explain clearly why x and y are not the same and how y uses different design and purpose as x.

At least buy and read the $30 "Patent It Yourself" from NOLO, and read it cover to cover.

Yes, but even understanding what the related prior art is requires some translating of "patentese" into normal language. So for you to compare to the "prior art" you need to understand the prior art.

Here's a typical process for any of the patent applications I've been involved with.

Write an internal disclosure, do an initial patent search and decide that we want to bring in outside counsel.

Engage outside counsel. Explain the idea to the attorney, and work with them for 1-3 months to put together the specification and claims of the patent application. This takes a while because the application has two parts, the specification which describes the bounds of the invention and the claims which define it more explicitly. Defining the independent and dependent claims and how they relate to prior art can be a lengthy process.

18-24 months later, get a first office action from the patent office. No matter what your invention is, this will usually be an outright rejection of your claims, and this is where the attorney really earns his keep if he (or she) is good. Without the attorney involved from the beginning, your patent adventure is probably over. In the best case scenario, you end up with one or two very narrow claims allowed.

The response to the first office action is critical and is a legal argument with the examiner. A successful response will usually lead to a second non-final office action, the examiner may introduce more arguments as to why some of your claims are to be rejected. If your response didn't sway him from his initial opinion he can make this second office action final.

By the time you get a final office action (up to 3 years after the filing) you really need a good attorney to craft a new argument to continue examination.

B

 

[nanofrog]

Thanks for that. I know my IP is worth it. It's just as a college student it is sometimes difficult to allocate the money to protect ideas. Although, with this in mind. I am shifting some of my resources to this now.

OK, for the moment, lets say the IP will stand up in the end. If you're short on funds, and can't take the time to do it yourself, you need to get an NDA drawn up (still the stupid legal docs), create a proposal, and find interested parties (potential investors). Give a nice presentation.

If they think it has merit, you may be able to come to some agreement, and the funds they ante up will go towards the Patent Application and further development.

Either way, you've a lot to learn, and even more work to do. Please don't take this as a discouragement. Far from it, but it's not a quick or simple process. It's rare that the initial application is accepted, and almost always has to be re-submitted. I tend to think of the first application as a rough draft sent in for a critique that you pay quite a handsomely sum for. Read the "red ink" upon it's return, and fix it (assuming it's still worth it).

NOTE: As a student you also need to be careful that the university doesn't have some claim on your IP. I know that is an issue in some schools. All universities have their own IP offices. This could be a plus, if the university could be convinced to foot (part of) the bill...

B

Definitely. If it was based off of research done in their labs, and especially if it's part of a project (i.e graduate work), the Uni usually has the option to Patent it first (though it usually becomes a split).

 

[Abstract]

Wirelessly posted (Nokia 5800 Tube XpressMusic : Mozilla/5.0 (SymbianOS/9.4; U; Series60/5.0 Nokia5800d-1/21.0.101; Profile/MIDP-2.1 Configuration/CLDC-1.1 ) AppleWebKit/413 (KHTML, like Gecko) Safari/413)

Get a patent lawyer. It would be an even bigger waste of money to file without understanding the nuances of the language used in patent applications. You may read a certain line in a patent and think nothing of it when, in reality, it actually said a lot. Of course, you may never know it and just read it. I'm not trying to imply that you can't read or write well. However, writing patents is very specific. It would be a shame for a college student to throw money away because he wanted to take a shortcut.

 

[balamw]

OK, for the moment, lets say the IP will stand up in the end. If you're short on funds, and can't take the time to do it yourself, you need to get an NDA drawn up (still the stupid legal docs), create a proposal, and find interested parties (potential investors). Give a nice presentation.

That's exactly why the first step is to ask the question "how does this patent make me money". Almost anything you do, especially in the energy field and because you have no money now, will require partners with more money than you. You will either be starting your own company or licensing to someone else. Try to figure that out up front and put those wheels in motion.

Identify someone with money and (under NDA) give them a high level pitch and have them pay for a patent firm to do a formal search. Then, if there is hope remaining get them to finance the patent application itself. You'll get a partner, but you will get a much more solid position if your IP is really worth anything so you will make more money off of it.

B

 

[jav6454]

Thanks for all those comments. They in no way discourage me, I know what I am getting myself into. Long, but f it works, success.

By the way, my work is not from Graduate school, nor is it from anything in university labs. It is simple @ home done.

Balamw I got Patents for Dummies incoming, and I was planning that if everything is complicated, I'll just throw in NDAs. Thanks for the great help.

 

[Gregg2]

Hi, I am trying to apply for a patent, but I have no idea where and how to start.

Well, I have read a bit on it and according to people it is a lengthy (2 year) project that requires you to invest quite some time and money into.

Or maybe longer: http://www.jsonline.com/news/opinion/53728162.html

... I know what I am getting myself into.

Really? http://www.jsonline.com/watchdog/watchdogreports/65911387.html

And you might not get what you're after...
http://www.jsonline.com/business/53367952.html

Not trying to discourage you, just give you a dose of reality. The Patent Office is a mess. Legitimate ideas are rejected regularly, or the delay is such that the patent becomes worthless. Good luck. You'll need it.

 

[nanofrog]

That's exactly why the first step is to ask the question "how does this patent make me money". Almost anything you do, especially in the energy field and because you have no money now, will require partners with more money than you. You will either be starting your own company or licensing to someone else. Try to figure that out up front and put those wheels in motion.

Identify someone with money and (under NDA) give them a high level pitch and have them pay for a patent firm to do a formal search. Then, if there is hope remaining get them to finance the patent application itself. You'll get a partner, but you will get a much more solid position if your IP is really worth anything so you will make more money off of it.

B

It's a long, drawn out process indeed, especially past this point, as the "question" has to be re-evaluated at each step to determine whether proceeding is valid IMO. Prior Art is a big part of it, as you mentioned earlier. Many applications die over that aspect.

 

[Skuman]

I'm not sure if this has already been stated, but get every person you tell/show the idea to to sign a non-disclosure agreement. Without doing so, your ability to even start down the process may be curtailed.