How much effort to get a software patent?

September 1, 2011 6:16 PM

Software patents: how much work does it take to prepare an application?

I have some software thingies that I'd like to patent (never mind that software patents are destroying civilization). How many man-hours will it take to prepare an application? This would include examining current software patents to understand what they look like.

My preliminary research suggests that I can do almost all of it myself and would probably hire a patent attorney/agent for a few hours work to polish it.

I know it's hard to generalize about these things. I'm looking for an order of magnitude estimate: is this a tens-of-hours sort of thing or a hundreds-of-hours sort of thing?

posted by neuron to Law & Government (8 answers total)

I've done several software patents at my job. This would likely be a tens-of-hours thing based on my understanding. We usually have a 1-hour teleconference to describe the idea, get a rough draft about a week later, do another 1-hour conference, then review two more drafts via email before we submit the final product. Obviously at a company that does over a thousand patents a year, we have some behind-the-scenes streamlining I'm not aware of.

I can tell you that the document the patent attorneys come up with is nothing resembling something I would or could write - the language is arcane, filled with phrases I'm sure are legally important but are otherwise meaningless, and needlessly overcomplicated. I can only assume this is a requirement of the process or they would not need to bother.
posted by 0xFCAF at 7:05 PM on September 1, 2011

The language is arcane, the claims section baffling. If you think its worth patenting, shell out the money and get it done properly by a patent writer/agent/lawyer. I second the tens of hours when someone else is doing the legwork.
posted by captaincrouton at 8:02 PM on September 1, 2011

Remember that if you louse it up, you leave yourself open to losing the patent in a court challenge. If you're going to do it at all, then spend the money and do it right. This is not a time for false economy!
posted by Chocolate Pickle at 8:54 PM on September 1, 2011

Former patent litigator here (not the OP's attorney, of course, and this is not legal advice). Nthing what others have said. Patent drafting is exceedingly difficult and the language used is indeed arcane and deeply unfamiliar to anyone but a patent practitioner.

I've never personally encountered an inventor who created a first draft and then asked an attorney to merely "polish" it. I think this law firm's take is probably right:

We are sometimes asked if the cost of preparing the patent application can be reduced if the applicant prepares a first draft of the application. It is not possible to answer this question in advance, since it is not possible to know whether the draft application which will be prepared by the client will be suitable for use in preparing the final application.

For many draft applications prepared by clients, it turns out to be more expensive for us to fix up the application than it would have been for us to prepare it from scratch. This is not lost on some potential clients, who might ask us to review a client-prepared draft application to arrive at an estimate of the cost involved in making the application suitable for filing. When one considers the extraordinarily varied ways in which a draft application might be flawed, many of which are subtle and take time to find, one may appreciate that simply reviewing an application to arrive at an estimate of the time required to fix it may take as much time as preparing an application from scratch.

There are rare exceptions to the general rule that little or no money is saved through a client's preparation of a draft patent application. One client of the firm of Oppedahl Patent Law Firm LLC has a very consistent track record of preparing applications that are of very high quality and are very close to being in form for filing with the U.S. Patent Office. That particular client probably saves several thousands dollars with each patent application, by preparing a first draft.

In contrast, we have seen draft applications which were not particularly usable; in several cases, we found it more economical for the client if we simply scrap the application and to start from scratch.

Also, please bear in mind that filing the application is only the first step. In order for the application to mature into a patent, continued prosecution (i.e., back-and-forth with the Patent Office) will be necessary. That will take up a lot less time than drafting the initial application, in all likelihood, but it's still something to consider.

As for costs for having an attorney do the whole thing, this guy's table is probably not too far off, but I think most of his simpler categories really aren't viable. Note that he puts software in the $12-15K range. So if you're talking about a rate of $300/hr (probably somewhat on the low end), that's about 50 hours of work.

Also, I would suggest you ask yourself why you want to patent anything. Do you think you can make money? If so, how? It's typically very hard for individual inventors to make money off patents. All a patent does is allow you to prevent others from making, using, selling, or importing your technology. So that means suing people you think are using your technology, or licensing your patent to a company or companies you think might want to. Neither of those are easy.
posted by Conrad Cornelius o'Donald o'Dell at 10:10 PM on September 1, 2011

At my local bike shop they have a sign on the wall that lists the prices of various services, such as aligning a derailure or truing a wheel. At the bottom of the price list it says, "if service partially performed by the customer, add 25% to the above."

Unless you know the lingo and process you will make more work for the attorneys.
posted by dgran at 7:59 AM on September 2, 2011

IIRC, when working on the filing for #6,052,685* we provided the patent attorney detailed descriptions, diagrams, etc. In addition, we spoke with the attorney about the process, described it verbally and answered questions. The attorney created the first draft which we reviewed and adjusted. Then it was filed.

As a side note, the initial filing was declined as duplicate. The attorney asked if we wanted to rebutt (he didn't). I wrote up the rebuttal which was used almost verbatim and we got the win.

*I know you're thinking, "That was you?" Why, yes. Yes it was.
posted by trinity8-director at 10:52 AM on September 2, 2011

In my very limited experience, merely contributing the figures and technical, non-lawyer description was on the order of ten hours. The actual submission was radically different from what we explained (nearly unreadable), and then it was declined as a duplicate. The lawyers went back and argued, and it was granted. It seemed like a lot of very specialized work, not something even a motivated person could teach him or herself in a week.
posted by wnissen at 1:58 PM on September 2, 2011

And yeah, when the prior two commenters describe applications being "declined as duplicate" (or "rejected over the prior art," in patent-ese — aka "already invented"), that's exceedingly common. In fact, it's pretty surprising when the Patent Office accepts an application immediately. Applications are virtually always rejected at least once, often many times.
posted by Conrad Cornelius o'Donald o'Dell at 3:11 PM on September 2, 2011