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So I filed and was (after nearly 5 years) granted a patent late last year. It cost me around fifty thousand dollars. I have mixed feelings about whether it was
by jacques_chester 8y ago
So I filed and was (after nearly 5 years) granted a patent late last year. It cost me around fifty thousand dollars. I have mixed feelings about whether it was worth it.
> Yet some lawyers actually recommend against it, since if you do find prior art, you're now willfully infringing on it, and should cease and desist.
I am not a lawyer.
The advice I have seen from actual lawyers is that this is essentially an urban legend based on a bloke-in-a-bar-told-me level of legal understanding. If you are going to file, why piss away tens of thousands of dollars on filing expenses when you can spend a few days (or pay a professional searcher $1500-2500) to see if it's worth bothering?
The "never search, it triples your death-mo-trons!!1!" comes from an easy legal defence for megacorps. Being able to stand up in court and say "we didn't know about patent X because it is against company policy to search" is much easier than a protracted, expensive and chancy legal discovery process to try and determine who read what, when, and what they may or may not have understood.
> Don't expect a patent lawyer to honestly tell you he doesn't know your domain.
Actually, do expect a patent lawyer to honestly tell you their expertise. They have a fiduciary duty to clients. Turns out you can't charge $300 or $600 or $900 an hour if you've been disbarred. But do ask about their credentials and experience and do choose according to that expertise.
The key is that, having told you their expertise, lawyers will still act on your instructions. I can ask my lawyer to do my laundry if I want. I will be advised that this is not their specialty and that it would be a poor use of my money. But I could insist and my lawyer will shrug and make the arrangements, for several hundred dollars per hour.
I did a lot of the legwork on my patent myself -- I drafted a lot of it, carefully studied cited art and wrote my objections etc etc. I am, after all, the person in world who knows it best. But my lawyer could have done it too, it would've just taken longer and cost a lot more.
One last piece of advice I got about law firms. The $800-$1000/hr places are big city firms. When you hire one, the USPTO examiners will assume you are a GigantoMegaGloboInc and examine accordingly. Sometimes they dislike the booming sound of heavy-gauge letterhead being fired across their bow. A smaller firm can typically give you closer attention and is less likely to seem as impersonal.
- danieltillett 8y agoWhat was your patent?
- jacques_chester 8y agoFraud-resistant, privacy-preserving scheme for tracking user visits to websites. It's since been cited against other applications, but for the specification, not the claims. I described what seemed to me like a fairly obvious scheme for feeding fraud patterns back to authentication servers (Fig. 5). https://patents.google.com/patent/US9853964B2 https://patents.google.com/patent/US9853964B2
- uh_what 8y agoYou should edit your comment to remove a certain word beginning with the letter "o". It could cost you big time in court if someone decides to infringe your patent.
- jacques_chester 8y agoI like abundant caution. In any case, I refer curious infringers to the claims.
- patentatt 8y agoMeh, obvious to him. He may be a super genius for whom many novel and otherwise non obvious things are obvious.
- jacques_chester 8y agoMy genius mostly lies in concealing how dumb I actually am.
- ridgeguy 8y agoMostly agree. Except for prior art search costs. Expect a good prior art search to cost more like $10K. It depends a little on the field (cold fusion prior art search would be lots less), but if you're in chip design, energy storage, diamond synthesis - $10K will be your starting point cost.
- jacques_chester 8y agoYes, some subject areas cost a lot more. Supply and demand and legalese and whatnot.
- patentatt 8y agoThat’s a really good prior art search at $10k, more like ~$2k for a reasonable job
- ridgeguy 8y agoYes. It's the level of PA search you would do if you expected your patent to come up against a mega-entity like Google, Apple, Facebook, De Beers, etc. If your patent applications are mainly to check the IP box for investors, it would be more like the $2K you suggest.
- _yosefk 8y ago(TFA author) If it's a really important patent for an individual inventor as opposed to another one to add to the company's portfolio mainly to grow its size, then of course you want to do prior art search. I wasn't talking about the individual inventor's situation as I'm not familiar with it; perhaps you could elaborate on your reasons why your feelings are mixed after the process. I was talking about the situation of a typical company's employee. And yes, it's an "easy legal defense" for a product company to forego prior art search, but it's not an urban legend, it's real legal advice I heard from real lawyers. The same applies to the lawyer's experience. If you're an individual inventor, you're gonna look for the lawyer with the best experience and the law firm with the best price (and IMO you're right in that the $1000/hour lawyers aren't necessarily the best for you.) If you work for a company, someone will find a lawyer to deal with your stuff and the lawyer will behave very confidently, in a "business as usual" kind of manner, when you explain them the basics and they keep not getting it, and you might naturally assume that's how things are supposed to work, when instead what you should do is push back against whoever set you up with this lawyer and insist on getting one with relevant experience.
- jacques_chester 8y ago> perhaps you could elaborate on your reasons why your feelings are mixed after the process My feelings are mostly that $50,000 is a lot of money, no matter how one slices it. > but it's not an urban legend, it's real legal advice I heard from real lawyers. What I was trying unsuccessfully to convey is that what a company might do as a legal tactic is not necessarily a legal necessity. I was a shitty law student before I dropped out of it, but I did learn that taking advice from people in a bar, or from Uncle Frank who heard it from TV, or HN for that matter, is a chancy business. I generally agree that it is always worth knowing that lawyers specialise and that it's no crime to ask for a specialist.
- deleted 8y ago[deleted]