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Finding an Intellectual Property Patent Lawyer? 80

KFury asks: "With the recent questions on how to approach a VC firm and how to respond to a trademark cease and desist letter, I thought this question might be relevant. I'm looking for a reliable, relatively inexpensive patent lawyer specializing in Internet patents. With spam coming every week asking inventors to disclose their ideas to fly-by-nite companies, I'm a little concerned about going to just anyone with patent applications. Do any fellow slashdotters have experience with a particular attorney or firm that they can either recommend or warn people away from? All help is infinitely appreciated."

KFury also made this generous offer: "If this story is posted and I go with a firm reccomended by the readership, I will grant (i.e. Andover.Net) 1% of the royalties earned on this patent.", so if we see any money from this, we'll donate it to the FSF or some other charity that you all decide.

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Finding an Intellectual Property Patent Lawyer?

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  • by artg ( 24127 )
    While not a lawyer, I'm sure you'd find that Richard Stallman would be able to provide useful advice.
  • Is there a free DBMS out there?

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    If you need something like Oracle or Sybase, free single-user versions of the software are available for evaluation purposes.

    Go on Freshmeat and look around, and feel free to contact me if you need any further assistance.

    Yours Truly,

    Dan Kaminsky
    DoxPara Research
  • Free patent advice! Just show me your idea, explain how it works, and provide all other sorts of relevant info, and I promise to make money from it!


  • Like minimum of $20k. Never heard of a cheap patent lawyer.
  • Jeff Kuester, an atlanta based patent/IP laywer has collected some info on this very topic:

    Its an excellent resource.
  • Yeah... Agreed....

    Esp. in an area like the Internet and Internet patents, where things are so new and so unproven. Most likely, some of these cases are going to have to go through the courts (ALL the way through the courts!) to get set some guidelines set. Until then, the victor would probably be the people who have the deeper pockets to wave around the high-priced legal team and scare their competitors into submission.

    The only potentially "cheap" thing I can think of doing is to find a legal team who would take the case pro-bono. It would (probably) have to be either an "easy" victory and/or a high visability case (i.e., very hard victory, but landmark-decision type case). It would also require a law practice which is not starving for money but wanting to increase their image in the area of Internet patent law. There are probably a lot of law offices which might be willing to take the right case like this, but again, you are stuck trying to find a law office of QUALITY.

    I don't think I helped much, eh?

  • I suggest someone (a /. moderator, prehaps) will assemble all of the listed lawyers (with their URLs, Price-Tags, Locations and even Reviews by Costumers) into a handy HTML that could be easily accessed in case of need.
    Who knows, maybe someday the to be in the "Slashdot Lawyers RollerDex(_?_)" will be the dream of every young && ambitious law dude...
  • by rootrot ( 103518 ) on Monday November 08, 1999 @01:46AM (#1553809)
    I will not give you any names as it is just asking for trouble. However, a few benchmark issues are worth considering:

    1: As was stated, the patent bar is the highest paid area of the law, IP arguably the highest within the group. There is a self-fullfilling prophecy at work that if the atty is not charging you at least $350/hour he is not worth using. This is great for the atty's as long as people keep believing it. It is possible to negotiate fees and incidentials...DO IT. When all is said and done, attys are service providers. You *will* find an atty that will do what you want the way you want it. Don't buy the general "I'm doing you a favor taking your money" routine.

    2: Do not necessarily limit yourself to your local. In patent more than most other areas you do not necessarily need to be close to your atty. While it is nice and at times convienent, it can also hit you in the wallet. There is great talent around the country, don't limit yourself to a given neighborhood .

    3: This is strictly a personal opinion, but I would focus on small to midsize firms rather than the big guys. From my personal experience I think you will get far better service, generally less multi-client billing issues , and a more flexible structure. Again, remember that the nature of the relationship should be on *your* terms. Far too many people still buy the "lawyers know things I don't know so I should just take the crap s/he dishes out." Negotiate, Negotiate, Negotiate.

    I hope this made a bit of sense, I've had no coffee, the day is young and my brain is not yet on good terms with the rest of me.......


  • $20,000 is a sure way to keep the small people small wouldn't you think It would seem to me that the high cost of obtaining a patent is unconstitutional and prevents any small company from obtaining the protection needed for a new invention.

  • by Hobbex ( 41473 ) on Monday November 08, 1999 @01:52AM (#1553811)
    I'm sorry, and I'll probably get downed for this, but I have to react to all the bullshit I have read in the earlier discussions of this nature (particularly the one about rasing venture capital).

    Do we only support the open source and free software ideals when it fits us, just to conveniently forget them as soon as we have an idea we feel we could profit off? Why are the same people who complain about the way that patents, trade-secrets, and NDA's are stifling the efforts of Linux and other free software, suddenly ready to give advice on how to patent ideas, force NDA's on people, ad infinum? (go back and read the comments in the "how to find a vc" [] thread for more).

    Ask yourself why you are in this game. If all you are after is getting rich you might as well pack up and go home: one idea is never going to be enough (maybe not never, but you might as well play the lottey). If you are in it for the sake of humanity and that of your idea, then you KNOW it is best off if you let it fly freely. I know we are born into the box that patenting your idea and taught to wing-clip our invovations, but this is slashdot for gods sake: we spend our time PREACHING that this is not the way to it.

    Why can't we live up to that?

    We cannot reason ourselves out of our basic irrationality. All we can do is learn the art of being irrational in a reasonable way.
  • by Anonymous Coward
    You may as well ask a bunch of animal rights activists "where can I get a really good juicy steak".

    Software patents are evil (I have 4, but that was when I was young and naive), internet software patents are worst of all. Use source code escrow to prevent some other bastard from filing and then suing you, then just get on with trying to make some money. You can't play the patent game without serious funds backing you up in the first place. Patents are not the friend of the start-up, everything is stacked in favor of the big boys. Have you ever heard of a "patent ring" - you own a valuable patent, but the multinational that wants it takes out patents on all specific uses for the patent, or on all ways of reaching the point where your patent is applicable.

    Lastly, "relatively inexpensive patent lawyer specializing in Internet patents" - yeah, good one. Does anyone know where I can find a relatively cheap, diamond encrusted rolex. If they do, it's almost certainly a fake.

  • You can still play the FSF game and go for a patent. Sometimes the Open Source / Free Software community needs patents. The differnce is that the patent is under the GPL or like license. So you may own a patent, but you may still license it under GPL. This gives the GPL even more credential. I'm not saying that everyone is doing this, and there are probably only a very few that are. But don't go after people who go for patents as being against the idea of the Open Source communit for just the idea that they are going for a patent. How they license it is how to judge. Patents is just another way of showing off what you have done :)

    I personally would go for few patents with the GPL, if it weren't for me working for a company that "owns" my ideas, and any thought I have belongs to them. So I can't patent under anything other than for my company. I colleague of mine was arguing against this to a manager with "If you own my thoughts, then if I think 'I'll go out and kill my family' then you are responsible." The manager didn't like that ;) But this is another topic all together.

    Steven Rostedt
  • Its not the Constitution, its the fact that you need a lawyer to outline specificly what it is, etc. It generally takes a while to get those things done. Patent lawyers are expensive because the only reason why someone should be patenting something to begin with is so that they can make money off of it. If a small company had something legitimate to patent, then it wouldn't be hard coming up with $20k. Hell, I could come up with $20k over night and I'm young.
  • I'm working on one for my masters, and will be out sometime in January. I'm trying to make an Object Relational Database, with full change management control. It's called GOODMIS, I'm doing this with a few others, so it will probably belong to my University (and not the company I work for which is a Good Thing {tm)). I'm working to publish it under the LGPL.

    Steven Rostedt
  • Hell, I could come up with $20k over night and I'm young.

    Yeah, but would it be legal? :)
  • by Anonymous Coward
    how about Dicker & Leaver ... Oh wait .. they're divorce lawyers
  • "If you are in it for the sake of humanity and that of your idea, then you KNOW it is best off if you let it fly freely."

    Sorry, I disagree strongly about this. While I respect GPL (et. al), I know that far many more innovations come into this world by force of personality -- effort and will. In order to get others behind your vision it is neccessary all too often have capital; capital requires intellectual property more often than not.

    Open source doesn't see to this. Look at the empirical evidence. In the past year, just how many innovations have open source efforts made? Propietary?

    Not every good idea is going to be adopted by the open source zealots. (e.g.: a new interface that is friendly for newbies -- geek antithesis). Even if the goals are deemed worthy, frequently the goals are also deemed unattainable. It is the leader, the primary risk taker, and the entreprenuer that MAKE it happen. How many people do you know that are willing to work on something for a couple years that is seemingly more than likely to completely fail? Damn few.

    I suppose I've had the benefit of seeing this entreprenuerial process first hand; I _know_ Open Source simply is not a viable solution in many cases.
  • by poiu ( 106484 ) on Monday November 08, 1999 @02:54AM (#1553822)
    One part was asking about fly by night operators and how do make sure that who you use doesn't steal your idea. Well a REAL IP attorney won't steal your idea. Why?

    1) Because no matter how great your idea is, most times greatness is measured in the execution not the idea.

    2) They see lots of ideas come across their desks all the time. Its their Job & Livelihood. They not going to risk it just for your idea. BTW: Everyone thinks that THEIR IDEA is the one that's going to revolutionize the world. IP lawyers have seen it all. There is truly very little that is completely original.

    3) Repeat after me: its in the execution.


  • by Anonymous Coward
    Is it impossible to do your own patent application for yourself? I looked at the US Patent Office site for independent inventors and it seemed that they are genuinely helpful and the procedure is not too obfuscated. Without the lawyer fees submitting a patent application costs just $400 plus another $600 if it is accepted. So how about it?
  • by crow ( 16139 ) on Monday November 08, 1999 @03:26AM (#1553825) Homepage Journal
    Find out who other Internet companies use for their patents. I'm not sure if the name of the lawyer goes on the patent anywhere--if so, it would be easy to see what sort of work each lawyer does before you hire one. If not, you could call other Internet firms in the area and ask them.

    Either way, I would ask any prospective lawyer to give you a sample of patents that the lawyer has filed and have been approved. Anyone who has been in the business two years or longer should have something that was approved that you could look at.
  • I know this is a US story, but in case anyone is interested, here's a clued-up law firm from Cheltenham, UK:

    Christ opher Davidson and Co []
    2-3 Oriel Terrace, Oriel Road
    Cheltenham, Gloucestershire, GL50 1XP
    Tel: 01242 256418

    They helped me out with my copyright tussle over use of .AU sound samples as part of a review []- which was settled out of court in my favour.


  • I have no personal knowledge of these people - I met a patent attorney at a netwoking event this summer and ended up on his mailing list. It looks like this would be helpful if your close enough to take advantage.

    ---Begin quoted text---

    Wednesday, Nov. 17--Washington Inventors Network for IT Entrepreneurs. A FREE, casual networking event for start-ups to connect with strategic partners and experts in law, marketing and venture capital. The featured speaker is Andrew J. Sherman, an international authority on legal and strategic issues affecting growing companies, and Chairman of the Franchising, Licensing and Distribution Department, and the Washington, D.C. Corporate Practice Group of Katten, Muchin & Zavis. He will talk about "Strategies for
    Protecting & Leveraging Intellectual Property."

    6:00 to 7:30 p.m., Patent Law Building, 3717 Columbia Pike, Arlington. Sponsor: Great Ideas! radio host and patent attorney Richard C. Litman. Free parking and light refreshments. Advance registration required.
    Contact: Lorelei Topp, 1-800-4-PATENT,
  • Kenyon and Kenyon is the best. They represent companies like AT&T and BMG. I run a web site ( which was recently sued by the Grateful Dead for copyright infringement. (Distributing mp3's of their music.) I hired Kenyon and Kenyon to come to my defense and we used some hard ball tactics to convince them to free up their music and continue to allow us to distribute the mp3's. It worked and I was pleased with their service. Kenyon and Kenyon has offices in California, NY, Washington DC and Germany. They are the shit.
  • I'm not sure where you're located, but that does make a difference considering you'll need to find a lawyer that has passed the bar (or is it barr) for that state. Second of all, I work for a lawfirm (needless to say I'm not a lawyer, I just keep the computers running) called McDermott Will & Emery located in DC, and numerous other places. They're a very large firm and they handle IP Law and Patent Trademarks. Now since they are large, they are probably expensive, but I can tell you that our IP dept is large and I'm sure they're very good. Our lawfirm represents many big name clients. I wish you luck in finding a good lawyer as I'm sure it is for a good cause.
  • Yeah, he'd say "patents are bad".

    He'd be right, perhaps, but it would not be useful.
  • I used to think that just disclosing your idea was the best way to deal with it, then it'd be prior art, right?

    But, in the patent-law discussion slashdot had not long ago it was said that you can patent any idea that hasn't been published -more than one year- previously. So, if I publish an idea, there's 12 months in which anyone else can patent my idea.

    Not so good.

    Anyway, the patent -system- is bad, and you can use patents in a bad way, but -having- a patent is not necessarilly bad. The 'I'll cross license with all comers' model basically undermines the patent ystem and forces predatory patent holders to behave, at least with respect to your own company. And a policy of 'anything meeting OSF guidelines for free software can use this patent royalty free, all others need a contract or cross-license' wouldn't be bad either.
  • by Anonymous Coward
    Here in Sweden we have a special government institution called "Svenska Patent och Registreringsverket" (=Swedish Patent and Registration Institution). They handle everything like registration of companies, trademarks and patents AND gives FREE LEGAL ADVICE in these areas (quite limited though and just over the phone, but they can always point you to the right people for help). I'm sure all industrial countries must have an institution like this and I would be very surprised if they don't give free advice on how to file for a patent since it's in every country's own interest that as many patents as possible are given to their own citizens... /Tord
  • In theory, the cost of a patent should be the cost that the US Patent and Trademark Office charges you for all the filing fees. I think it was like $2000 last time I checked their website [].

    The problem is that patents (especially intellectual property patents) are not something that you want to do yourself. Nor are they something you want to hire small-time lawyers (paralegals or your law-school buddies) to do. The reason is that if you screw something up, you might have your patent thrown out in court if some big company challenges it.

    Think about it, do you really want to bank your entire company on something that you had done by the lowest possible bidder? You need a good foundation to build a company and that means you need to make your patent rock-solid.

    Find a patent attorney that works for a major law firm. Those firms pay a lot for extensive malpractice insurance. That means if they mess it up and you end up losing financially, they can probably cover it. Small time firms are probably going to be more like "Gee, sorry I screwed up."

    I don't know where this $20,000 price quote is coming from. I recently talked with a couple medium sized firms that specialize in patent law. I was told it would cost around $900 to have a patent agent (someone registered with the patent office and therefore anything you show them is kept confidential) to run a patent search. That's a great starting point. The patent search compares your idea to all the existing patents to see if there are any obvious overlaps. If there are bits and pieces of your idea already in the patent database, then it decreases the chance of getting your patent approved.

    OF course, anything that isn't in the database yet (pending) isn't going to be found, so this is not an absolute yes or no (few things are in life). But, it helps prepare you for when you actually submit your patent application.

    I was quoted a price of around $4,000 for the actual patent (not including filing fees). The law firms I spoke with were very clear that it could turn out that I submit my patent, and the patent office says "I took X from patent 123 and Y from 234 and created your idea, therefore it's not unique enough to be awarded a patent." At this point, hopefully I'd already know this from the patent search and now be ready to counter with reasons why it's not such an obvious connection or why it's not the same thing.

    It all comes down to confidence in your idea. If you think you have a good idea, it makes sense to borrow the money to get the patent. At that point you can rest easy and not wake up in a cold sweat after dreaming that someone beat you to it.

    Just my non-lawyer observations based on personal experience.

    - JoeShmoe

    -=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-=-= -=-=-=-=-=-=-=-
  • Interesting, but I wonder how effective your patents are? Have you ever successfully licensed or defended them?

    This sounds like a nice option for open-source advocates who just want to make sure that one of us has the patent on some new idea rather than some big company, but I'm not at all certain these patents will be as effective as a professionally prepared one.

  • One firm I know is good for general intellectual property items is Niro, Scavone, Haller & Niro based in Chicago.

    In interest of full disclosure, Bill Niro is a neighbor of my parents, and my dad has done work for him as an Expert Witness.

    Niro, Scavone, Haller & Niro specializies in Intellectual Property litigation, but they do most other Intellectual Property services as well.

    Good luck!

    Shannon Clark
  • One of the most expensive parts of a patent will be the search of the prior art--the patent search is routinely many times the actual attorney's fees. The expense varies wildly with the area involved--$80K is probably not unheard of in electronics hardware. This is something you can do for yourself, if you are extremely well informed in the field yourself and if you are able (few are) and willing to make a major effort to find out all the relevant technology. (If you are under 30, yo probably haven't been around long enough in the software area to realize you've reinvented something some company developed back in 1982 before they went bellyup in 1986, etc., etc.)

    If you have followed the discussions on slashdot, you will realize that a lot of software patents are granted by mistake. Presumably, you want to change the world and get rich for doing so--one of these patents is just the road to grief.

    An honest patent attorney will probably tell first time clients that only about 1 in 6 patents ever even recovers the cost of filing the patent, and perhaps one or two percent of those that are licensed can be considered genuinely profitable.

    You can get one year's protection on your idea by filing a "disclosure document"--if you have a local government depository library, they will have information on the procedures for this. This amounts to providing a detailed description of your idea(s), but without the search information, etc. If you think you really have a cash cow of an idea, you might want to consult with a patent lawyer on this (it defines what your invention claims are), and $1000 or so of his time might be a real protection for the future. Consulting a patent attorney should be mandantory in any case, and you will find that the ranges of fees for those who know what they are doing is probably pretty narrow (i.e., you may save money with one patent attorney who will get you the patent but can't pour piss out of a boot when it comes to really intelligent licensing, has never been through the process of internationalizing a patent, etc.)

    If you go the disclosure document route, anyone who tries to patent the same (or possibly even closely related idea) will be compelled to prove they came up with the idea before you filed and/or there is no conflict between their claims and yours. Thus, if you are seriously thinking about an idea, but don't want to go the expensive route for now you can get a lot of interrim protection with a *carefully* prepared disclosure document, as well as escrowing descriptionns/copies of code, etc. If you don't file within the year, the idea is ppublic domain and nobody can patent it.

    ASIDE: If you want to adopt standards, to promote free/open software, etc., these disclosure documents are a great and totally unused tool (they used to cost something like $10 to file, but this has surely gone up). People working of free software should be filing thousands of these documents a year, because they are comparatively cheap protection for projects you are working on. When you plan a program to do something interesting, you should file a disclosure document immediately upon formalising your plans. Ditto with solutions tomajor problems. Similarly, if you are on a committee proposing some sort of standard for the internet, or whatever, and you are doing something a certain way to solve a problem, filing a disclosure document instantly will probably mean nobody will be able to cheaply patent your algorithm and try to hold the world hostage. This is just writing a damn letter in a prescribed format (right size type, right kind of diagrams preferred, etc.) and attaching a cover letter and a check for a fairly nominal amount. Your $40 letter can completely stop somebody elses $20,000 patent from later complicating your life--there is a lot of innovation going on in the free/open software communities, and sooner or later there is going to be a major bruhaha where a bunch of coders are going to have to show that on some site open to the public they had an implementiation of an idea which preceded the plaintiff's filing of a patent for substanitally the same idea so some foundation in the free/open world doesn't owe $111-gazillion for 10 million copies of Windows 2000 as atonement for 10 million instances of patent violation, or whatever.
  • Legal question: Would escrowed source-code count as "prior art" for the pupose of defending against a patent law-suit? Would that count as "publishing", even if it weren't made public?

    Practical question: Where would one go to escrow code? Or do you just need to make a paper printout and take it to your local notary public?
  • Are you asking for an intellectual lawyer who does property, or a lawyer who does intellectual property?
  • I've heard that the best in Canada is Smart and Biggar. I'm not joking about the name either! An organization I'm familiar with hired them, and another large organization that was about to sue them just scampered off with their tail between their legs... from what I've heard.

    Good luck!
  • If this helps: I am a Sr. Executive IT Recruiter. We have a division within our Executive Search Firm that specializes in lawyers. I know that a big part of our business is coming from the patent law area and specifically, IT related patents. Give me an email or call me and I will put you in touch with my managing partner in that division. 800-466-4489 x.171
  • Some things that come to mind are:

    multiprocessing, GUIs, networking, segmented memory (to keep processes from romping all over the kernel), encryption, digital signatures, compression, etc... But most of these are more academic.

    From a more real-world implementation sort of view, things like C++, Java, TCP/IP, HTML, WYSIWYG, RAD, ERP, and MP3 come to mind. I don't know which side wins out... probably HTML and MP3's came from more of an open-source mindset, but I don't know about the others (TCP?). It certainly seems that any TLA (three letter acronym) does better these days if it's not specificaly controlled by a company.

    There are probly other important innovations that I missed...

  • I am a patent attorney, though my technical expertise is in the life sciences area. I would not be concerned about a patent attorney or agent stealing your invention since they could lose their license for it. Just keep a copy of all correspondence you have with the attorney and make sure they cc you on all correspondence they receive and get from the patent office. You can find an official roster of patet attorneys or agents at ter/index.html. You can also search the patent database to see patents prosecuted by a specific attorney at, however be aware that some firms require that the firm as opposed to the individual attorney be designed as the attorney on the issued patent itself. My general view on attorney-client relationships is that they are like any other relationship, you either have the chemistry or you don't. I would recommend that you go talk to a few patent attorneys or agents and trust your instincts. At worst, you can always switch attorneys midstream.

    I am starting a site (not yet up) and would like to put information on it that would be useful to scientists and engineers. I was thinking of havng a few short articles discussing what a patent is, the patent process, what inventors should and should not do prior to filing an application etc. I would greatly appreciate any further ideas or insights into what scientists/engineers would find useful. Thanks.

  • Carl Oppedahl and Marina Larson, of Oppedahl & Larson. Both incredibly nice people, and I have to agree with the comments below about Carl's geek abilities. He's a better geek than some I know, and the only attorney I know of with a good signal anaylzer...

    Thier website is
  • by jetson123 ( 13128 ) on Monday November 08, 1999 @08:13AM (#1553852)
    A good patent attorney can do lots and lots of useful things with your patent (in particular, when a patent is borderline and needs some good legal support), but a good patent attorney is also going to be very expensive. I suspect that unless you have a killer application on your hand, it's probably not worth it, but that's a decision you have to make for yourself.

    Whether you go with an attorney or do it yourself, I found the book "Patent It Yourself" by Pressman (Nolo Press) very useful.

    Also consider simply making a disclosure to the patent office (you may also want to publish it in other venues, although that isn't necessary). That defends you against future infringement claims if someone else applies for a patent on the same invention after your disclosure, and it's very cheap.

  • Call your local Bar Association and get a referral. Most attorneys do not charge for introductory meetings. Meet with them and see what they'll do for you. If you like them, strike a deal.
  • You think that software patents are evil, yet you have FOUR of them? Who cares if you were once young and *evil* in acquiring them? You don't have to keep them.

    Open them up. License them out for all comers for free. Donate them to the public domain. Do something other than complain that they're evil, for God's sake!

    Nuclear weapons are evil (I have 4, but that was when I was young and naive)...
  • by kevlar ( 13509 )
    Are you plugging your company?
  • General Advice:

    Find a local attorney When you patent you will be communicating with your lawyer via, fax, or EMail. You will still need to spend some face time discussing things with the lawyer, you don't want to spend time and ($$) travelling far distances to meet with the lawyer.

    Find a local B-School You have an idea, fine. What is it value proposition? Why is it the greatest thing since sliced bread? Being "neat" and "cool" doesn't count. The world doesn't need another great software widget unless that widget is valuable to someone. Find some MBA grad students, sign them under NDA, give them a fair cut at the business and go to town outlining the business.

    And how many patents are we talking about? Most real good ideas will result in many patents (form, function, core capabilities... each separate) where each is more defendable in court.

    Patents cost $5K per, but guess what? If you really want to defend yourself you'll need to also do international patents which will cost ten times that all said and done.

    In the Boston area, the best lawyer for Intellectual property lawyer is Joe Iandiorio [] in Waltham, MA off of 128. He's been involved with IP work for most high-tech companies in the area. (If anyone contacts this office, tell them that you were referred to by WANabee so that they know it came from this posting). For on-line information, check out specifically [] for more IP information than you care to read, and if you care you should read! He is also doing at talk on 11/18 at Clark University as part of the Small Business Development Center workshop. [] Good Luck!

  • I've been to a talk or two given by these folks.

    They seem smart and thorough.

  • Instead of applying for a software patent, just don't disclose your algorithm, and instead protect it -- it's much cheaper and you don't have to talk to a lawyer. Then you can claim trade secret status. For example, in California see Civil Code Section 3426, Uniform Trade Secrets Act:

    "Trade secret" means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

    (1) Derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and

    (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

    Hey, wait a minute, if you read Slashdot, then you probably support open source, and you despise software patents. Who are you, anyway?

  • I do not have experience with software patents, but I think most
    patents are similar and having gone through the process
    (successfully, cost me ~10k total), I may be able to advise you
    a bit.
    First, in my experience, very large firms are very expensive,
    while very small firms are often overworked to a point of giving
    you little service or stretching filing times. Go with midium size
    Second, I have not seen an good lawyer work on a flat fee.
    Third, even when you have negotiated the terms with your lawyer,
    have another lawyer read the contract. Some lawyers will construe
    the terms in their favor (yes they can get disbarred, yes it happened
    to me, but we settled).
    Know the steps involved:
    1. Application filing - duh
    2. Prior art disclosure - tell patent examiner what's the background of your
    invention. It is (can be) a separate filing, so make sure your agreement
    wih your lawyer includes that stage.
    3. "Prosecution" - defend your patent from examiner's objections. This is the stage
    where I got screwed, because my contract with my first lawyer was construed so
    he didn't have to prosecute without additional fees (we had a flat fee arrangement).

    Fourth, most lawyers will not do the work themselves, rather they will offload
    the work to their "apprentices" who are registered as patent agents. This is almost
    inevitable and may be desirable from fee perspective as associates charge less
    per hour. They will usually not make a secret of this fact and let you talk to the
    associate. If he seems knowledgeable and reasonable, this may be the most important
    piece of info for your decision.
    Lastly, you may be tempted to write a filing yourself. There are books (Nolo press
    comes to mind) and if you are confident with legalese, read CFR nightly and
    are ready to go to the library for relevant court precedents, then it may be a
    reasonable idea, although even then I'd go to a professional the first time.
    The reason you need a professional is that your entire patent is contained in
    your claims. The claims define the breadth of coverage (i.e. how easy it is to
    circumvent your patent), so writing them is an art. You want to cover your
    entire idea AND get the examiner to accept the formulation. BTW, having a
    lawyer adds you weight with USPTO. If you plan to file abroad, lawyer
    contacts may come handy too.
  • Their practice involves a lot of representation of plaintiffs (i.e., patentees), sometimes on a contingency fee basis. Something that I would think most slashdotters would not find particularly attractive.
  • May I humbly suggest you contact Andy Greenberg ( Andy is a really good IP lawyer, and a very, very good computer programmer. Way back when, he and I wrote "Wizardry" together.

    So he can not only find the bugs in your patent application, but also the bugs in your code.

  • This is almost worthy of being its own feature article. Perhaps this is an issue that slashdot should explore further.

  • Well in the cases that I am aware off they were often on the side of the "little" guy against much larger companies who had infringed on intellectual property (in the one case I know the most about it was originally a patent case, the patent got overturned, but they won the case as a trade secret case.)

    Why would a contingency fee basis be unatractive to /.ers? Personally it seems to me like a very logical way for a lawyer to be aligned with the interests of his client. It means the law firm takes great risk than when on other fee structures, but it also means less upfront cost for smaller clients.

    Personally I find software patents and similiar patents rather reprehensible (especially the current trend to being able to patent Business Processes, like Priceline's patent on the entire concept of reverse auctions!!!) However fundementally patents serve a very important function, and have been a source of the US's lead in technology.

    Sure there are abuses, but the basic concept of offering the inventor protection and a period from which to profit from his invention, in return for making full disclosure of that invention to the public is a reasonable concept.

    However, in recent years what is patentable seems to have been stretched almost to the breaking point, and the whole process has become very prone to abuse.

    Things like the recent filing of almost 6000 patents on GENES feel very odd to me. How it is possible to patent a Mouse or a Tomato made via gene modifications, but not traditional plants made by cross breeding (or is that too possible?) seems highly odd. Let alone the whole concept of being able to OWN something discovered in nature (all benifical items resulting from the expression of a GENE, for example tests for the gene's presences, drugs from the proteins formed by the gene's expression, etc.) This seems abusive.

    Shannon Clark
  • - IBM typically releases dozens of patents a year, some of which are related to techniques to increase hard drive capacity. These innovations have been one of the chief reasons that fat hard drives are so cheap today.

    - Jini. Source is available, but it's not open source. Jini is sweet innovation in some respects (i.e. finally a widely-applicable distributed object framework!) & not as sweet in other respects (i.e. nothing major uses it yet)

    - Internet Explorer 4.5 for the mac - featured innovations such as auto form-fill, better caching performance and CSS rendering.

    - New Enterprise JavaBeans application server releases from Persistence, GemStone, BEA WebLogic, etc. all provided innovative ways of accessing corporate data and providing a high performance environment for e-commerce apps.

    The list could go on & on.. pretty much any product enhancement is, on some level, an "innovation", except for the usual minor cosmetic changes & bug fixes. Innovation isn't a "big idea" usually, it's the process of filling a customer need.

  • Many contingency fee lawyers do enable those of modest means to defend their rights. What often happens, however, is that the lawyer's interest motivate him to take courses of action that may not be in his client's best interest, and to use his knowledge/skills to persuade the client to do what makes the lawyer the most profit. For example, some contingency fee lawyers are famous for attempting to convince their clients to file cases that are marginal at best, then to settle the cases early on (typically taking a 1/3 cut, of course). Corporations knuckle under to this sort of crap because their decision-makers (a pretty risk averse lot) don't want to chance being tagged with a verdict from a clueless judge or jury that is incapable of understanding the technology. In other circumstances, they will drive a meritless case forward, e.g., after losing at trial or on summary judgment, because the only way for the lawyer to make money is by throwing the dice again on appeal.

    I think that you are much more likely to get impartial advice from lawyers that you pay by the hour, and who don't have a financial stake in the outcome of the litigation.

    On sofware patents, business method patents, etc., I don't disagree with you. Things have gone too far.

  • Don't get a patent lawyer just because the price is low! If you are doing hi-tech work, get someone who is both an engineer and a lawyer.

    I would suggest Skjervern, Morrill, MacPherson, Franklin & Friel. Located in San Jose, CA and Austin, TX, SMMFF knows their stuff !

    I am a former employee of SMMFF.
    I spent over five years working for them, the majority of the time was spent on the Intel v. AMD litigation
    /end disclosure
  • suggest someone (a /. moderator, prehaps) will assemble all of the listed lawyers (with their URLs, Price-Tags, Locations and even Reviews by Costumers) into a handy HTML that could be easily accessed in case of need.

    Lots of action like this would really help this website extract sharper signals from noise (that's the point of moderation, right?)

    another idea would be to give us /. users subdomains or directories so we could filter and save what's meaningful to us individually, and be able check out what signals other lusers extract from this snowballing clusterfsck of textual intercourse..
  • You may have gotten the wrong impression from some of the previous /. discussion on patents. The one-year grace period functions to give the inventor a year in which to file, not necessarily his competitors. It's important to keep in mind that the U.S. is a first-to-invent country (unlike most other countries, which are first to file).

    (1) Any "enabling" publication with a date more than one year prior to the patent application date is an absolute statutory bar to patenting the invention described in the publication.

    (2) If a patent application is filed within one year of publication, a different part of the statute controls. (a) If the publication's authors are the same as the inventors of the patent application, the publication is not prior art against the application, because the publication was not (and could not have been) published prior to the invention of the subject matter by the inventors of the application. (b) If the publication's authors are different from the inventors of the patent application (i.e., the publication was by another), the the patent applicants must show that they invented the subject matter prior to the publication date.

    Putting this into English, if someone else files a patent application today to an invention that you published less than one year ago, they will have to prove that they invented the subject matter prior to the publication date. This is frequently difficult to do, since it requires some corroboration and supporting evidence (such as properly signed and witnessed lab notebooks, etc.).
  • Actually, it really isn't that important where your patent lawyer is if you are interested merely in having patent applications drafted, filed, and prosecuted. In fact, there is a special bar exam given by the patent office that lawyers and nonlawyers alike must take to do this kind of work: in short, you do not need to be a lawyer to do patent application work.
  • Let me guess:

    Is a patent attorney necessary? Yes.

    Which one should I select? Why, that would be you or your firm, of course.
  • I'm a registered patent agent. Perhaps I can help you to find an agent or attorney. Please contact me to discuss this. Please check out my website at I'm starting an IP newsletter that will broadcast commentaries on IP by artists, authors, agents, attorneys, alpha-nerds, religious theorists and traveling midget tailors. Speaking to the crowd now, may I ask if anyone might care to contribute a commentary? Or are we all too special to share our views with those un-obsessed with our own techno-prowess? Pat Reilly 831 332-7127

"You can't get very far in this world without your dossier being there first." -- Arthur Miller