What stage to patent and seek lawyers

[ArtRyumin]

Hi dear fastlaners,

I'm an app developer and we have 1 published app that's going thru the normal patent process so i have some experience here. We didn't seek any external funding for this app.

However a second app, that's i've been doing R&D for about over a year and drawing out the functionality and wireframing and is in a state where develoeprs can start creating. We would want to patent this application and it's functionality and uniqueness that seperates it from others in it's niche.

What i'm trying to understand and get my head around is
1) Do we put together a MVP with some graphics designed (some graphics form part of the uniqueness of this app) and file for a patent
2) Conduct out own patent research to see if there's anything like it and work out what is still patentable and push forward with development
3) get a provisional patent on what we have currently (concept art, written out user cases, UX/UI/

Thanks in advance for any suggestions, tips and actions. Also if anyone has dealt with a good IP lawyer that could work with overseas clients (we're in New Zealand) that would be very helpful also.

Thanks,
Art

 

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[David Young]

I recently had a sit down with a patent attorney and his basic advice was to focus resources on getting the product to be as good at it could be and only apply for the patent when the MVP has been clearly defined. Their justification for this was that if you apply for a patent too early the product might changed and then not be covered by the original patent. They also advised that we did our own patent search using the Espace portal or Google to ensure there was no obvious infringement.

 

[ArtRyumin]

I recently had a sit down with a patent attorney and his basic advice was to focus resources on getting the product to be as good at it could be and only apply for the patent when the MVP has been clearly defined. Their justification for this was that if you apply for a patent too early the product might changed and then not be covered by the original patent. They also advised that we did our own patent search using the Espace portal or Google to ensure there was no obvious infringement.

@David Young thanks for the insightful response that's very useful. I'll have a research on how to carry out searches on those portals you mentioned.

 

[David Young]

Searching is based around key word so it is useful to understand all the various techie terms that could be used. One useful hint I was told is that the Google patent searches more of the patent for the keyword than the espace portal. If you find a relevant patent it is good to then look at the all the other patents referenced in this first patent (citations) and all the patent that reference this first patent (cited). In the espace portal this is easily done- not sure about Google.

 

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[ArtRyumin]

Searching is based around key word so it is useful to understand all the various techie terms that could be used. One useful hint I was told is that the Google patent searches more of the patent for the keyword than the espace portal. If you find a relevant patent it is good to then look at the all the other patents referenced in this first patent (citations) and all the patent that reference this first patent (cited). In the espace portal this is easily done- not sure about Google.

Thanks for the tip! What currently doing is analyzing the 10 competitors apps (only 1 hinted on the unique idea but hasn't taken it far) seeing which features occur in others and from that gauging feature popularity based on the apps popularity (there could be a bias of how well they did marketing also) but this is rough. Then i'll get individual apps keywords by using AppAnnie searches and will use those keywords.

Would the same keywords be useful for the patent research or would it be the patent specific keywords on the patented functionality?

 

[David Young]

I am no a patent attorney so can only speak from my own experience. The key with any patent is the "Novel" aspect. Therefore the key word you would use in a patent search must reflect this novel element an all the potential variations on this. Therefore, it might well be that the novel elements relates the end user value rather than just the coding. In my previous post I suggested using techie term - as i have re read this it comes across as very limiting. I might be that the novel element has nothing to do with the app per say but the overall function achieved. In which case you need to look at the holistic function and not just the coding used to achieve it.

 

[Austin Ogre]

I am no a patent attorney so can only speak from my own experience.

Echoing David, I can only speak from my own experience.

1. At the companies I've worked for the advice from patent attorneys was that we shouldn't do our own patent searches. We should concentrate on building a solution and then let the patent attorneys do the research to determine if there was a patentable idea/ do the filing. Their argument was that nothing good could come from doing the research; if we were aware of someone else's patented work from our research 'the other side' might be able to claim we intentionally infringed on some aspect of their patents.
1a. As an entrepreneur, I've been much more focused on building out a quality solution. Patents can come later (I understand the argument that patented IP can enhance business value for investment purposes, but paying customers enhance it more IMO.. so I focus on that).

2. Most software patents are bullsh*t (and I say this as someone with a software patent). While I support defensive use of a patent (someone else suing you); offensive use is distasteful at best. It's also an incredibly expensive process and unless your planned business model is to become a patent troll, unlikely to be a profitable endeavor.

3. Novel and unique is relative. Patent experts are rarely experts in the areas in which they are working and most entrepreneurs aren't either. Grant of a patent doesn't make it defensible, a 'real expert' may be able to demonstrate all kinds of prior art. There are VC backed and community backed groups dedicated to invalidating patents they see as frivolous and they have some people with deep expertise volunteering their time and energy to assist.

4. Doing it better is still the first focus. There are plenty of TexMex places to eat in Austin. I've tried most of them and I only eat regularly at two. Why? Because they do it better. If you're leading, keep doing that. If you're not... fix that. I've been first to market with SaaS solutions and been passed... I've come in late and passed the established players. I understand the desire to protect your IP and I don't want to minimize it, but balance that effort (timing and expense) against building the best solution.

 

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[ArtRyumin]

Echoing David, I can only speak from my own experience.

1. At the companies I've worked for the advice from patent attorneys was that we shouldn't do our own patent searches. We should concentrate on building a solution and then let the patent attorneys do the research to determine if there was a patentable idea/ do the filing. Their argument was that nothing good could come from doing the research; if we were aware of someone else's patented work from our research 'the other side' might be able to claim we intentionally infringed on some aspect of their patents.
1a. As an entrepreneur, I've been much more focused on building out a quality solution. Patents can come later (I understand the argument that patented IP can enhance business value for investment purposes, but paying customers enhance it more IMO.. so I focus on that).

2. Most software patents are bullsh*t (and I say this as someone with a software patent). While I support defensive use of a patent (someone else suing you); offensive use is distasteful at best. It's also an incredibly expensive process and unless your planned business model is to become a patent troll, unlikely to be a profitable endeavor.

3. Novel and unique is relative. Patent experts are rarely experts in the areas in which they are working and most entrepreneurs aren't either. Grant of a patent doesn't make it defensible, a 'real expert' may be able to demonstrate all kinds of prior art. There are VC backed and community backed groups dedicated to invalidating patents they see as frivolous and they have some people with deep expertise volunteering their time and energy to assist.

4. Doing it better is still the first focus. There are plenty of TexMex places to eat in Austin. I've tried most of them and I only eat regularly at two. Why? Because they do it better. If you're leading, keep doing that. If you're not... fix that. I've been first to market with SaaS solutions and been passed... I've come in late and passed the established players. I understand the desire to protect your IP and I don't want to minimize it, but balance that effort (timing and expense) against building the best solution.

I was secretly hoping to find this someone or waited for you to make this comment. I had someone so interested in what i was working on that they asked to become a business partner and be involved in this project, for about 1-2 weeks was someone taken off the development side of things and focusing on researching to see if anyone else has done something similar (i knew for a fact there wasn't and if there was, i haven't found it so obvioulsy not great marketing, and i tend to live in the clouds a bit so didn't really care either i just want to create this thing.

I agree with the advice from those attorneys, the whole process was very dull, the patent lingo is very boring and there is so much jagan that by the end of the research i wasn't sure if the idea was already done or if it wasn't so i wasn't any closer to providing this info to the potential business partner.

From the info on this thread so far, it's clear to me that
1- push forward with development
2- with a MVP, patent attorneys can advise if there is anything patentable
3- can actually work against the person trying to protect thier product if they do patent research prior to having anything developed
4- very costly to do searches (i got quoted US$1600 for a prior art search report
5- is suing for patent infringement part of your business plan and do you have the funds for it? Im my case, no this goes outside what i want the business to be getting up to.

Don't remember what chapter MJ talks about it, but i can see how business partners can influence the business flow.

Thanks @Austin Ogre that gave me a boost and close the lid on this dulling research until we have a MVP and the first 1000 users at the least

 

[thehighlander]

Patents only cover execution and not an idea. I don't know the details but in many cases it will be possible to change a design enough to not infringe a patent.

Why are you getting the patent? If someone infringes it, are you prepared to sue them? A legal battle would be the least of my concerns when launching an app. There will be copycats so be prepared to do a better job of marketing and delivering value to your customers.