Solo engineer trying to file patent: Can I get useful legal help for ~$1-2k? | Hacker News Reader

Solo engineer trying to file patent: Can I get useful legal help for ~$1-2k?

13 pointsnotnot8 comments

I'm a Silicon Valley engineer and I've developed a prototype for a computer peripheral. I don't know if it's patentable but it might be. I work a full-time job unrelated to this patent so I have more money than time right now and I'd like to pay to have someone help me determine if this idea is worth pursuing.

I'm looking for legal assistance at a cost of ~$1-2k to help me determine if the idea is patentable and to help write a patent.

Does anyone know if this amount of money could allow me to sit down with a professional in the field of technology IP and talk over the idea to determine which, if any, of the aspects are patentable and how to best approach writing the patent?

Any and all advice and perspectives are appreciated!

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There are two groups of people who can legally hire themselves out in the USA to give advice on patentability and help write a patent application (and also deal with the patent office for you on all matters related to to your application, including appealing decisions of the examiner).

These are "patent attorneys" and "patent agents".

One becomes a patent agent by meeting certain background requirements in science or engineering defined by the Patent Office, and passing an exam on patent law and procedure given by the Patent Office.

One becomes a patent attorney by satisfying the requirements for a patent agent and by becoming an attorney.

Since a patent attorney is an attorney, they can give advice beyond just patentability and can do more than just deal with the patent office. They can draft contracts to license you invention. They can draft confidentiality agreements to make people sign that you hire to help develop you invention. Once the patent is issued, they can litigate for you against infringers.

This comes with a price. Patent attorneys will generally cost more than patent agents. At the stage you are at, it doesn't sound like you need anything done that requires an attorney. You just need patent advice and reprentation at the patent office. Thus, since you are on a budget [1], you should take a look at patent agents.

[1] People not on a budget should probably consider patent agents more, too. I think that a lot of people just assume that they need a patent attorney to get a patent drafted and filed.

My recommendation would be to do a very simple patent search - I've always found the EPO Espacenet superior to the USPTO offering, Google's is even easier but less refined. Find a few applications for things in the region of your invention in the last few years and look at the patent documents. You'll see the names of the patent attorneys in the filing info. Contact them and ask them this question. If you can find the IPC code for your idea look at maybe 20 sets of metadata and look for similarities - some patent attorneys have specialisms.

Eg, https://register.epo.org/application?number=EP13189587 has BWT as their representative.

If you find the quoted prices too high and your offers of lower amounts are rebuffed then ask again here stating the offers you were given.

Ultimately you can submit a complete disclosure of your invention and then mould the actual application later so if you're doing this as a prelude to seeking funding then that is probably the cheapest way to go. A good patent attorney is likely to be able to get you a relatively useful patent that is actually more broad than your actual invention however.

https://oedci.uspto.gov/OEDCI/ might be useful, it's a USPTO list of those registered to practice with the USPTO, you can query by state, for example.

If you're after a UK agent feel free to PM me for further info.

This is good advice. Prior art can torpedo your application, so it makes sense to do a cursory search on your own nickel before paying a lawyer. My patent lawyers have always advised me to do my own searches.

I'm not a lawyer, but it's been my experience that if your invention combines A and B, and the examiner can find A and B in separate patents, then you're pretty much cooked. If you find both A and B in a single patent, then you'd better hope the patent is expired. If you find prior art, then your options are to give up or narrow your claims. That can be a gut wrenching, if you're already in the hole to a lawyer when you have to make this decision. At best, narrowing your claims still lets you protect the important elements of your invention.

If you find a "close" patent, then following its citations, and the patents that cite it, is a good way to chase down more possible prior art.

Now, I've found that it's touch and go whether the examiner will look outside the patent literature. As it gets easier and easier to search for anything that's been written about anything, fertile ground for finding prior art will of course expand. It could include the academic literature, so if you're a student, you might be able to get some (free) help from your friendly neighborhood reference librarian.

yes, $1-2k can get a lawyer to help you write a provisional but writing the full patent tends to be more like $5-10k, and that's assuming you do most of the work. a provisional gives you 1 year to write the full patent but at least starts the clock on first-to-file.

if you've formed a business entity around the patentable idea, a law firm may be willing to defer their compensation (if you pitch them).

but you only want to patent something if you think you can defend that patent in the future. otherwise it's an expensive paper trophy.

I've recently gone through the patent process and had the benefit of working with one of the most prestigious IP firms in New York. I'd be happy to share the process we went through, the instructions I was given, etc...

LinkedIn is in my profile. Reach out and include your email or IM - glad to help :)

Might want to check out https://www.upcounsel.com/, couple of friends used them for the startup incorporation process and said they loved them. Not sure if they deal with patent law but could be worth checking out.

http://www.avvo.com would be another great option. I have a few friends that work there, really cool office-space.

I haven't specifically dealt with patent lawyers before but most decent lawyers will give you a free consult just to go over the main points and give basic feedback. From there you can infer how much it will cost to go forward and what the process would look like.

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