When/if to seek a patent?

Question

I am working part-time on a personal project, and it's been going very well. I've shown it to a few people, and they are all extremely enthusiastic, so I've been considering actually finishing it up, adding some bells and whistles, and selling it.

One key feature of the product is a certain combination of user interface and functionality that I haven't ever seen before, and which, in my humble opinion, is both very useful and very cool - it makes (I hope) a very unique and compelling selling point, particularly to a certain demographic.

I'm not sure if or how I should seek a patent on this feature before I release it. I have no budget for this, only my personal time and money, so spending thousands of dollars on a lawyer probably isn't an option.

To be honest, I don't really care about having a monopoly on the the idea... if others imitate me, that will prove I've had enough success myself that I'm probably going to be happy. If I could pay off half my student loans, I'd consider that a smashing success. I'm somewhat libertarian, philosophically, and tend to regard patents as a rather necessary evil.

On the other hand, part of me says that I shouldn't close doors on myself, and if, by some miracle, my product really does become popular and I end up starting a company based off of it, I'm not going to want to limit my success. This scenario is unlikely, I know, but still, I'm not sure if I should consider this or not. And an even bigger concern... having a patent might provide some negotiating power or legal backing if I should draw attention from a certain huge, punitive software company who decides they want what I have.

Additionally, there is the logical possibility that someone else has already patented a similar idea. If that is the case, would I be better off not even looking for it? I know that damages are much, much higher for willful infringement, but much less if I did due diligence in trying to find existing patents. I guess it would at least give me a position to work from, and adjust it so as not to actually infringe, before I release. But is this even possible to do myself, or do I need to hire an expensive lawyer in order to have any confidence in my findings?

Answer 1

Really, even just outlining the idea on paper to a friend over beer counts as disclosure? That kind of sucks... More weight to the "patents are evil" position, I guess.

Answer 2

You've shown it to people? I hope it was under a non-disclosure agreement, or you've already forfeited your opportunity to patent your invention. You can only patent your invention if you haven't disclosed it already.

Not entirely true, at least in the United States. In the US, you have a one year grace period after public disclosure of your invention.

Answer 3

The information in patents is viewable by all. Therefore, a patent on software is the best way to say: "Here's my great idea. Now it's up to you to tweak a few things and use it yourself."

My advice is: if you're concerned about it being stolen. Don't patent it. If you're not concerned about it being stolen, why bother patenting it?

Answer 4

Getting a patent can be expensive. It might be $10k even for a simple idea.

Be aware that you only have a year from the time you put the product out there for use by the public to patent it. After that it's considered old news and not patentable. I am almost 100% positive that simply disclosing the idea does not invalidate a patent claim.

Here's one of the better reasons to get a patent: if you start a company, start making money, and then some other company comes along, copies your idea, patents it, and then sues you for it, you will spend a lot of time and money trying to prove that you came up with it first. Especially if their lawyers are bigger than your lawyers.

Answer 5

Once a public disclosure is made (shown to someone outside of NDA) then you have 1 year to file your patent application, so you have not forfeited anything but time.

IANAL, but I have talked with a lot of them about patent law and strategy. IMHO, there are only 3 reasons to patent something as an individual (the reasoning is different if you are a large corporation):

1. You plan to license the patent to someone else so they can produce the product and pay you royalties.
2. You plan to sit on it and sue people who infringe later. This one requires money to fight the court case.
3. You plan to sell the patent to someone else who will do one of the latter two options.

Options 1 and 3 are risky since you never know if the buyer will just decide to steal the idea and fight you in court until you run out of money.

I am assuming since you are posting here that this is a software idea. My recommendation is to write your software really well and give it away free, but not open source. Create a community (a Forum, Wiki, blog, etc.) around your software and track the number of users and installs you have. Keep good records.

Then wait. If your program is good, you keep your software updated in response to community requests, and it is popular enough, then eventually you will show up on some large companies radar and they will decide if it is worthwhile to buy you.

To make money in the mean time, you could offer customized or branded versions for a fee, or provide consulting services. All of this is small potatoes to a buy out.

The 3 keys to being bought out are:

1. Not open sourced - that way you have something they can't just take for free. There are exceptions, but they are less common.
2. Provable popularity and large community. This is actually your biggest asset in some transactions - your user base.
3. Good books and business management. If a company is going to buy you, they need to know what they are buying. Might be worth setting up a corporation and putting the domain name and other assets in there. Also provides you liability protection.

If you still want to patent it yourself, then go to www.Nolo.com and check out their information on Patent it Yourself. Probably the definitive guide on self patenting. You can probably find it at your library. As far as not researching it to feign ignorance later in hopes of a lesser penalty, I would say that is a really bad idea.

Answer 6

Once a public disclosure is made (shown to someone outside of NDA) then you have 1 year to file your patent application, so you have not forfeited anything but time.

As reluctant as I am to weigh in here, I have to point out that this statement may not apply outside the USA. Consult legal advice from a specialist and take a hard look at the costs/benefits of IP protection including what it would cost for you to defend it.

Answer 7

IANAL - Quick points if you do want to attempt a patent: 1) Don't disclose to anybody. It will undermine a claim of priority, unless you have a signed NDA. 2) You can probably trust your friends (I hope) and the 'competetion' won't find them to ask, but don't risk it. 3) Do not publish any details or loan out betas or anything till you have your application filed. 4) If you mention it on a website, it may get lodged in the 'wayback' machine even if you remove it later. 5) If you're serious, be paranoid and trust no-one! 6) Get a decent NDA! Do not give any details or answer any questions until it is signed by an officer of the company/org you demonstrate to or discuss the idea with. You can always back out of the arrangement later if you wish, but you can't back into it. Loads of horror stories, heres one: "Bob Kearns and the intermittant wash-wipe vs Ford"