A question I receive fairly often goes something like this:
“Do you have any attorneys at your firm that specialize in software?”
In a nutshell, it really doesn’t matter whether the patent attorney has experience in the software itself or even the industry — It’s way more important that they have experience in patent law.
Not convinced? Think about it like this:
Would you rather your patent attorney have more experience coding software or help get your patent granted?
Here are things you should look for:
Completed technical acumen that a collegiate science degree offers
Completed law school, are legally trained, and have experience in the law
Taken and passed the federal USPTO Patent Bar Examination
The truth, as I’ve laid out, is that patent attorneys are already specialists.
This guide will end up being 10 Things To Look For When Hiring Any Patent Attorney instead of a guide made specifically for a software patent attorney.
QUICK NOTE: I do want to refer you to also read a closely related topic I wrote about a few months ago, called 10 Tips When Meeting With Patent Attorney. This guide, as is my hope, will serve as a predecessor to that article.
Tip 1: Do your own due diligence before looking for a patent attorney for software.
As the inventor of new and useful software innovation, invention ownership is the place to start with making sure you are really ready to rock and roll down the patent road.
Was your application, method, or computerized invention created on the job?
Are you using your employer’s equipment in any way?
Or has your boss asked you to work on solving a problem that this invention solves? Is your work closely related to your invention topic?
If so, there is good cause for you to book a consultation with a patent attorney to assess whether the invention would be owned by you individually or is likely to be owned by your employer.
It’s a state-by-state inquiry that may involve employment law subjects, but, at its heart, the invention may end up being owned by your employer, so no sense in you spending your hard-earned dollars investing in protecting it.
NOTE: Software giants (IBM, Microsoft, Google, Amazon, Facebook, etc.) are notorious for having very aggressive employment agreements. These are often times unenforceable but can be intimidating for many. Here’s an example (I’ve made highlights on the areas that are likely overreaching in many states):
“Employee agrees to and does hereby grant and assign to Company or its nominee his entire right, title and interest in and to ideas, inventions and improvements…(a) which relate in any way to the business or activities of [BIG SOFTWARE GIANT], or (b) which are suggested by or result from any task or work of Employee for [BIG SOFTWARE GIANT], or (c) which relate in any way to the business of activities of Affiliates of [BIG SOFTWARE GIANT], together with any and all domestic and foreign patent rights in such ideas, inventions and improvements. Employee agrees to execute specific assignments and do anything else properly requested by [BIG SOFTWARE GIANT], at any time during or after employment with [BIG SOFTWARE GIANT], to secure such rights.”
What? Your company doesn’t own your brain! This is crazy.
As you can see, they are attempting to stake a claim on anything in your head that “in any way” relates to their business “or their affiliates!”
Long story short, please consult a patent attorney about your software invention to make sure there are no risks to having the ownership belong to the mothership.
Inventorship is the next thing to clear up before even beginning your quest for a patent attorney. Make sure that if you invented with anyone else that they are involved in this process — and don’t be too proud here, as it could come back to bite you.
Think: if anyone helped to contribute to the inventive functionality or design of your invention, they need to be named on any subsequent application.
You’ll actually be signing a declaration or oath to that same effect, so you better have this right.
One of the most valuable things I get when I meet with prospective clients is a nice timeline and facts around the date of conceptions, motivations, parties involved, and a detail of any disclosures to third parties.
The main reason for this is to assure there are no statutory bar issues.
Remember: if your software or computer invention was published or sold more than a year ago, it is ineligible for patent protection.
Yes, this includes ANY publication like Kickstarter, Facebook, YouTube, Instagram — any place where a 3rd party (and especially other inventors like you) could see it and read it.
If you’re concerned about disclosure, book a consultation with us ASAP to see if you are still eligible to file.
Next, don’t forget to take the 15-20 minutes and do a natural language search (i.e. Google, Bing, Yahoo, etc.) to see if your invention has already been published or is on the market. You’ve got to convince yourself that your invention is new before hiring someone to do the same.
Here is a quick guide to using Google’s awesome patent search tool (I’m using software patents on “blockchain” as an example):
You have access to a lot of powerful research. In the red highlight, you can enter in any natural language keyword— I did “blockchain”. In the green highlighted area, you can sort by priority date (meaning how far back do you want to search).
As an example I put in “2018” and it defaults to 1-1-2018. That means you will see any applications that were filed after 2018. Lastly, the blue area lets you pick “design” or “utility” Patents here – the Google calls “Utility” patents “Patent”.
Tip 2: The initial consultation should have you fired up!
There is a bit of an internal battle I have between offering a paid or free consultation. So I have settled on both!
I’ve decided to have our prospective clients meet with a trained “advisor” (non-attorney) who will speak with them at no cost, take in all of their information, and confirm that they are a good fit for our firm. Then we have the clients pay to speak with a patent attorney.
I will likely someday write an entire blog on this topic of paid and non-paid consults, but what it allows us to do at the firm is qualify prospective clients and get a commitment (skin in the game) when they put up some funds for the consultations. And you know what?
These consultations blow our socks off!
These inventors, when they are invested, bring their A-game. They send us photos, sketches, prototypes, written descriptions, and even business plans in advance of our consult. The quality of the consultations (since we started charging) has skyrocketed.
I do recommend that even if you are happy after the initial consultation, you should meet with a few different attorneys at different firms. You’ll get the idea of how each firm has its own culture and dynamic. See what fits best for you and your invention.
Don’t forget that oftentimes a law firm is interviewing you just as much as you are interviewing them, so make sure you bring your A-game too.
A great patent attorney will ask you questions. Not just, “Can you spell your last name please?”, but very detailed, nuanced questions that get you thinking, like, “So, what do you suspect will happen to this edge structure over time? Have you done fatigue testing?”
No matter how substantive, how timely, or professional, if you just didn’t jive with the patent attorney, keep looking! Making sure you can work with them long term is key. You will basically be entering into a 2-3 year marriage with them — it’s a commitment.
And make sure you get pumped! If you’re done with the consult and you’re not smiling, excited, and motivated, move on.
Tip 3: Confirm that they are a patent attorney — not an agent or patent “engineer.”
Know who you are talking to! Patent attorneys have gone to law school and understand what it means to draft and provide legal opinions as to whether to even file a patent application at all.
I won’t take time here to go through the differences — I actually already went through this in a prior blog article and have created a great video that will walk you through the differences:
While it hurts to burst someone’s bubble, sometimes it’s exactly what they need to hear: “As you have described your invention here, in its current state, I do not recommend you file a patent application. Let’s look to see how you might redesign or design around the prior art.”
An attorney is the only one of the two that can provide you with a legal opinion and recommendation for next steps to take.
I often get thank yous down the line, as I have likely saved them tens of thousands of dollars.
Over the past several years, there is a growing term that I despise: patent engineer. To me (and hopefully you as well after reading this) that can instead read it as: non-attorney, non-agent. This means that this individual is not only untrained in the law, but likely doesn’t even have the background in patents.
Titles can throw people off. Don’t let it throw you off. Dig into credentials and experience and the truth will be revealed.
Tip 4: Find a patent attorney that is not a know-it-all.
As I’ve specialized my law practice from Bold Patents to Bold Patents, I’ve realized that by focusing on just one area of law, there is so much more to learn and hone my craft at. I honestly learn so many new things every single day.
As with inventors, when they first get started in a specific area, they can get lost in it. There is a world of expertise there, and, while rare, it’s a truly beautiful thing to become an expert — not only for themselves, but for others, as they become a very valuable resource for non-experts around them.
Long story short, I encourage you to find a patent attorney who is not afraid to say, “Hmm, I’m not sure, I’ve never heard of that…” or “I didn’t quite understand what you meant when you said…”
Software and computer-related inventions are a perfect example of a time when a patent attorney needs to take a slice of humble pie.
High-tech patent applications involving software, applications, networks, and data are types of inventions that are moving at such a fast pace that the software patent attorney will need to be walked through the invention. They also need to have a clear mind when reviewing a new invention in this space.
Having bias from prior high-tech applications from years past will cause more confusion and implicit bias. The Attorney must remain vigilant to being open, honest, humble, and a questioner.
As the inventor, you will need to be very patient with your software patent attorney. In essence, they (if they do their job correctly) will be forcing you to explain any possible fraction of functionality of what you’ve created along the way — assumingNOTHINGabout the process, method, and system.
A patent attorney with a learner mentality will be one that will help you write a bulletproof patent application that doesn’t make assumptions, doesn’t leave the examiner guessing, but instead lays it all out in the open.
Tip 5: Look for a patent attorney that has a business perspective.
Make sure that your patent attorney doesn’t have a protruding fin coming out of their back, let alone long sharp teeth lurking behind that smile.…
Patent attorneys are humans, and, left unchecked, they can turn into sharks before they even realize it. Don’t get caught in their water.
If the only thing on your patent attorney’s mind is to help you get that piece of paper on the wall that says “Patent Granted,” you’ve got a bit of a problem….
(Queue Jaws theme.)
You’ve got to find a patent attorney that can help you see the forest from the trees and fully appreciate the fact that the patent is only half (or often less) of the game. (At least, where “the game” equals “making money.” Let’s not hide it!)
This is especially true with software patents and high-tech patent attorneys as there tends to be a lot of hype around new and innovative software concepts. Just think back to the dot-com bubble of 2000.
When it comes to industries like these that move fast, where the latest and greatest internet product is phased out in a matter of 2 or 3 years, acquiring patent rights on that innovation may not be the best thing long-term — if the technology is changing so quickly that your innovation, while patented, has very little if any market value.
It becomes critical to make sure that the software, computer, network, or blockchain invention you have will have marketability in the next 20 years (or at least lead you to further innovations down that road).
I talk at length about this concept of a Patent Success Matrix, whereby an inventor really needs to consider both patentability and marketability in order to determine how successful their invention will be. Visit our page here to learn more!
Here is how that chart looks to give you a brief idea:
As a software inventor or entrepreneur, your end game is to get wealthy, right? Your patent attorney needs to understand your game plan, and therefore should appreciate the business plan behind your efforts.
Don’t believe that your patent attorney should help you do the things you need to do to make your product or service fly… but they should help connect and refer you to people who can.
Tip 6: Your patent attorney should set clear, realistic expectations.
Be on the lookout for a clearly articulated communication policy. You don’t necessarily need a 50-page tome process that is impossible to read. Just make sure you understand what they will deliver and when.
You should be given a clearly articulated scope that describes what work they will perform for you for your money and when they will do it. Here’s an example:
One of the things I hear from clients that have fired their past attorneys is that their attorneys had overpromised. This is usually the case when the attorney is working with a larger organization that promises to “do the legal work, business work, marketing, and licensing… while you just sit back and relax in your Lazyboy.”
Don’t get bamboozled. Read your contracts, listen for your patent attorney to tell you what they will do, when they say they will, and hold them accountable.
Tip 7: Communication is key — make sure your patent attorney is responsive.
In the realm of invention, things move quickly and time is of the essence. So you’ve got to find a patent attorney that will get back to you within 2 business days or sooner.
In an era where instant feedback is sometimes assumed, 2 days can seem like an eternity. However, keep in mind, this is the substantive response — not the knee-jerk responses and emotional kickbacks that fill all of our social media and texting platforms.
A good patent attorney will absorb a question, think about it, and provide a thoughtful response in a timely manner.
In addition to the thoughtful response, the patent attorney should find a way to let the client know they are working on a response, and can (typically same day), find a way to say something like: “Thanks for your question, I am going to get back to you on it by Tuesday end of the day”.
This type of response helps to diffuse your angst and provides the highest quality possible.
If you are worried, unclear, or disagree with your patent attorney’s fee structure, you need to move on.
A patent attorney should be able to provide clear definition around their flat-fee or hourly-fee structure. There is so much tied to finances, especially for a bootstrapped startup or company launching a new product. This step cannot be skipped.
While it may seem like an accounting function, it’s really not. The client (as we saw in step 6) must know what work is being done, and as well as the work is articulated, it should also be broken down to cost in the same level of clarity.
Tip 10: What should come before you file? The patentability search
Another mega red flag should be waving aggressively if your patent attorney says: “Let’s get your invention filed right away”.
Without first doing a patentability search, you may as well be flying blind. The patent attorney will need to write up, have drawings produced for, and spend hours drafting claims about your invention all at a surface level — not a great idea.
The goal is not to have all of your invention discussed, drawn, and claimed; instead only the novel functionality and design should be discussed, drawn, and claimed. Therefore, by doing a patentability search first, the patent attorney will know what to focus on.
As I talk about at length in my blog on patentability searching, I go through the major aspects of the search and report: eligibility, novelty, non obviousness, and utility.
When looking for a software patent attorney remember that all you really need is a “patent attorney” with experience.
If you keep these 10 tips in mind, you’ll be set up for success when looking for a software patent attorney — or really any patent attorney you may need.
Do your own due diligence before looking for a patent attorney for software.
The intial consultation should have you fired up!
Confirm that they are a patent attorney – not an agent or patent “engineer”.
Find a patent attorney that is not a know-it-all.
Look for a patent attorney that has a bussiness perspective
Your patent attorney should set clear, realistic expectations.
Communication is key – make sure your patent attorney is responsive.
Assure clear billing practices
The invention disclosure matters!
What should come before you file? The patentability search
Let us know: what did you find most helpful about this article? Did these tips help you find a patent attorney to help you with your software product (or any product)?
Legal Note:This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.
Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.