Does anyone on here have experience working with a patent attorney? Specifically you created a design and are wanting to take it to production. Who did you use for representation? PM me if you are willing to discuss the process. Thanks.
Patent legal representation
- Thread starter AKMarty
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I went through that process. I found a local patent attorney that started the process/billing with a search to ensure my claims were patentable.
Before getting 'sold' on a Patent, do realize that before your patent is granted the market will be flooded with chinese clones OF said patent.
Add to this, that the actual 'patent' is ONLY valid in the country to which it was awarded. NOT ANYWHERE ELSE. So thos chinese clones can continue to be shipped and sold everywhere else, without breaking the law.
Oh, and by-the-way. When you DO find out that those chinese clones are being flooded INTO your own market, in your country OF Patent, then it is completely UP TO YOU to find them, pursue them in court, pay for your lawyers, all in the hopes that over time, (few years?) the courts decide that 'yes, this is patent infringement'.
Then you're given the fun task of actually getting something from the chinese market-flooders, and try to re-coup losses therein.
Still looking lucrative and profitable?
I have gone down this path a few times. The patent applications can stay unviewable at the Patent Office for about 18 months. The issue currently is that applications are taking a couple of years to have the initial decision returned. So, if you are quick on your toes you can produce your product with "patent pending" on it. The last patent I submitted the Patent Office stated that the estimated time for return was 30 months.
What Sean says is to a degree true. But if you want protections of some sort, it really is the only option. Defending it sucks. If you want to go the seed funding route as well as potentially license the product the patent becomes important. There are definitely costs associated with going down this road, none of them cheap.
However, ask yourself this: if patents are irrelevant, why are so many major companies patenting everything they come up with? Its not just a lock on the technology, it is also a legal stake in the ground that you developed something first and that is what gives you a leg to stand on should you decide to go against Goliath.
Unfortunately, no good answers.
ETA: a patent lawyer gave me some good advice when I started down this road: don't come to a lawyer with an idea, make a working prototype first, that's not the same as getting a bug-free, retail version of said widget stood up; we are talking about a fully functioning version that can be used to create an accurate patent application. This does two things: it allows the lawyer to do a relevant patent search (potentially avoiding declines based on ambiguity or future lawsuits against the patent by other companies) and lets you avoid all the costs associated with this route if the idea turns out to be unworkable. Now you can file a provisional while you finish development, but that has its own set of issues as well.
Whatever it is that you are working on, best of luck and I hope it works out for you.
What Sean says is to a degree true. But if you want protections of some sort, it really is the only option. Defending it sucks. If you want to go the seed funding route as well as potentially license the product the patent becomes important. There are definitely costs associated with going down this road, none of them cheap.
However, ask yourself this: if patents are irrelevant, why are so many major companies patenting everything they come up with? Its not just a lock on the technology, it is also a legal stake in the ground that you developed something first and that is what gives you a leg to stand on should you decide to go against Goliath.
Unfortunately, no good answers.
ETA: a patent lawyer gave me some good advice when I started down this road: don't come to a lawyer with an idea, make a working prototype first, that's not the same as getting a bug-free, retail version of said widget stood up; we are talking about a fully functioning version that can be used to create an accurate patent application. This does two things: it allows the lawyer to do a relevant patent search (potentially avoiding declines based on ambiguity or future lawsuits against the patent by other companies) and lets you avoid all the costs associated with this route if the idea turns out to be unworkable. Now you can file a provisional while you finish development, but that has its own set of issues as well.
Whatever it is that you are working on, best of luck and I hope it works out for you.
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My daughter is developing a technology that pertains to the space and aviation industry. A company approached her inviting her to work with their company to develop the technology with the purpose of securing a patent. Trying help her not get robbed by someone.
Usually companies will want to do one of two things: when they employ a person they will have them sign a document that says any and all inventions by the employee at the time of employment are the property of the company, or they will bring on a person and want a substantial portion of the revenues from the patent of their invention as the compony fronts the costs of development. Whether or not this is fair depends on several factors that are highly individualistic in nature: whether or not your daughter has the money, resources, time and ability to sacrificially endure everything required to get the product stood up and in the marketplace, if she is looking at this as a way to get in the door to a company and get a solid start on a career, etc. These are things a patent lawyer is not going to be able to tell you.
I can tell you that anything that goes on a flying aircraft will have a high probability of having to go through testing and certification that would otherwise not be in the cards for something like a regular retail item. I have seen companies run out of funding while they tried to get things through the FAA. Don't know if this technology is what is called a "critical flying part" or is integral to that, but if it is, get ready for the process.
If an inventor is looking to develop, patent and push a product into the market they must be realistic about the costs and soul-sucking time involved. Like damn near everything else in life goes into second place, and in no way am I joking. The costs are more than most think, especially marketing costs (you gotta get the product out there somehow and compete with everyone else) and manufacturing expenses. If she is convinced that she wants to do this it may be a good idea to look into investors - VERY CAREFULLY. I have met investors during seed funding rounds that wanted 50% of the company plus a majority of board seats; they operated more like PE companies way too early in the business lifecycle and had the egos to go along with it. Stay away from those types. Finding investors for seed funding can be tiresome but if that's the path you decide to go down you gotta do it wisely.
Sorry man, this is a lot of info, but you said "daughter". That brings the importance of the conversation up about 100 notches in my mind. There are good people in companies and in the investment world, but they are not going to fall in your lap usually. A company that wants to employ her for the technology is also categorized in my mind as an investor.
Make sure she gets some sort of financial deal out of this that is not tied to the patent. Like we will pay you x dollars for y months with a z bonus once the patent is FILED.
The company will want to own the patent. The system is broken beyond repair and the only people really who benefit are the corporations with the resources to pursue litigation.
I have multiple patents with a major company that I got shit for (I did work for them at the time). It was a brainstorm session, but they got the ideas--I got a kick in the balls (ok I got a $50 gift card, and they got 6 fucking patents). Don't be stupid like me. The going rate is $1000-5000 for a granted patent for workers in companies I worked for. So make sure she gets paid around $100 / hour of her work if possible which is the going rate for people who do this. If it seems high--remember they would have to pay someone like me $100-300K per year PLUS benefits to do the work and all the big aerospace/tech companies offer stock etc...
Yes I am bitter. Also it took between 12-24 months to file and 24+ months to be granted.
This fucking hurt to read. Sorry to hear that. I have a policy that no one enters my shop without an appointment and I know WHY they are there and there is nothing out or on the whiteboards and we discuss only what they are there for. First time meeting is always offsite. Don’t like it? You just failed the first big test and there won’t be a second.
Another thing:
1. get a good contract lawyer no matter what. Because she would be bringing existing assets that are her own to the company if she decides to work there, it will need to be decided who owns what, especially if she leaves. She is not an ordinary employee in this regard.
2. Also have this lawyer craft a non disclosure agreement. And that agreement needs to state that the county where legal disputes would be handled will be the county you live in. Otherwise you could find yourself bouncing across the US to some distant court. Been there. You will need an NDA anyway as you go forward due to the people you may be d as peaking with that could steal the ideas and get to market before you.
All of this sucks but I have found them necessary, too late in some cases.
1. get a good contract lawyer no matter what. Because she would be bringing existing assets that are her own to the company if she decides to work there, it will need to be decided who owns what, especially if she leaves. She is not an ordinary employee in this regard.
2. Also have this lawyer craft a non disclosure agreement. And that agreement needs to state that the county where legal disputes would be handled will be the county you live in. Otherwise you could find yourself bouncing across the US to some distant court. Been there. You will need an NDA anyway as you go forward due to the people you may be d as peaking with that could steal the ideas and get to market before you.
All of this sucks but I have found them necessary, too late in some cases.
I wouldn’t bother with patents unless I had serious coin to fight patent infringement. This is where a reg D offering and rubbing elbows with people with deep pockets comes into play…
Getting a patent is easy, even cheap compared to defending one.
The outcome of civil cases is often determined by who can afford to shovel money into their attorneys pockets before the other guy taps out. It’s an unfortunate reality.
The patent world isn’t a good fit for the average Joe.
Getting a patent is easy, even cheap compared to defending one.
The outcome of civil cases is often determined by who can afford to shovel money into their attorneys pockets before the other guy taps out. It’s an unfortunate reality.
The patent world isn’t a good fit for the average Joe.
^^^^^^^^AMEN!^^^^^^^^
I’ve been through this process 6 times on Communicatlons equipment (with companies picking up the tab).
1 patent was issued (prevented a large company from connecting to our equipment).
1 died during the patent search. (Many do)
The other 4 quashed by a government agency who didn’t want the inventions to see the light of day (rare but it happens).
And as others have noted, the Chinese, Saudi’s, Indians, Israelis, French and many others don’t care about your patent.
Trade Secrets or Secret Sauce may be a better option.
Have fun.
I would have her file a provisional application which fixes the date of the idea. It is a legal document that provides some benefit provided you follow up with a non-provisional patent application within one year. That time limit is fixed.
The provisional application buys you a number of benefits during the year including the ability to conduct a detailed prior-art search so you can refine claims for the non-provisional application, the ability to stake the technical claims to a date and buying a delay with the higher fees associated with the non-provisional application. It is very important to provide as much detail as possible in the provisional application to prevent challenges subsequent to filing the non-provisional application.
The Patent office has an exhaustive web-site full of information that can really save you time and cost.
I haven't worked in this part of the world for a while so take this with a grain of salt.
- Don't tell anyone anything without having a non-disclosure agreement in place. A NDA only works against "honest" folks, if they are dishonest don't do business with them.
- Don't ever offer to sell the invention/item to the public before you have the patent. If you do, you are barred for patenting it if you don't file your paperwork within a year of the offer.
- Maintain sole control over the patent or get PAID. If a patent has multiple inventors each inventor can license the patent without permission or compensating the other inventors. If she sells the idea get cash, not promises of earnings or other things. I know somebody who had a great idea and licensed it to a company (sole worldwide rights) with the expectation that he was going to get a slice of the profits from the invention. The company never offered it for sale because they had a competing product. Because they made no sales he got no money and they laughed all the way to the bank.
- Filing a patent is expensive. Litigating whether or not a patent is valid is the sport of kings. Money is spend on an unbelievable scale. If she can't afford to defend it she's better off looking to sell it.
- Make sure the most appropriate intellectual property protection is used. Patents are nice but depending on what she has invented a Trade Secret might be even better.
- If you do have to talk to a Patent Attorney look for one with lots of patents filed, they have been around a while, they have no disciplinary issues with the Bar, it's the only law they practice, and find out what their undergrad is in. Don't use a software guy for mechanical engineering patents, find an actual engineer.
