6 ms·

Ask HN: To Patent, or Not To Patent

12 points by goodgoblin 18y ago

We filed for a provisional patent a year ago, and the year is just about up, so we need to decide whether to go for the full patent. Our lawyer is saying $5k for an opinion of counsel and then up to $10k more for the full patent. This is basically all of our remaining capital and then some. The patent, if we get it (82% were rejected last year), would theoretically protect us from competition if we could afford to litigate. More likely it would serve as a reason for us to get bought. If we don't go for the patent we won't have protection (not that it would come in for 3+ yrs or whatever), but we could still try and rule the market we are in. A patent might also help us get funding, if we try and seek it (more funding, right now we've got friends and family money). Needless to say, spending the rest of our money would put us in a tight spot. Just wondering what HN's denizens thought of our situation or patents in general. thx.

rrhyne 18y ago
Software patents are evil.
mixmax 18y ago
I've started two companies that took out patents, and thus have seen this up close. My experience is: - The market doesn't care about patents. Whether your product is good or bad a patent makes absolutely no difference to a customer. - Competitors care very little about patents. They know the cost of patent litigation, and that you probably can't afford it. Even if you could they would probably be able to strike a deal. - Investors, on the other hand, do care about patents. The thinking seems to go along the lones of I have no idea which company to invest in, but the ones that have a patent must be the smart ones. So those are the ones I'll invest in. - This is from Denmark, and may be different depending on your meatspace coordinates. - Patents take time and focus. Patenting takes the focus off your product and selling it, and patents don't get you customers. I would say that if you're gunning for investors get a patent, if you're not don't. Hope it helps. Edit: bonusinfo: If you have to go out and get a job at some point later in life a patent definitely helps. Employers are pretty impressed when you can say that you're so smart that you've taken out a patent...
- goodgoblin 18y ago
  Thanks - kind of what I was hoping someone would say. Our lawyer is a bit of a salesman, not really, but it amounts to as much, him saying "if you don't do X, Y Z bad things might happen." but we are thinking, it would mean we are in a good position if we do get sued for patent infringement or whatever down the road if someone else goes for this, etc. It kind of feels like an insurance policy that we can't afford for a set of circumstances that don't seem all that likely. Totally agree on the focus issue, my partner is spending all her time stressing about this b/c the clock is ticking and I ended up reading a bunch of patents the other day as well instead of focusing on the product. Thanks for a business perspective - we are new to this so I really do appreciate your thoughts on the subject.
  - mixmax 18y ago
    No worries. Throw me a mail if you want to talk more :-)
  - davo11 18y ago
    By lodging a provisional and having a released product that implements the invention, I believe no one else can patent that invention, even if you don't proceed with the patent. Ask your lawyer. A patent search will reveal if someone else has patented this already and would be a bit cheaper. Also shop around and get quotes from a couple of lawyers.
- jwilliams 18y ago
  Investors, on the other hand, do care about patents. This is one reason to keep patents provisional as long as possible - you get the investors to cover the capital outlay of executing the patent. If you launch into the WIPO "International Patent" process, for an upfront cost (US$5k or so - varies a lot on circumstances) you can extend the process by quite a bit - up to 18 months iirc. My bus partner wrote a blog on this after we'd done rounds of meetings with attorneys : http://www.jodoro.com/2008/09/patent-discussions.html http://www.jodoro.com/2008/09/patent-discussions.html
  - mixmax 18y ago
lsc 18y ago
I dono... do you think you can compete better by marshaling lawyers? or by implementing a product better and sooner? How much of an opportunity cost does that money represent? (I mean, do you need that funding to run?) The big thing I see is that it takes money to be a patent troll. I guess if the patent is really strong, you might be able to get your lawyers to work for a cut of the proceeds (maybe ask your lawyer?) but that sounds unlikely to me, not that I know anything about patent trolling. if your resources are like mine, I'd not worry about the patent, and I'd focus on making something that is worth copying. But yeah. I'd argue that patent trolling is a lot like starting fist fights- don't start if you can't win. If you loose, you get nothing. You just get a black eye and look like an asshole. On the other hand, if you build a product and then get crushed by copycat competition with better resources, eh, you still learned something, and you still look good. You created something that was worth copying. At the very least it helps you get your next job. But then, Maybe you have access to cheap lawyer time like I have access to cheap SysAdmin time. that'd change the equation.
mikeyur 18y ago
I don't have any experience personally, but I would say just work on your killer product. If a competitor comes along and you're already established as the leader it won't matter. Save your capital. Just my $0.02
shmoo 18y ago
Some large companies only patent defensively, in order to prevent other companies from patenting their ideas and then suing them. Enforcing patents is difficult.
volida 18y ago
well assuming you have a provisional patent and asking here, shouldn't you say what the patent is about?
rms 18y ago
Write it yourself -- the provisional, especially if it was lawyer authored, should be almost good to go.
- goodgoblin 18y ago
  interesting idea - I'll try and find out how much the pure application is.
vaksel 18y ago
if you can't afford it, forget about it.
natch 18y ago
One patent is not likely to be worth much. If you can put together a small cluster of them, it's much more compelling for an investor/buyer. Depends on what kind of patent, though. 'course, this isn't the best time to bet on getting funding, patents or not. Probably better to focus on finding an actual revenue stream. And have you really done a diligent search for both existing patents, and prior art? Don't rely on your lawyer to do this; he/she has a financial disincentive to do anything that would discourage you from attempting to file a patent (I used the word "attempting" for a reason: your lawyer probably has things set up so that even a mere attempt will result in fees, whether that attempt is successful or not). Also know that some patent lawyers file patents just to get the money for filing them. Read carefully, this point is distinct from the one in the previous paragraph. The fact that a patent is filed and eventually granted, does not mean it is a valuable patent. Your lawyer's job is generally not to judge the technical or business merit of the patent, unless you have specifically set up your relationship with him/her to provide an incentive for that. So be aware that your patent might prove to be worthless. While even a worthless patent will grease the skids with some investors, at least go into this with your eyes wide open.
davo11 18y ago
I'm in the same boat, my provisional runs out in April, and am wondering what to do. I lodged the provisional myself and save a few $K. Here's my current thinking, over the course of the patent it will cost around $250K or more over 20 years. If I had $250K now would I spend it on my patent? Right now, I'd much rather have the $250K so from the good investment point of view - the answer is no. What about the possibility of someone else patenting it? Well since the provisional has been lodged I don't think that's possible once the product is in the public domain, so from that angle I'm safe. Can someone reverse engineer the patented bit? If they can what investment would they have to make to build a competing product, i.e. are there any other bits that aren't in the patent but are hard / risky. If a competitor has to make a large investment to catch up to you, then they may be better off just buying your company. Will this be the only invention you ever make? If you're young and you've got something patentable already then most likely it wont be your last. It's not my first and I know it's not my last, once an inventor - always an inventor. Someone mentioned it's good to have a patent on the resume, from my experience it can scare the hell out of some employers, so that's a bit of a 2 edged sword. Perhaps the bit that get's stuck the most in my craw is that I'd be paying thousands of dollars to some patent guys who sit in a nice office and wear expensive suits and silk ties while I'm busting a gut making a startup, it's petty I know but it really gives me pause. I figure if they have all that money then there is a lot of cream on top of the patent industry. The other thing to consider is how much time it takes to write a patent application. I know for myself it was a few weeks to actually write the provisional (and this was time well spent as I defined what I'd actually invented and found out a few other things along the way). It also takes time to work with the patent guys, don't underestimate this. You have to have meetings, review there work, make changes and so on. I figure if my products successful, then by the time it reaches the point where I had to worry about patent infringements and so on I will have made more than enough money for me and I'll be doing this to grow to the next step.It usually takes about 5 years for a patent to be approved, 5 years is a long time in software. The conclusion I've come to is it's a big boys game, and if you want to play then you have to pony up the cash, either get the cash or get investors who have the cash otherwise do what you can to protect yourself and move on. Of course it depends totally on what you're patenting - if it's a major breakthrough then it may be worth getting investors. If it's incremental then execution probably matters way more than whether or not you have a patent. hth.
deleted 18y ago
[deleted]
wavesplash 18y ago
An alternate option is to give up some ownership of the patent for reduced cost and labor. Have you guys talked with IMSciences? They cut you a deal for a portion of the patent ownership and depending on the deal you cut can write most of it for you. (I don't work for them, nor have I filed anything with them but I have heard good things about one of the partners).
dctoedt 18y ago
One question to ask is whether your product or service is even patentable in the first instance. Ask your lawyer about the court decision in the Bilski case, http://www.cafc.uscourts.gov/opinions/07-1130.pdf http://www.cafc.uscourts.gov/opinions/07-1130.pdf, which put some pretty tough restrictions on the patentability of software.

12 points by goodgoblin 18y ago

rrhyne 18y ago

Software patents are evil.

mixmax 18y ago

I've started two companies that took out patents, and thus have seen this up close. My experience is: - The market doesn't care about patents. Whether your product is good or bad a patent makes absolutely no difference to a customer. - Competitors care very little about patents. They know the cost of patent litigation, and that you probably can't afford it. Even if you could they would probably be able to strike a deal. - Investors, on the other hand, do care about patents. The thinking seems to go along the lones of I have no idea which company to invest in, but the ones that have a patent must be the smart ones. So those are the ones I'll invest in. - This is from Denmark, and may be different depending on your meatspace coordinates. - Patents take time and focus. Patenting takes the focus off your product and selling it, and patents don't get you customers. I would say that if you're gunning for investors get a patent, if you're not don't. Hope it helps. Edit: bonusinfo: If you have to go out and get a job at some point later in life a patent definitely helps. Employers are pretty impressed when you can say that you're so smart that you've taken out a patent...

goodgoblin 18y ago
Thanks - kind of what I was hoping someone would say. Our lawyer is a bit of a salesman, not really, but it amounts to as much, him saying "if you don't do X, Y Z bad things might happen." but we are thinking, it would mean we are in a good position if we do get sued for patent infringement or whatever down the road if someone else goes for this, etc. It kind of feels like an insurance policy that we can't afford for a set of circumstances that don't seem all that likely. Totally agree on the focus issue, my partner is spending all her time stressing about this b/c the clock is ticking and I ended up reading a bunch of patents the other day as well instead of focusing on the product. Thanks for a business perspective - we are new to this so I really do appreciate your thoughts on the subject.
- mixmax 18y ago
  No worries. Throw me a mail if you want to talk more :-)
- davo11 18y ago
  By lodging a provisional and having a released product that implements the invention, I believe no one else can patent that invention, even if you don't proceed with the patent. Ask your lawyer. A patent search will reveal if someone else has patented this already and would be a bit cheaper. Also shop around and get quotes from a couple of lawyers.
jwilliams 18y ago
Investors, on the other hand, do care about patents. This is one reason to keep patents provisional as long as possible - you get the investors to cover the capital outlay of executing the patent. If you launch into the WIPO "International Patent" process, for an upfront cost (US$5k or so - varies a lot on circumstances) you can extend the process by quite a bit - up to 18 months iirc. My bus partner wrote a blog on this after we'd done rounds of meetings with attorneys : http://www.jodoro.com/2008/09/patent-discussions.html http://www.jodoro.com/2008/09/patent-discussions.html
- mixmax 18y ago

lsc 18y ago

I dono... do you think you can compete better by marshaling lawyers? or by implementing a product better and sooner? How much of an opportunity cost does that money represent? (I mean, do you need that funding to run?) The big thing I see is that it takes money to be a patent troll. I guess if the patent is really strong, you might be able to get your lawyers to work for a cut of the proceeds (maybe ask your lawyer?) but that sounds unlikely to me, not that I know anything about patent trolling. if your resources are like mine, I'd not worry about the patent, and I'd focus on making something that is worth copying. But yeah. I'd argue that patent trolling is a lot like starting fist fights- don't start if you can't win. If you loose, you get nothing. You just get a black eye and look like an asshole. On the other hand, if you build a product and then get crushed by copycat competition with better resources, eh, you still learned something, and you still look good. You created something that was worth copying. At the very least it helps you get your next job. But then, Maybe you have access to cheap lawyer time like I have access to cheap SysAdmin time. that'd change the equation.

mikeyur 18y ago

I don't have any experience personally, but I would say just work on your killer product. If a competitor comes along and you're already established as the leader it won't matter. Save your capital. Just my $0.02

shmoo 18y ago

Some large companies only patent defensively, in order to prevent other companies from patenting their ideas and then suing them. Enforcing patents is difficult.

volida 18y ago

well assuming you have a provisional patent and asking here, shouldn't you say what the patent is about?

rms 18y ago

Write it yourself -- the provisional, especially if it was lawyer authored, should be almost good to go.

goodgoblin 18y ago
interesting idea - I'll try and find out how much the pure application is.

vaksel 18y ago

if you can't afford it, forget about it.

natch 18y ago

One patent is not likely to be worth much. If you can put together a small cluster of them, it's much more compelling for an investor/buyer. Depends on what kind of patent, though. 'course, this isn't the best time to bet on getting funding, patents or not. Probably better to focus on finding an actual revenue stream. And have you really done a diligent search for both existing patents, and prior art? Don't rely on your lawyer to do this; he/she has a financial disincentive to do anything that would discourage you from attempting to file a patent (I used the word "attempting" for a reason: your lawyer probably has things set up so that even a mere attempt will result in fees, whether that attempt is successful or not). Also know that some patent lawyers file patents just to get the money for filing them. Read carefully, this point is distinct from the one in the previous paragraph. The fact that a patent is filed and eventually granted, does not mean it is a valuable patent. Your lawyer's job is generally not to judge the technical or business merit of the patent, unless you have specifically set up your relationship with him/her to provide an incentive for that. So be aware that your patent might prove to be worthless. While even a worthless patent will grease the skids with some investors, at least go into this with your eyes wide open.

davo11 18y ago

I'm in the same boat, my provisional runs out in April, and am wondering what to do. I lodged the provisional myself and save a few $K. Here's my current thinking, over the course of the patent it will cost around $250K or more over 20 years. If I had $250K now would I spend it on my patent? Right now, I'd much rather have the $250K so from the good investment point of view - the answer is no. What about the possibility of someone else patenting it? Well since the provisional has been lodged I don't think that's possible once the product is in the public domain, so from that angle I'm safe. Can someone reverse engineer the patented bit? If they can what investment would they have to make to build a competing product, i.e. are there any other bits that aren't in the patent but are hard / risky. If a competitor has to make a large investment to catch up to you, then they may be better off just buying your company. Will this be the only invention you ever make? If you're young and you've got something patentable already then most likely it wont be your last. It's not my first and I know it's not my last, once an inventor - always an inventor. Someone mentioned it's good to have a patent on the resume, from my experience it can scare the hell out of some employers, so that's a bit of a 2 edged sword. Perhaps the bit that get's stuck the most in my craw is that I'd be paying thousands of dollars to some patent guys who sit in a nice office and wear expensive suits and silk ties while I'm busting a gut making a startup, it's petty I know but it really gives me pause. I figure if they have all that money then there is a lot of cream on top of the patent industry. The other thing to consider is how much time it takes to write a patent application. I know for myself it was a few weeks to actually write the provisional (and this was time well spent as I defined what I'd actually invented and found out a few other things along the way). It also takes time to work with the patent guys, don't underestimate this. You have to have meetings, review there work, make changes and so on. I figure if my products successful, then by the time it reaches the point where I had to worry about patent infringements and so on I will have made more than enough money for me and I'll be doing this to grow to the next step.It usually takes about 5 years for a patent to be approved, 5 years is a long time in software. The conclusion I've come to is it's a big boys game, and if you want to play then you have to pony up the cash, either get the cash or get investors who have the cash otherwise do what you can to protect yourself and move on. Of course it depends totally on what you're patenting - if it's a major breakthrough then it may be worth getting investors. If it's incremental then execution probably matters way more than whether or not you have a patent. hth.

deleted 18y ago

[deleted]

wavesplash 18y ago

An alternate option is to give up some ownership of the patent for reduced cost and labor. Have you guys talked with IMSciences? They cut you a deal for a portion of the patent ownership and depending on the deal you cut can write most of it for you. (I don't work for them, nor have I filed anything with them but I have heard good things about one of the partners).

dctoedt 18y ago

One question to ask is whether your product or service is even patentable in the first instance. Ask your lawyer about the court decision in the Bilski case, http://www.cafc.uscourts.gov/opinions/07-1130.pdf http://www.cafc.uscourts.gov/opinions/07-1130.pdf, which put some pretty tough restrictions on the patentability of software.