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(Message started by: Dov Oshri on Jun 20th, 2006, 7:21pm)

Title: Business Process Patent
Post by Dov Oshri on Jun 20th, 2006, 7:21pm
Dear James,

I have just completed a successful feasibility test for a new innovative business process. The end product can be a software or a web service. I choose the web service as my priority.

•What do I need to do to register a patent?
•Do I need to complete the software for a patent or documenting the process will be enough?
•Any recommended references for patent submission process?
•What is the cost of the process?
•How long does it take?
•Venture Capital firms do not agree to sign a NDA. Do the patent submission provides me protection before approval?

Sincerely,

Dov Oshri




Title: Re: Business Process Patent
Post by JimIvey on Jun 21st, 2006, 12:03am

on 06/20/06 at 19:21:58, Dov Oshri wrote:
•What do I need to do to register a patent?

You file a patent application and go through an examination process and eventually get a patent issued.  There's much more to it than that.  If you want to know more about how to actually write a patent application, there are books on the topic.  It's far too complex to describe here.


on 06/20/06 at 19:21:58, Dov Oshri wrote:
•Do I need to complete the software for a patent or documenting the process will be enough?

Documenting the process in enough detail that someone of ordinary skill in the relevant technology can make and use your invention, along with any preferred implementation details, should be enough.


on 06/20/06 at 19:21:58, Dov Oshri wrote:
•Any recommended references for patent submission process?

I don't think I have enough information to recommend anything.  I don't know any "invention submission process" that I'd recommend.  I don't know enough about your technology to recommend a tech transfer strategy.  If you're asking for a recommendation as far as a patent practitioner to help you, I offer such services and I'm sure others who post here do as well.  If you want recommendations of good practitioners beyond those who post here, I might be able to provide such a recommendation.


on 06/20/06 at 19:21:58, Dov Oshri wrote:
•What is the cost of the process?

There are just too many variables to really give any meaningful estimate.  For a typical "business process" patent, you should expect to spend around $8,000-12,000 for practitioner time alone -- Patent Office fees can vary from as little as $500 but most business process patents tend to include a large number of claims.  Patent office fees can top another $2,000.  Each time the Patent Office rejects your application (and they'll most likely do that at least 3 times, perhaps more), you can expect to spend another $3,000-5,000, depending on the number of claims argued by the examiner and the number of prior art references relied upon by the examiner and, sometimes, upon the number of separate, independent grounds (arguments) for rejection.  The good news is that your first rejection to which you must respond may not be sent out for 2-3 years or more -- plenty of time to talk to investors and have a decent shot at getting your idea off the ground and making the expense not such a challenging issue.


on 06/20/06 at 19:21:58, Dov Oshri wrote:
•How long does it take?

It varies.  I would expect 5 years minimum to get your patent issued, if it really is a business process patent (whatever that means -- the category is more or less meaningless in patent law, but just about everybody uses the term so I give up).


on 06/20/06 at 19:21:58, Dov Oshri wrote:
•Venture Capital firms do not agree to sign a NDA. Do the patent submission provides me protection before approval?

Yes.  and No.  You can't sue anyone to stop infringement until your patent issues.  So, infringement during pendency is more or less free.  However, once your application is pending, public disclosures, uses, and offers to sell your invention will not interfere with your ability to get a patent for your invention.  Such public events prior to your application, including plausibly a disclosure to a VC without an NDA, could interfere with your ability to get a patent.

I hope that helps.

Regards.

Title: Re: Business Process Patent
Post by Mark_Nowotarski on Aug 16th, 2006, 4:41pm
I would only add to Jim's excellent reply that the patent articles on Wikipedia can help you with the very basics.  There's even an article on "business method patents".

The USPTO also provides a free "Inventor's Assistance Center" to help guide inventors through the patent process.  You can find them at uspto.gov.  It's a free service, but they can only help you with procedural questions.  They can't give advice as to whether or not something is patentable or what patent agent/attorney you should use etc.

Title: Re: Business Process Patent
Post by JimIvey on Aug 17th, 2006, 11:46am

on 08/16/06 at 16:41:55, Mark_Nowotarski wrote:
I would only add to Jim's excellent reply that the patent articles on Wikipedia can help you with the very basics.  There's even an article on "business method patents".

Thanks for pointing that out.  The article had a bit of an EFF slant, so I filled it out a bit to give it less "spin" -- perhaps some will think it spins the other way now.  But that's the nature of a community-based wiki thingy.

Here are the articles:
http://en.wikipedia.org/wiki/Business_method_patent#United_States
http://tinyurl.com/on8ft

Regards.

Title: Re: Business Process Patent
Post by IPL61003 on Oct 25th, 2006, 3:14pm

on 06/21/06 at 00:03:07, JimIvey wrote:
You can't sue anyone to stop infringement until your patent issues.  So, infringement during pendency is more or less free.  However, once your application is pending, public disclosures, uses, and offers to sell your invention will not interfere with your ability to get a patent for your invention.  Such public events prior to your application, including plausibly a disclosure to a VC without an NDA, could interfere with your ability to get a patent.

Would a provisional patent application provide the same rights protection, as the above-mentioned regular patent application does, for the one-year period prior to a follow-up regular patent application?

I have what I think is a novel and non-obvious e-commerce invention which I wish to patent and which I plan to use publicly very soon (within 30-60 days).  The personal or business use of the invention will lead to at least partial, if not full, public disclosure.

I am interested in using a provisional patent application to get full protection of my invention for up to 12 months, during which I plan to publicly use the invention and also approach prospective funding sources and corporate licensees with the invention.

I intend to file provisionally first since I am not confident I've drafted the application well enough for a regular patent application, plus I need to defer costs and also gain a few months of much needed time which I am currently very short of.

Will a provisional patent application provide me the 12 months of rights protection, as effectively as a pending regular patent application does, assuming that shortly after filing the provisional patent application, as aforesaid I begin to use the invention publicly and conspicuously, approach potential licensees and interested funding sources, etc.?  

Given that many VC firms and big corporations are not eager to sign NDAs, would a NDA still be necessary after an invention's  provisional patent application is filed?  Will the NDA provide any significant, additional rights and benefits beyond those that an already filed provisional patent application is conferring on the inventor?

Regards.

Title: Re: Business Process Patent
Post by JimIvey on Oct 25th, 2006, 5:12pm

on 10/25/06 at 15:14:56, IPL61003 wrote:
Would a provisional patent application provide the same rights protection, as the above-mentioned regular patent application does, for the one-year period prior to a follow-up regular patent application?

Only if written to meet the same legal standards applicable to real applications.  Then, yes.  Otherwise, no.


on 10/25/06 at 15:14:56, IPL61003 wrote:
I have what I think is a novel and non-obvious e-commerce invention which I wish to patent and which I plan to use publicly very soon (within 30-60 days).  The personal or business use of the invention will lead to at least partial, if not full, public disclosure.

If you only care about the US, you have the 12 months without filing anything.  It's built into US patent law.  The provisional application is unnecessary for that purpose.


on 10/25/06 at 15:14:56, IPL61003 wrote:
I am interested in using a provisional patent application to get full protection of my invention for up to 12 months, during which I plan to publicly use the invention and also approach prospective funding sources and corporate licensees with the invention.

Okay.  See above.


on 10/25/06 at 15:14:56, IPL61003 wrote:
I intend to file provisionally first since I am not confident I've drafted the application well enough for a regular patent application, plus I need to defer costs and also gain a few months of much needed time which I am currently very short of.

Oops.  No good.  If your application is not done "well enough" to be a real application, it's not done "well enough" to provide the sort of protection you're looking for -- except that you have the protection even without the provisional, within the US at least.


on 10/25/06 at 15:14:56, IPL61003 wrote:
Will a provisional patent application provide me the 12 months of rights protection, as effectively as a pending regular patent application does, assuming that shortly after filing the provisional patent application, as aforesaid I begin to use the invention publicly and conspicuously, approach potential licensees and interested funding sources, etc.?

Maybe.  See above.


on 10/25/06 at 15:14:56, IPL61003 wrote:
Given that many VC firms and big corporations are not eager to sign NDAs, would a NDA still be necessary after an invention's  provisional patent application is filed?  Will the NDA provide any significant, additional rights and benefits beyond those that an already filed provisional patent application is conferring on the inventor?

The short answer is, Yes, the NDA would provide additional benefits, especially if the provisional is inadequate and provides no benefits at all.  During the pendency of your application (after filing but before issuance), you have no enforceable patent rights at all.  An NDA would prevent the company from (i) using the information (competing against you) or (ii) disseminating the information -- without your permission.  

The only way you're protected without an NDA is that any public descriptions, uses or any offers for sale won't interfere with your ability to eventually get a patent -- that's all.

I hope that helps.

Regards.

Title: Re: Business Process Patent
Post by Isaac on Oct 25th, 2006, 5:20pm

on 10/25/06 at 15:14:56, IPL61003 wrote:
Will a provisional patent application provide me the 12 months of rights protection, as effectively as a pending regular patent application does, assuming that shortly after filing the provisional patent application, as aforesaid I begin to use the invention publicly and conspicuously, approach potential licensees and interested funding sources, etc.?  


No.  A provisional patent only protects your right to file a non-provisional application by reserving a priority against prior art and 102(b) bar activity.   A provisional application cannot form the basis of any action against infringement.   On the other hand, a published non-provisional application may provide the opportunity to assert provisional rights against infringers for activities  prior to the issue of your patent after your patent actually does issue.

The words "fully protect"  should not be used to describe a provisional application without some substantial  qualifiers.


Title: Re: Business Process Patent
Post by kempster on Aug 18th, 2007, 11:34am
Gents, hopefully you'll allow me to pick your brains on this subject also as I am trying to work out what manner of protection my proposal needs.

I have an idea for a business method/process. What I mean by this is that I'm not inventing a physical product, but I think I may have come up with an idea of taking an existing service to market in a unique way. I need to present this approach to either VC's or current service providers, and obviously want the idea to be protected if possible.

From what I've read a Patent application seems most applicable, and I guess during the search process I'll find out if anyone else has come up with the same method.

Would you agree that Patent rather than Copyright is the best way forward? I am UK based, but the service & selling process would be an international one, particularly in the US, UK, potentially Australia.

Any views appreciated, cheers

Kempster

Title: Re: Business Process Patent
Post by JimIvey on Aug 20th, 2007, 3:45pm
The copyright vs. patent question is the easiest, so I'll start there.  It's extremely unlikely copyright will help you much.  It's just not designed to handle that sort of thing.

The search process that will give you some sense of your chances won't happen for years unless you undertake to do it yourself (or instruct your practitioner/firm to do it for you).  It's not required but can be helpful.

Regards.



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