The Old Joel on Software Forum: Part 4 (of 5) - IANAL

IANAL - Software Patents

I have an idea for a software process. I'm sure it's non-obvious because nobody has done it yet.

Let's say this patent is somewhere between one-click-ordering and public key encryption. It descibes a process - a way for two computers to communicate with each in a fairly specialized manner.

I want to get a sense of, first of all, whether this is patentable, and second what fees I should expect between a lawyer & filing fees.

I do plan on consulting with a Patent Attorney, but I want to go in armed with knowledge. Plus I wanted to get the perspective of programmers.

I'm an individual not a corporation (I heard it has an impact on filing fees), and I'm not exactly rich, so I'd like to keep fees down.

Finally, if you can recommend a Patent Attorney, preferrebly in the New York City Area, I would be greatly appreciatiative.

Thanks In Advance!

Full name:
Saturday, February 7, 2004

The point of filing a patent is either to have ammo to counter sue with (rather like the theory of assured mutual destruction so popular in the think tanks of the Cold War), or to have enough clout to scare shit out of any competition, or if you are a small guy to try and make a killing from the unsuspecting.

There are two ways of doing the latter. The first is to try and have patents filed that you can later sue MS or IBM for, or the second, less ambitious, but more secure, is to be able to sue small companies in some obscure state in the US and offer to settle for less than it would cost them to hire a lawyer over the internet.

None of this you will notice, requires any original ideas or specialized legal knowledge.

Stephen Jones
Saturday, February 7, 2004

If the purpose of obtaining this patent to prevent somebody from copying the idea, forget about it. If they can copy it merely by observing your product (ie without source code), they will do so if they want, or they'll probably come up with the idea on their own.

Companies don't bother to search through the zillions of patents that are out there; they just assume that anything they develop will infringe on several patents. Then they take the risk and develop whatever they want, or obtain patents to use defensively against other aggressive patent holders.

"Haven't done yet" isn't evidence that it is nonobvious. Maybe there is no great need for it (yet), or its implementation would require changes to internet protocols in order for the market to accept it -- so they don't bother with it.

Unless you also plan to have the money for a court battle, don't bother with the patent. But with a patent office that grants patents for swinging sideways on a swing, you probably can get it patented even if it is something trivial.

T. Norman
Saturday, February 7, 2004

And Stephen is not a lawyer and has never been to the US, but he does have a lot of experience watching american TV shows, during which he spits at the TV and shouts "Zionist Dogs and Monkeys!"

In other words, you might do better getting advise from a real attorney or two rather than look on this board.

Redneck
Saturday, February 7, 2004

A patent is not totally worthless for a small developer, but one should certainly think long and hard before getting one. There's the prestige thing which will enable you to get better jobs and charge higher rates as a contractor. Its also extremely valuable to have if your idea really is patentable - to use to defend yourself when some big company tries to sue you. But again, you need a bit of money to defend yourself and the balls to stand firm in the face of some pretty scary intimidation the big corporations are good at throwing around.

Don Alberto
Saturday, February 7, 2004

Your fees will include having a pro draw up the patent in a way that will avoid the easy challenges to it. Total cost expect no less than 8,000, and it can go up to 30,000, with 15-25 being a reasonable guess.

Don Alberto
Saturday, February 7, 2004

To give an example of why you should have an experienced patent attorney draft the patent claim - there's a company that holds an enforceable patent on the concept of memory modules. At the time he drafted the patent, getting memory chips to operate in parallel on a modular circuit board was a non-trivial problem, which he solved in his claim for "a design for placing memory chips on a circuit board with a 30-pin interface for personal computers"

See the problem? As soon as the industry shifted from 30-pin to 168-pin, even though his concepts were still in use, he had no grounds for royalties.

A good patent atty would've caught this.

For more information about patents and intellectual property in general, check out http://www.patents.com/

Philo

Philo
Saturday, February 7, 2004

Thanks for all your advice.

Of special interest is this:

http://www.patents.com/patents.htm#publish

This means I can publish information about my idea to actually figure out whether or not it's worth patenting, and let it stew for a few months.

Regarding the non-obviousness of this idea, I'm fairly sure nobody's thought of it before because it's a kind of "slap yourself on the forehead" idea and works with the existing internet protocols, riding on top of them.

I'll take special care not to be too specific with the technologies involved, though I would like to use several existing pieces of software & protocols as examples, but I'll clearly label them as such.

Now here's a question.

Let's say I do publish this idea in a couple of days, and it's as brilliant as I like to think it is. It's adopted by the Open Source community and within a couple of months a product based on my ideas hits the streets. At this point I'd be fighting a losing battle to protect my - as yet non existant - patent.

Once it got to, say, Microsoft or Sun, they'd have a strong case that the idea is public domain and my patent is worthless.

Full name:
Saturday, February 7, 2004

"If the purpose ...[is] ....prevent somebody from copying the idea, forget about it. If they can copy it merely by observing your product (ie without source code), "

AND, if you PATENT it, you make it public, automatically. You have to explain how it works.

HOWEVER, if you instead get Trade Secrets type protection (like Colonel Sanders secret Fried Chicken recipe) you get more protection.

I am not a lawyer, but I researched this heavily when I worked toward patenting something before. (Never got it patented it).

Don't get the cart before the horse. A patent on something that's not sellable it just an expense.

ALTERNATIVE: Software is automatically copyrighted. That's a better protection, IMHO, because you don't have to divulge anything, but no one else can use your software. They could reverse engineer it, but I think that's harder than people really think.

The real Entrepreneur
Saturday, February 7, 2004

Go here and Search. Try very hard to find something that would invalidate your idea (becauses if you ever have to defend your patent, the other side's lawyers will try very, very hard).

http://www.uspto.gov/main/patents.htm

If you are still convinced that your idea is patentable, and you think the idea is worth a few thousand dollars of legal fees, and you would be ready to take someone who infringes to court, get a patent lawyer.

But if you have a really good idea, I think you would be more likely to make a profit on it by bringing a product based on it to market.

Tom H
Saturday, February 7, 2004

Actually, it's the protocol, the idea. So the copyright from the software won't do much good. I could write yet another bug tracking system or yet another text editor, but it wouldn't mean the idea was patentable.

Besides, I and the world would benefit most if certain parts were distributed as widely as possible, so I'd probably want to make some parts freely available and even open source.

Using the (bad) example of Instant Messaging, if I came up with this concept, I'd want everyone to be using it so I'd make the client free so I could control the servers. Or maybe even make server software available freely if I could control something like a registrar or certificate authority.

Apache is free and open source, HTTP is an open standard, but registrars and certificate authorities get a significant amount of money.

I'm not saying my idea is as revolutionary as any of these, but I'd like to think it will find it's niche, and may make it's way onto every desktop in the world one day.

Full name:
Saturday, February 7, 2004

My few cents from previous experience (in the EU though).

When you file an application for a patent you get a certain protection from that moment on until it is approved or rejected. You will only disclose the contents of the patent when it is published (some 1 to 2 years later, varies) and its costs depend on the scope of the patent (national or worldwide).

There are "Inventor Clubs" that might give you free but correct advice.

If you have the money then get a specialist lawyer.

It can take ages... so be patient

BD

BD
Saturday, February 7, 2004

You'll have no protection whatsoever in the EU because software patents are not accepted. In fact the OP talks about his "idea", and ideas are not even patentable in the US to the best of my knowledge; software patents sneak in as processes.

The OP should bear in mind that should his idea take off he will have much higher expenses than the few thousand he may decide to spend on the original patent, as he will have to hire a good patent lawyer to sue.

There is also the question that whereas prior art is normally published in journals in many fields, in software this is often not the case. So you do the research, find no prior art, the patent office does the same, but when you take the matter to court against somebody with big bucks, he comes up with what you hadn't found.

Stephen Jones
Saturday, February 7, 2004

On the subject of advice here being less useful than advice from a lawyer, and specifically with respect to the unjustified attack on Stephen Jones' advice, bear in mind that lawyers as such are pretty useless for patents.

Patent attorneys are generally technology graduates who've later done some legal training. This is because the technology expertise is the more important part of the expertise.

Acocrdingly, the advice from here can be quite valuable.

Silk
Saturday, February 7, 2004

I would be very surprised if your idea was actually original. I would check http://www.faqs.org/rfcs/ and also consider a membership to the IEEE Computer Society and ACM to search their publications. Doing so will be much cheaper than filing a patent.

Anonymous
Saturday, February 7, 2004

If you publish your idea (i.e. make a "public disclosure") you will need to file a patent application within a legally prescribed period of time (I think it's a year in the U.S.) or lose the right to patent it ever. I think for European Union and some other foreign patents you get no such period and must file the patent application before a "public disclosure".

The EU I think is currently not respecting software patents but that may change. The US patent office used to let you patent just about anything but there has been a backlash and it is supposedly now much more difficult to get a software patent.

I have a patent application just about filed. I used a patent attorney here in Chicago and all told it cost about $20K. That is for the initial application. Inevitably the patent office will respond and then my attorney will have to respond-> more dough.

name withheld out of cowardice
Monday, February 9, 2004