JSonnabend

[patentologist]

Hi Jim and the others:

I am interested in getting a patent (or a few) on improving searching utilizing metrics not currently being used or at least not published to the extent of my research. The motivation to get a patent is really to license/sell the technology/patent rights to the major players in the search world.

i have the funds for investing in patent protection, but dont have the funds to develop the product at a full scale.  I may be able to develop a test prototype proving the benefits of my invention.

What should my next step be if I want to capitalize on my patent pending invention.  I know I dont have rights until the patent issues, but if I contact the major players and say that if the patent issues, I can recover profits from sales etc. b/c you were on notice etc.

Are there companies that buy IP assets and then try to license them to corps? Who are they? Any examples?
Also, will a venture capitalist firm be willing to support the idea?

[andromat]

This article might contain some relevant information or even answer a few of your questions:

http://www.nytimes.com/2009/09/21/technology/21patent.html?_r=1&ref=us

Hope it helps.

[patentologist]

thanks,
seems like an issued patent holds a lot more value than one in prosecution (maybe cause the scope of the claims is unknown).

Is going through the accelerated prosecution route a good expenditure in terms of time v/ money. (in the computer search algorithm domain)

[ChrisWhewell]

Hi Jim and the others:

I am interested in  ....

I'd look to partner up with someone who has the funds to reduce it to practice and put it in use.  This enables one to judge true commercial potential and to document success, if it successful.  A patent on a new search engine technology that works and is proven in the field will be more valuable from a sale-ability standpoint than an unproven one.

By reducing it to practice, you'll also have the benefit of learning the shortcomings of the invention in order that you may improve upon it.   One wants to avoid the situation where they patent something without actually making and using it, because a third party may come along and learn the shortcomings, and they themselves create and file and obtain a patent on the truly-useful (and more commercially-valuable) improved version of your original invention.  Then you're in a pickle.

[patentologist]

I agree with your insight 100%.

That was wonderful.  Now, how do I find someone who's willing to invest in it.  The only problem with the idea is it is not so simple to execute.  Implementing it will require a lot of trial and error to see what parameters work best.  However, once the final product is made, it will significantly improve the search results.

the problem with the idea is I don't have the expertise to implement it. Also, if i look for raising capital/partnering with someone, unless they are also in the business of searching and have employees that can make the invention, they won't be able to solve the issue of bringing it to implementation.

If i built a test prototype only using v. specific examples and showing how the results improve from there, would that be enough? or does it need to be a full scale implementation.

[JimIvey]

Since I was mentioned by name, I feel compelled to say something.  Looks like you've been getting good responses so far. 

Here's my old FAQ on the topic:  I have an idea worth millions. Now what?

Most of it is information you already have, but there might be some details in there not yet mentioned.

I think I mentioned somewhere before that it's sometimes a good idea to sell the IP (even if just an application) to a hungry second-place competitor.  In the context of trying to sell to Google, you might consider MSFT as they've been spending much on marketing their new search engine (as the "first ever decision engine" -- I have no idea what that means).  I have no idea to what extent Yahoo! is still (and will still be) competing in the search engine market.  Or, if you plan to sell to an IP hedge fund, you can make that pitch to them -- approaching MSFT or another hungry competitor of Google's.

Regards.

[patentologist]

Jim,
Thanks for the article.  Because I'm totally clueless with how corporate America functions, once I file a patent app, and I go to say, MSFT asking them if they r interested in my technology, what do I have to stop them from practicing my invention? My understanding is that they don't need to worry about infringement until my patent issues.

Also, who at MSFT do I approach and how do I go about doing that? If I want to use a middle man (IP broker firm), who are they and how do I contact them?  Can I offer them an equity share for covering the patent costs?  Are they likely to sign an NDA prior to me  filing a patent app.

[MYK]

How are you going to find out whether they are using your idea or not?  Whether before or after you get a patent?

[patentologist]

MYZ:

As the typical IP troll complaint filed in the eastern district of Texas reads "From belief and information"

On a serious note, I can't but when I sue and go through discovery, they will be more than willing to settle instead of exposing their algorithms

[JimIvey]

Because I'm totally clueless with how corporate America functions,

Remember that corporations make decisions through people, human beings authorized to speak on the corporation's behalf.  Accordingly, corporations are as unique as the people who make decisions on their behalf.  There is no single, unified "corporate America" with predictable behavior.

once I file a patent app, and I go to say, MSFT asking them if they r interested in my technology, what do I have to stop them from practicing my invention? My understanding is that they don't need to worry about infringement until my patent issues.

You have two and only two options to control the behavior of MSFT (or anyone else):  issued US patent or enforceable NDA.

Also, who at MSFT do I approach and how do I go about doing that? If I want to use a middle man (IP broker firm), who are they and how do I contact them?  Can I offer them an equity share for covering the patent costs?  Are they likely to sign an NDA prior to me  filing a patent app.

Others here have provide links to articles listing some of the patent hedge fund players.  Note that they won't go to MSFT on your behalf.  If they do anything at all with your patent, they'll buy it from you and assert it on their own behalf.

The idea of approaching MSFT is not that you have the power to stop them from using your technology now but rather than they might be very interested in the ability to stop Google from using your technology in the future.  So, they might want to buy your technology from you (including any pending applications) in hopes of asserting whatever rights you could have acquired.  In order to have those rights some day, they might want to purchase those rights from you now rather than later, despite the application being merely an application at this point.

Of course, Google might be willing to buy your technology just to keep MSFT from stopping them from using it.  There, you have a bidding war.  Lucky you.

Naturally, this assumes that your technology is "all that" and both Google and MSFT believe that.

As to whom to contact within MSFT, I would look for someone related to Bing and on the marketing side.  But, you have to have your pitch that your technology will provide so much better results than Google's that Bing will grow market share, and the pitch has to be very persuasive.

And, lastly, remember that all this tech transfer stuff is beyond what I do.  This is all speculation and conjecture from an interested observer of these sorts of things.

Regards.

[DogDayPM]

On a serious note, I can't but when I sue and go through discovery, they will be more than willing to settle instead of exposing their algorithms

Dream on.  In IP litigation its fairly common to seal documents.  The other side will release documents responsive to discovery RFPs or make their reply to Rogs only to your litigators and others specifically named as authorized to view the sealed documents.

[ChrisWhewell]

Since I was mentioned by name,

good point about going after the #2, 3, or #4 players.  I'll add that in order to be the best, one must beat the best.   If an entity is #1 in a field, that means it must keep beating itself to remain on top but it can be difficult to have an objective view of onesself.  One advantage #2, or #3, 4 have is that they can clearly see what it is that they have to beat in terms of strengths, weaknesses, opportunities, etc.  Also, with patent in hand, another strategy can be to look at litigation dockets and if appropriate approach defendants with your IP, if it can be used as a bargaining chip.  This requires access to the business leaders who are in decision-making roles relative to what Counsel is told to do and getting to those guys requires an intermediary having their phone number or who lunches with them, etc.