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[NorristownNative]

Essentially, I have the same situation as another individual (Mr. M -- see Page 8 of this Larger Topic) who posted in January 2005.  In short, the scenario is this: In hard copy I have a 10+ page outline of a web-based/software program suitable to the academic world, but like the person before me I have no programming knowledge whatsoever.  

Here was the advice given before from senior member Jeff:

"The first steps, in my opinion, are:
    (1) Find a qualified programmer.    
    (2) Have an attorney draft and the developer sign a software development agreement that protects your intellectual property interests in the software.  
     (3) Have the programmer develop the software.  
Once that is done, you can take the dual steps of:
    (1) seeking proper protection for your software and  
    (2) shopping the software around."

- Jeff  

Almost two years later, is this still the best plan of attack?  I had kicked around the idea of seeking out local grad students and trying to seduce them with the prospects of wealth (or maybe ten dollars by the end) so that they would take this project on and create the actual program.  Is that a viable option?  Or should I approach them with an agreement as well in order to protect my intellectual property?  Additionally, does attaching the software development to a grad school project create added problem or strings?  Is it better to market to companies?  

Lastly, at what point do I look to patent?  

I'll give dollars $31-$40 earned to the person who sets me exactly straight.

Thanks and God bless anyone who can help.  (In my head, many of your children could end up using this in school within the next ten years.)

[tryingtofile]

There's no need to wait to finish software development before patenting, assuming something in the system is patentable.

As far as programming, you won't find someone to do it for ten bucks.

If you get it done through a school as a class project, you will probably find that the school has, or at least claims, ownership of the final product.  You would have to be careful to prevent that (maybe by sharing any profits with them) in your agreement with them.

[JimIvey]

I think the issue with getting a programmer is that the standard for sufficiency of the descriptive portion of the application (called the "Detailed Description") must enable one of ordinary skill in the relevant technology to make and use the invention.  My guess is that Jeff was thinking the programmer could verify that you've met that standard by reviewing the patent application.  There's no need to have a working prototype to file a patent application.  Whether it's a good idea is an entirely different question.

Keep in mind that patent practitioners (attorneys and agents) are skilled in getting patents -- i.e., turning ideas into property.  How you profit from that property is beyond what most patent practitioners do.  Which of a number of possible strategies is a winning strategy depends on the marketplace and the particular party you're approaching with respect to your idea.  It's just too subjective to come up with rules of thumb that will work for everyone in every situation.

Sorry that's not more specific and concrete.

Regards.

[T. Neary]

JimIvey made this comment regarding the "when to patent" issue: "Which of a number of possible strategies is a winning strategy depends on the marketplace and the particular party you're approaching with respect to your idea.  It's just too subjective to come up with rules of thumb that will work for everyone in every situation."

I appreciate the responses, but this leads a novice to the following basic question: If I can begin the patent process, should I look to patent before I speak with potential programmers?  Or do I seek an agreement from an attorney/agent and then speak to programmers?

It would seem to me that the best choice exercises the proper prudence; rash actions (or steps taken without proper legal protecgtions) could risk potential troubles regarding ownership.  Is that a fair assumption?  (Of course, I ask this knowing the value of timing and time and the dangers of delay.)  Or is there some place I can look for discussion on this particular strategy concern?

Thanks.

[NorristownNative]

That last reply was mine (norristownnative); I forgot to log in first.  

[JimIvey]

You should be aware that any contract to help develop your invention can result in questions as to ownership.  In particular, the software developer would own the copyright unless your contract states otherwise.  It's tricky and complex.  I think it would be wise to get guidance from an attorney first.  You might think the attorney would be expensive, but the advice can be "here's a simple contract, go do this or that, then come back to see me for the next step" -- and that can be relatively inexpensive, particulary when compared to the cost of cleaning up after you've done things unwisely before seeing the attorney.

If your chosen path from idea to profit includes a patent application, particularly if rights outside the US are or may be desired, you'll want a patent application on file before any public disclosure, sale, or use of your invention.  For rights inside the US, you'll need to note that date (first public use, first public disclosure, first offer to sell -- by you or to you) and file your US application by the first anniversary of that date.

Here's my article on the timing of applications:
http://tinyurl.com/jakyr

Something to consider is that breach of an NDA (Non-Disclosure Agreement) can be a public disclosure, limiting your ability to acquire patent protection.  You can sue for breach of contract (the NDA), but it's unlikely that your remedy will be adequate.  So, it's not a bad idea to have your patent application on file before telling anyone, even under NDA.  However, that's not always practical, so reliance on NDAs is commonplace.

Regards.

[NorristownNative]

Thanks for your thoughtful response.  Again, however, one piece of information elicits more questions.  Here is a rather simple one I believe:

Regarding the patent process, JimIvey said, "If your chosen path from idea to profit includes a patent application, particularly if rights outside the US are or may be desired, you'll want a patent application on file before any public disclosure, sale, or use of your invention."  

My naive question #1 today is this: Does public disclosure include an IP attorney?  

For the record, I am currently spending most of my free time reading "Patent It Yourself" by Pressman, "Copyright Your Software" by Fishman, and many of the boards on this site.  So I thank you for your information, and I do appreciate the responses to the questions I have.  

Question #2: For a software program, which is spelled out in English explanations but has yet to be converted into programming language, would it be of any benefit to get a copyright while working on the patent application?  Or is that unnecessary?  

Thank you again.  More questions, I am sure, will be forthcoming as I try to teach myself more about this process.

[Bill Richards]

Regards Q1.  Disclosures to an attorney, in general, are privileged and confidential, and so are not a "public disclosure".  (I say "in general", because the disclosure has to be to that person "as an attorney".  If you stop someone on the street and disclose to him, the fact that he may be an attorney will probably not help you.)  So, if you go to a patent attorney to talk about your invention, it's not a public disclosure.

[JimIvey]

My naive question #1 today is this: Does public disclosure include an IP attorney?  

Bill answered that one correctly.  

Question #2: For a software program, which is spelled out in English explanations but has yet to be converted into programming language, would it be of any benefit to get a copyright while working on the patent application?  Or is that unnecessary?  

I'm not the most experienced here with respect to copyright, but my understanding is that copyright exists the moment your expression of your idea is "fixed" in a "medium".  While just a plain language description of the functionality seems more like "idea" than "expression" to me, there is some caselaw which suggests that functionality can be considered "expression" and therefore be protectable.  However, once you've coded up your software, you've got copyright protection automatically.  There are benefits to registering your copyright and registration may even be a prerequisite to filing a lawsuit to enforce your copyright, but it's not immediately necessary.

Regards.