Lessons Learned Filing a Software Patent
January 10, 2013 1 Comment
Over the years, we’ve filed trademarks and copyrights (which are interesting in their own right), and now I’m having a great time working on some patents for various aspects of our product suite.
I’ll share some information that might be helpful if you find yourself in a similar situation:
- It took some time to find a firm we were comfortable with. Plenty of firms were available (I spoke to ~8), but many of them did not have subject matter expertise. I felt this was important — we’ll see if that assumption proves true. It was also important to me that they were local.
- Ultimately, I received a referral from a friend, and after a meeting and some phone calls, we decided to move ahead. The firm we selected charges $400 p/hour for the partner’s time, and $270 for an associate.
- To prepare for the process, I used resources like NOLO to brush up and get conversant. If you’re like me, you’ll want to be fluent and have a handle on terms like prior art and the overall patent process.
- The first step is getting the patent filed. To do this, the firm provided us a standard questionnaire to kick things off. After some discussion, they created a first draft, which serves as a guide for us to refine with our domain expertise.
- With the rough draft in hand, we’ve been working on the details. Our goal is to do as much of the work as possible, to keep legal costs down. When scheduling phone calls or meetings, I keep things moving at a good clip, which means that I’m always ready with an agenda and specific questions. I appreciate the firm we’re working with, as they are also concise and very clear in their answers.
- So far, our legal costs are around $7k. Our hope is that we end up in the $10-12k range, which will get us to the point where we file with the USPTO. There will be more fees in the future once we get a response.
- I’ve spent about 40 hours on the questionnaire, first draft, revisions, and collaboration with our chief software architect. I estimate he has spent about 10 hours working with me a sentence at a time. Believe it or not, it’s actually a lot of fun!
Lastly, it is important to remember that once filed, it will still take years before you get to the finish line (if you do at all). With a good legal partner, they’ll guide you each step of the way and keep you from wasting your time.
I’ll update this series once we progress a bit further, but in the meantime, what lessons have you learned from filing a software patent? What questions do you have?