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How to find a proven/industry-experienced patent attorney for a preliminary patent?

I was wondering whether anybody can share his experiences with me. I understand that it is very affordable to file a preliminary patent by myself but my inner voice is telling me to get a specialist on board in order to be protected. Correct?

11 Replies

ROBERT H LEE
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ROBERT H LEE Entrepreneur
Research Fellow in Law, Science & Technology @Stanford University
There are many resources to file patents on your own, but I do think it's worth it to engage a professional. For a provisional patent, it should only be 2 or 3K. I recommend Ron Rohde, in Mountain View. He used to work for big patent law firms, but now works on his own, and charges less than 50% o firm rates.

ron rohde <[removed to protect privacy]>


Regards,
Robert Lee
Startup Consultant & Investor at SV Accelerator:SVaccel.com
Entrepreneur-in-Residence at Stanford:codeX.stanford.edu
?of Technology & Adventure:facebook.com/HolokaiAdventure
@goldspruce,linkedin.com/in/robertlee1
+[removed to protect privacy] - California
Kevin Rohling
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Kevin Rohling Entrepreneur • Advisor
Co-Founder/VP of Product at Emberlight
I strongly recommend checking out UpCounsel: http://upcounsel.com

It's an online marketplace/community of legal experts and it's a great resource for startups.

-kevin

Richard Rosen
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Richard Rosen Entrepreneur
Founder of FastCall --​> #1 Phone Sales Productivity app in the Salesforce AppExchange
As Robert said, these are called Provisional Patents. You have 1 year from the Provisional to file an application. The "date" of the patent is the provisional filing date. A provisional can be a drawing on a napkin.

My patent attny was in Greece when I filed; he is now in Philippines. He was highly recommended by a friend who is GC (general counsel) at Apple. They both worked at the USPTO a long time ago. It took me three intros to find him.

That said, I'd start by looking local (you are in RD?)
Michael Hoffman
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Michael Hoffman Entrepreneur • Advisor
Incubating a Revolution – Microsoft HoloLens
You can file a provisional patent by yourself if you really want to save money, but no matter what, a professional can help ensure you have good coverage. I happen to have a lot of patent expertise, so it was not a scary prospect for me. For my actual patent filing a year later, I hired a great Patent Agent instead of a Patent Attorney, who did wordsmithing and formatting to ensure it was using the correct terminology and in the correct format. I saved a lot of money using an Agent over an Attorney. I can put you in contact with him if you wish.

The absolute most critical factor for the provisional application is that the detail in your filing contains enough information for "a person skilled in the art" to be able to implement your invention. Its primary purpose is to put a stake in the ground on when the invention was first conceived and/or committed to practice, but you can only claim what was adequately described to implement your invention. Whether or not you plan to use an agent or attorney, to save money, I encourage you to write it up and make your own illustrations before involving a professional. Some notes: Be sure you are consistent in your wording and use as general as possible phrasing to ensure you can claim broad coverage. For example, if your invention is about images, instead of saying "a digital image file", say something along the lines of "an image which can include but is not limited to physical images, photos, scans, artwork, digital image files, videos, holograms and other forms of visual information that exist today or may exist in the future." Then consistently refer to "the image" after that point to reference the original "an image".

food for thought.

cheers,
michael



Kate Hiscox
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Kate Hiscox Entrepreneur • Advisor
Boss at Venzee
Depending on the complexity and your experience, I would consider filing the provisional yourself. For the actual patent filing, use an attorney.
Veronica Allen
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Veronica Allen Entrepreneur
Attorney at Self
As stated above, the provisional patent protects your invention for 1 year after filing while you work on improvements/refinements. There are a number of books that provide useful do-it-yourself guidelines. I think it would be worth your while to at least have a conversation or consultation with a patent attorney who has a number of patents under his or her belt and experience in your subject area.

Steve Nielsen (http://www.nielsenpatents.com/) may be a great person for an initial conversation.

You'll definitely need patent counsel for the next stage (non-provisional), so it would be good to have some familiarity with an attorney or agent as you near the 1 year deadline.
Leena Chitnis, MBA
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Leena Chitnis, MBA Entrepreneur • Advisor
Content & Publication Manager at NetApp
For a provisional, file it yourself with the advice of an agent - you don't need an attorney just yet, unless you can afford one. Patent law is the one of the most complicated segments of law there is, hence the steep hourly fees.

No matter what process you use, this process is going to take you a long time (unless you expedite the filing using the USPTOs expedited process which will cost you more and reduce your filing time down to 6 months). When you file the actual patent, you will need to be able to prosecute it through the system. The USPTO will argue with you on each point of your patent since they will have 10,000 others nearly identical to it. If you are confident you can prosecute on your own, go for it. But this is where most people end up needing an attorney.

The process can take years and cost hundreds of thousands of dollars. Most people don't bother patenting these days. The question no one has asked on the thread is: do you really need to patent? If your innovation is software-based, don't bother...there is tons of good reading online regarding the need to patent nowadays. Often, entrepreneurs are better off just getting to be the first to market, rather than waiting on a patent to be successfully prosecuted and filed.

In sum: if you have the time, money, and you absolutely need to file, do it. If not, just get your product out there and don't worry too much about IP. Like Nike says, "Just do it."

This will probably raise some ire on the thread but my own attorney is now the Senior Counsel (Patent Atty) for Best Buy, and I've been working with him for over 4 years on patenting a new haptic interface for smart phones and tablets. Doesn't make me an expert on law, but it makes me know something about the hassle and egregious costs of getting IP filed which will immediately be copied a few weeks later, here and overseas. Especially overseas.
Michael Hoffman
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Michael Hoffman Entrepreneur • Advisor
Incubating a Revolution – Microsoft HoloLens
Excellent post, Leena!

I see the best reasons to file a patent as some combination of:

1) Increasing your value in an acquisition

2) Building your invention requires crazy amounts of resources and losing your advantage would undermine your motivation to invest (Pharmaceuticals)

3) You truly have something mind-bogglingly unique and useful that you believe will still be valuable 5+ years from now.

4) A defensive maneuver in a game of "Mutually assured destruction" that often leads to cross-licensing in the long run after expensive legal battles because most competitors (particularly in big industries such as smart phones) are infringing on at least one of the other's patents. If you are the only competitor with no patent portfolio, you are at a substantial disadvantage.

I agree that if these concerns don't apply to you, then it may not be a good use of capital. Better perhaps to invest that capital staying ahead of your competitors at a high velocity.

food for thought,
michael.

Leena Chitnis, MBA
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Leena Chitnis, MBA Entrepreneur • Advisor
Content & Publication Manager at NetApp
Thanks Michael!
Rob Gropper
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Rob Gropper Entrepreneur
Director at PetHero, SPC - Member at Eastside Incubator - Principal at Tuxedo Technologies Group
Hartmut, in addition to Leena's reference, i would add "why do you want one?". i would highly recommend that you take some time to chat with entrepreneurs who have gone through the patent process so that you can make an educated decision (and you may have already - not to imply that you haven't) as to whether to spend the time and considerable $$ pursuing patent protection and if so, why. this will help you mange your patent attorney and help them develop a patent strategy. i have 5 issued patents. I cringe when i think about the $$ spent on attorney fees. Anyone can get a patent, the issue is the value of the patent and the reasons, as noted by Michael. My most recent was issued 15 years after application and i did not file a provisional. After 15 years, dozens of office actions and 6 figures in attorney fees i still would not file an application entirely on my own. i would never respond to an office action on my own. I would, however, highly recommend that you dig through some well-written patent applications so you can learn the 'language' of patentese, pick 1 or 2 as a template and draft your own application with exception of the claims - claims language is very tricky... have a good attorney draft claims and review your entire application. for a provisional you may or may not want to file claims. Understand, however, that 364.99 days after you file the provisional you need to have spent the time and money to produce and file your 'real' application. From then forward the patent office will keep you spending money until you either give up or they give in. This goes back to the "why do you want one" question. If you really want a valuable patent you need an attorney who will go toe-to-toe with the patent examiner and win arguments rather than change claim language. But remember, even a well written and 'valuable' patent (you will never know until someone writes you a check or until they are upheld in court) is only a basis to go to court...and pay more attorneys.
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