Wednesday, May 30, 2007

The Joy of Patent Work

I've been trying to get the patent applications in order for the stuff we've been working on at Team46 for the past couple of months. Oh the joy of government legalese!

The US Patent & Trademark Office says:
“The USPTO will accept color drawings in utility patent applications and statutory invention registrations only after granting a petition explaining why the color drawings are necessary. Any such petition must include the following:

the appropriate fee set forth in 37 CFR §1.17(h)

three sets of color drawings; and

the following language as the first paragraph in that portion of the specification relating to the BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING. If the language is not in the specification, an amendment to insert the language must accompany the petition.”

Blaarghh!!! Please, kill me now.

Oh yeah… and THIS gem…

“The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.”

Oh, is that a fancy way of saying number sheets like 2 of 5 in this way; 2/5 ?

An oblique line!!?!? Grrr….

So if you've been tasked with taking care of IP stuff for your start-up let me give you some handy tips that I've come to so far...

Hire a lawyer
No, really. Time is one of your most precious commodities. Don't waste it on crap like trying to figure out the fancy government talk above.

Really prepare to talk to your lawyer
I like to write down all of my ideas, no matter how wacky or obvious, and get them in one big list. I write a short description (like two sentences) so I have a good idea of what I'm talking about. I also include diagrams or screenshots if I have them. Then I print out the list of ideas (with the numbers) as a table of contents and the ideas with their short descriptions with one idea per page. This way I have plenty of whitespace on my pages to take notes on what the lawyer says.

Types and Costs of Filings
There are two types of patent filings; Provisional (PF) and Utility (UF). Utility filings are what people typically think of when they think “patent”.



Cheaper ($500-$5k) More expensive (see below)
12 mo. then abandon or file utility 20 yrs from filing or 17 yrs from issue
Establish date for “prior art” Establish exclusivity protection
Cannot be “tweaked” much before U.F. Can be tweaked or amended significantly
Not published Published

Figure 1 – Comparison of Provisional and Utility Filings

For Utility filings the costs based upon size and complexity of filing are t-shirt sized like this:

Size & Complexity

Initial Filing

2-3 Years Later

Low $12k +- 2k $12k
Medium $15k +- 2k $15k
High $18k +- 2k $18k

Gov.t Fees $1.5k - $2.5k

Figure 2 – Estimates of Costs for Utility Filings

One advantage to a Utility Filing is that it forces you to go through the whole process and see what needs to be shored up in any Provisional Filings you want to file.

It may also be worth your while to read through a few actual patents. Once you get past the language you can start to see how they are organized and what they are looking for in terms of specificity and organization. The US Patent Office has a pretty usable patent search site that covers both applications and grated patents.

That's about all I can think of right now. My eyeballs are about to fall out. Time to go home and drink myself to sleep. Thanks Patent Office.

1 comment:

Anonymous said...

Let me add that I watched Bruce do this work. Two things happened - first he started to understand how to write utility patents and probably saved Team46 a good chunk on laywer fees and second, he did start to go insane. Let me add this wisdom: "friends shouldn't ask friends to write patents"