Do I need to apply for a patent?


3

My friends, wife, and even a partner, are all urging me to at least apply for a patent to discourage others from attempting to implement similar and/or competing software.

Is this a worthwhile exercise? Does it actually discourage anyone from attempting to implement a similar idea?

Thanks

Patent

asked Nov 21 '10 at 04:16
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Igorek
886 points
  • What is the software? – Tim J 9 years ago
  • Software allows for dynamic allocation of resources for Windows Azure applications. There are two non-direct competitors (they offer much bigger suite of tools and services and do not concentrate on dynamic allocation/scaling like we do). There are also similar products for other cloud-computing platforms like Amazon EC2 – Igorek 9 years ago
  • Follow the link for the "patent" tag on this site and you'll find an awful lot of conversation about this subject. – Joel Spolsky 9 years ago
  • Unless you have an idea or algorithm that is significantly discernible from other industrial Engineering/ operations research or CS concept in this are it is not worth pursuing. Have you done any research on the patents in this area? – Tim J 9 years ago
  • The other thing to consider is the revenue from licensing your patent. I would probably use that avenue rather than thinking of it as something to discourage other companies from using. – Tim J 9 years ago
  • Would the simple act of applying for a patent (not necessarily getting one) and claiming "Patent Pending" deter anyone? – Igorek 9 years ago
  • Why is microsoft not buying your product? And when is Azure going to offer the classic machine role where you can run Azure like a standard desktop and RDP right in? – Frank 9 years ago
  • @Franky, Microsoft could probably develop my product in a heartbeat by throwing a dozen developers at it for a few months. They are not doing it because it puts them in a financially liable position (when they increase capacity they are profiting from it). Answer to your second question is less tricky: soon. RDP support has been announced and is coming very "soon". – Igorek 9 years ago
  • @Igorek: I edited my answer to address your question about provisional patents deterring competition. I hope it helps you in your decision. If something is unclear, let us know and we'll do our best to clarify any other issues. – Zuly Gonzalez 9 years ago

2 Answers


5

I would advise against getting a patent. We initially thought about getting a patent for our software product, but decided against it because of the following reasons:

  1. Cost of obtaining patent: It’s extremely expensive to get a patent. This is not one of those things you can do alone. You need to pay an attorney to do this, which means expensive attorney fees. When I was looking into it, a local patent attorney gave me an estimate of tens of thousands of dollars. And this was just for a patent valid in the US. He said for an international patent it could be as much as $75K!
  2. Time: Your time is better spent working on your product, and getting it out the door quickly. Time and energy spent on patent issues is time not spent on your product. And for us it was more important to focus on building the product than obtaining a patent.
  3. Cost to protect patent: Let’s say you do spend the $10K - $50K it’s going to take to get your patent, and you do succeed in getting it (after maybe 5 years of your initial filing). What happens if someone does infringe? Well you have to sue them. And that’s going to take another ton of money – just about anything that involves lawyers will be expensive. Are you prepared to spend yet another $50K (and I'm being conservative here) to defend your patent in court if it does come to that?
  4. Ease of bypassing your patent: From what I’ve read, software patents are actually pretty easy to bypass. Meaning that someone can come out with a similar competing product without actually infringing on your patent. There is nothing you can do about that.

In my opinion, the only time it may make sense to get a patent is if you are planning on getting VC funding, because this is something they look for.

You can get a provisional patent, which only costs about $100 to get. But it only lasts for a year, and is pretty much worthless unless you plan on following up with an actual patent filing. My advice is to not waste your time on either.

Also see these other patent related questions:

Filing a Patent What are the particulars of registering a software patent? To what extent are algorithms patentable, esp. in the US and Europe? How can startup be ready to defend IP/Patents if/when a competitor does infringe? How do you protect the key features of your product without a patent? Should I Bypass a Patent Search at this Stage of Product Development? There are lots more questions on this site about patents, just search for the patent tag.

EDIT:

will the $100 provisional for a year, deter any possible competition from entering the field? I'm not necessarily looking to litigate with anyone, but use it as a way of deterrence?

The short answer is no, not in the long run.

The long answer: Claiming patent pending may deter a fraction of the people that would otherwise "infringe" on your patent. The problem is that it will not deter everyone, so you are back at having to spend tens of thousands of dollars to defend your patent. The reason it won't deter everyone is:

  1. There is no guarantee that you will actually be awarded the patent. So some may take the risk, assuming you won't get it. And getting a patent can take a long time (several years).
  2. More importantly, a provisional patent is only good for 1 year. The purpose of the provisional patent is to give you time to file for a real patent, because filing for a patent takes a lot of time and money. If after that 1 year period you haven't filed for a real patent, you have nothing, and people are free to file for the patent themselves. Further, the information you provided in the provisional patent becomes public information. People can read your provisional patent, and are even free to file their own patent based on that information.

Think of it this way, obtaining an actual real patent doesn't deter everyone from infringing on someone's patent. We know this because patent lawsuits exist. So why would we expect a $100 provisional patent to deter everyone?

If all you are looking for is a 1 year head start, go ahead and get it, if it'll make you feel better. Just realize that after that 1 year, all bets are off, and you have absolutely no claim to it. Also, don't expect it to deter everyone from copying your software. You may luck out, and not have anyone copy it during that 1 year timeframe, but that doesn't mean it had anything to do with the provisional patent. It could just be that no one is interested in that right now, which means you would have been fine without the provisional patent.

EDIT 2: I just ran across this blog post on Provisional Patents. I thought it might be useful if you decide to pursue it.

I hope this helps!

answered Nov 21 '10 at 05:34
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Zuly Gonzalez
9,194 points
  • $50k is a very low estimate for how much it would cost in lawyers to defend a patent. – Joel Spolsky 9 years ago
  • @Joel: Yes, I agree. I wanted to give a very low estimate because I'm not certain of the cost (I tend to be very conservative in these cases). I've actually heard it can cost around $100K or more. But to be honest, $50K was enough to convince me not to get a patent - I don't have that kind of money :-) Do you have a more realistic estimate you can share with us? – Zuly Gonzalez 9 years ago
  • I believe there is a case coming before the US Supreme Court on the granting of software patents this term. Initial cooments from the justices did not seem favorable towards the granting of software patents. – Gary E 9 years ago
  • Most reasonably good patent lawyers are going to charge somewhere in the range of $500 an hour. They will be able to file a nuisance lawsuit for a few thousand dollars, but if the defendant decides to fight back, they are going to hit you with thousands of demands for documents that will take weeks to respond to... weeks of $500/hour lawyer time. – Joel Spolsky 9 years ago
  • Joel nailed it. You should instead be asking yourself, "do I have the financials to defend my patent against infringement?" If the answer is NO, don't patent. A patent ONLY provides you the legal right to defend IP. If you do not defend it, a patent is completely useless. Moreover, you do not make money defending patents. You usually recoup losses that you prove you would have otherwise made. And in most cases you do not even recover your lawyer fees, unless the defendant's infringement was extremely blatant. I'm paraphrasing from Patent Attorney David Pressman's book "Patent It Yourself". – Clint 9 years ago
  • Question still remains: will the $100 provisional for a year, deter any possible competition from entering the field? I'm not necessarily looking to litigate with anyone, but use it as a way of deterrence? – Igorek 9 years ago
  • I think the provisional patent application only serves to establish a timeframe for the patent - from what I recall it is only good for a limited time (1 year?) - you then need to file the "full" patent. This might make sense if you knew you would have time and money later on to "complete" the filing. – Tim J 9 years ago
  • @Clint - during a recent "day job" I worked for a small company that did make quite a bit of money from a settlement against MS. They are also now suing a few other large companies for patent infringement. From what I can tell the amount was in the tens to scores of millions range for the MS settlement. I don't think the owner spent more than that on legal fees... This surely is the exception rather than the rule - the plaintiff company had resources and the case was pretty strong/good and it was filed in a plaintiff-friendly jurisdiction. – Tim J 9 years ago
  • http://www.uspto.gov/patents/resources/types/provapp.jsp is a link to some information on Provisional Patents from USPTO. – Larry Smithmier 9 years ago

2

In addition to Zuly's excellent comment above, I would add that provisional patent applications aren't even published by the USPTO, so ANY deterrence value resulting from one would have to come from your own publication/marketing of the idea. But that in itself is counterproductive especially you want to keep your idea under wraps. The use cases for provisionals are generally for those who are pitching to investors and/or those who have the legal resources to challenge infringement (and reap substantial reparations).

All that said, the process of writing the provisional patent can help you flesh out your idea and serve as a proxy/blueprint for your software product or business plan. Balance the time spent on this kind of planning/designing with actually producing and developing your product!

answered Nov 22 '10 at 03:22
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Henry The Hengineer
4,316 points

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