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Thread: Any patent lawyers willing to offer some advice/

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    Any patent lawyers willing to offer some advice/

    My wife and I have an idea that we want to patent. We think we have a unique idea and searching through patents hasn't turned up anything close (although I may not be searching correctly). The idea is based on combining existing technologies in an innovative way to make a useful product.
    As an analogy for our idea, say the current state of the art is the really old school computers that have no monitor or mouse or anything, just a printer. I come up with the idea to add a television to the computer to give it a display. Say I also want to give the computer a power switch because right now you just plug and unplug the computer to turn it on and off. I am also going to add a mouse and speakers and internet access. All of these things exist independently(even the internet somehow without any computers currently hooked up to it) but until now they haven't been combined in one unit.

    My questions:
    1. Since each step is a unique idea, would you need to file seperate patents for each part? Say for instance that I try to patent the entire combination, does that entitle someone else to do bits and pieces of my idea without violating my patent?
    2. in the example above, there are hundreds of ways of switching the computer on and off, but no one has ever done it before on a computer. How specific would I need to be on the mechanism for doing so? There is commercial technology out there to perform the function in several ways but the idea itself is unique, do I need to list as many ways to perform the function as I can find or is it enough to patent one or a few ways to perform the function?
    3. At what point do I need to hire a patent attourney?
    4. What are the advantages of filing a provisional patent versus filing a non provisional application?
    5. How much money does the idea need to generate to justify hiring a patent attourney? I know this can very greatly but any rough ideas of the costs associated with hiring a patent attourney and filing for a patent would be greatly appreciated.

    I think that's all my questions for now. Thanks in advance.
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    Re: Any patent lawyers willing to offer some advice/

    Quote Originally Posted by detltu View Post
    My wife and I have an idea that we want to patent. We think we have a unique idea and searching through patents hasn't turned up anything close (although I may not be searching correctly). The idea is based on combining existing technologies in an innovative way to make a useful product.
    As an analogy for our idea, say the current state of the art is the really old school computers that have no monitor or mouse or anything, just a printer. I come up with the idea to add a television to the computer to give it a display. Say I also want to give the computer a power switch because right now you just plug and unplug the computer to turn it on and off. I am also going to add a mouse and speakers and internet access. All of these things exist independently(even the internet somehow without any computers currently hooked up to it) but until now they haven't been combined in one unit.

    My questions:
    1. Since each step is a unique idea, would you need to file seperate patents for each part? Say for instance that I try to patent the entire combination, does that entitle someone else to do bits and pieces of my idea without violating my patent?
    2. in the example above, there are hundreds of ways of switching the computer on and off, but no one has ever done it before on a computer. How specific would I need to be on the mechanism for doing so? There is commercial technology out there to perform the function in several ways but the idea itself is unique, do I need to list as many ways to perform the function as I can find or is it enough to patent one or a few ways to perform the function?
    3. At what point do I need to hire a patent attourney?
    4. What are the advantages of filing a provisional patent versus filing a non provisional application?
    5. How much money does the idea need to generate to justify hiring a patent attourney? I know this can very greatly but any rough ideas of the costs associated with hiring a patent attourney and filing for a patent would be greatly appreciated.

    I think that's all my questions for now. Thanks in advance.
    First: I am not providing legal advice. My recommendation would be to talk to a patent attorney about your invention and your legal options. It is possible that your disclosure of the invention outside of a confidentiality agreement or to an attorney (or an offer for sale of the invention when it is 'ready for patenting') could prevent you from obtaining foreign patent rights, and it could also start the one year time bar (35 USC 102b) for filing an application within the US.

    I would prefer not to discuss the specifics of your hypothetical because any discussion could potentially be misleading. Suffice it to say that (1) a unique combination of known technologies can be patentable in the US if it would be nonobvious to one of ordinary skill in the art and may be patentable in other countries if it satisfies "inventive step", (2) you can disclose multiple inventions in a single application, but if you claim them in a restrictable way (in the US) or nonunified way (outside the US) you may ultimately have to pursue the different inventions in divisional/continuation application, but the first application describing everything could establish a priority date for the other applications. There could be advantages to filing separate applications from the start, however, so just because you can do it this way doesn't mean it is the best way to do it.

    The advantage of filing a provisional application over a nonprovisional application is that, under normal circumstances, you reduce your upfront costs, but you will likely end up paying a little more over the long run. With that said, the most conservative option is still to draft the application with the same level of description and thought that you would put into a nonprovisional application in order to ensure that you satisfy the written description requirement of 35 USC 112 in view of the Federal Circuit's holding in Ariad. A provisional application that does not satisfy this requirement may not be effective for providing you a priority date of your provisional application. Some patent attorney's may offer to help you file a simpler provisional application, but this may ultimately not provide the protection you need. Nevertheless, because the formalities are easy to satisfy, it is possible to do one of these without hiring a patent attorney. I do not recommend this, particularly if you intend to disclose your invention outside confidentiality or offer it for sale before filing a nonprovisional application. Please note the provisional application will never in itself mature into a patent. You must file an application (U.S. nonprovisional or PCT application) claiming priority to the provisional within one year of the filing of the provisional in order to maintain the priority date.

    The costs of a patent attorney will vary depending on (1) geographic market, (2) the complexity of the invention, and (3) the experience of the attorney. I would guess you are looking at between $3000 to $10000 to get on file (not knowing anything about the technical nature of the invention). You can almost certainly get a nonprovisional application (or a very good provisional application) drafted for less than $5000 if you are willing to shop around. Provisional application costs will vary depending on how much effort goes into preparing it. Wouldn't surprise me if you could find someone do a provisional for less than $1000, but I would question the quality of what would be done for that price. The costs, however, do not end with filing. You will incur later fees for reporting of official communication, analysis of office actions, as well as fees for responding to official communications (such as office actions) during the prosecution of the application. These fees will vary depending on the patent attorney's prevailing billing rate, and how many rounds of office actions you get from the patent office. Assuming you get to an allowance, you will then have to pay the issue fee (around $1000) and maintenance fees at 3.5, 7.5, and 11.5 years.
    Last edited by Guisslapp; 06-14-2011 at 08:05 PM.
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    Re: Any patent lawyers willing to offer some advice/

    I mostly agree with Guislapp, especially about the provisional application. I don't terribly disagree with his cost figures (I believe he works for a firm). I can do a simple application for about 2000-3000 including filing fees but not drawings. I've been doing it as a sole practitioner for about 25 years and I unequivocally say you don't get what you pay for with a large firm. I have rarely charged over 3000 for an application with the exception of complicated chemical process patents. The cost is more related to how well you have disclosed your invention. The less work the patent attorney has to do the less it will cost. Time is also a factor. The backlog in the patent office is getting to be frustrating. It typically takes two-three years to get an examination and hear back.

    All that said, I would ask what are you going to do with the patent? Selling or licensing a patent is very difficult. You will find very few patent attorneys who can find someone for you. All those companies who advertise on TV will charge you an arm and a leg and you won't get any real help. I actually got one to refund money to one of my pro bono clients.

    If you want to contact me my email is richard.moseley@sbcglobal.net.

  4. #4
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    Re: Any patent lawyers willing to offer some advice/

    Quote Originally Posted by Guisslapp View Post
    First: I am not providing legal advice. My recommendation would be to talk to a patent attorney about your invention and your legal options. It is possible that your disclosure of the invention outside of a confidentiality agreement or to an attorney (or an offer for sale of the invention when it is 'ready for patenting') could prevent you from obtaining foreign patent rights, and it could also start the one year time bar (35 USC 102b) for filing an application within the US.

    I would prefer not to discuss the specifics of your hypothetical because any discussion could potentially be misleading. Suffice it to say that (1) a unique combination of known technologies can be patentable in the US if it would be nonobvious to one of ordinary skill in the art and may be patentable in other countries if it satisfies "inventive step", (2) you can disclose multiple inventions in a single application, but if you claim them in a restrictable way (in the US) or nonunified way (outside the US) you may ultimately have to pursue the different inventions in divisional/continuation application, but the first application describing everything could establish a priority date for the other applications. There could be advantages to filing separate applications from the start, however, so just because you can do it this way doesn't mean it is the best way to do it.

    The advantage of filing a provisional application over a nonprovisional application is that, under normal circumstances, you reduce your upfront costs, but you will likely end up paying a little more over the long run. With that said, the most conservative option is still to draft the application with the same level of description and thought that you would put into a nonprovisional application in order to ensure that you satisfy the written description requirement of 35 USC 112 in view of the Federal Circuit's holding in Ariad. A provisional application that does not satisfy this requirement may not be effective for providing you a priority date of your provisional application. Some patent attorney's may offer to help you file a simpler provisional application, but this may ultimately not provide the protection you need. Nevertheless, because the formalities are easy to satisfy, it is possible to do one of these without hiring a patent attorney. I do not recommend this, particularly if you intend to disclose your invention outside confidentiality or offer it for sale before filing a nonprovisional application. Please note the provisional application will never in itself mature into a patent. You must file an application (U.S. nonprovisional or PCT application) claiming priority to the provisional within one year of the filing of the provisional in order to maintain the priority date.

    The costs of a patent attorney will vary depending on (1) geographic market, (2) the complexity of the invention, and (3) the experience of the attorney. I would guess you are looking at between $3000 to $10000 to get on file (not knowing anything about the technical nature of the invention). You can almost certainly get a nonprovisional application (or a very good provisional application) drafted for less than $5000 if you are willing to shop around. Provisional application costs will vary depending on how much effort goes into preparing it. Wouldn't surprise me if you could find someone do a provisional for less than $1000, but I would question the quality of what would be done for that price. The costs, however, do not end with filing. You will incur later fees for reporting of official communication, analysis of office actions, as well as fees for responding to official communications (such as office actions) during the prosecution of the application. These fees will vary depending on the patent attorney's prevailing billing rate, and how many rounds of office actions you get from the patent office. Assuming you get to an allowance, you will then have to pay the issue fee (around $1000) and maintenance fees at 3.5, 7.5, and 11.5 years.
    Quote Originally Posted by Houston Techsan View Post
    I mostly agree with Guislapp, especially about the provisional application. I don't terribly disagree with his cost figures (I believe he works for a firm). I can do a simple application for about 2000-3000 including filing fees but not drawings. I've been doing it as a sole practitioner for about 25 years and I unequivocally say you don't get what you pay for with a large firm. I have rarely charged over 3000 for an application with the exception of complicated chemical process patents. The cost is more related to how well you have disclosed your invention. The less work the patent attorney has to do the less it will cost. Time is also a factor. The backlog in the patent office is getting to be frustrating. It typically takes two-three years to get an examination and hear back.

    All that said, I would ask what are you going to do with the patent? Selling or licensing a patent is very difficult. You will find very few patent attorneys who can find someone for you. All those companies who advertise on TV will charge you an arm and a leg and you won't get any real help. I actually got one to refund money to one of my pro bono clients.

    If you want to contact me my email is richard.moseley@sbcglobal.net.

    Thanks for the excellent info guys. This is just the kind of information I am looking for. I understand that these aren't hard and fast numbers, I was just looking for ballparks like you provided. I am still doing some research on the idea and I am discovering some pieces of the technology have in fact been patented (not a huge shocker there). The info on selling or licensing a patent is very interesting. I suspect that is why the portions of the invention that I have found related patents on are not in production to my knowledge. There are also some liability issues I forsee with aspects of the invention that may be causing problems. Regardless I think I have a lot more research to do before I move forward.

    Thanks again for the info!
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