Is Your Innovation Protectable?
Meaningful Patent Protection for Complex Software Innovations
Kwan & Olynick LLP
Machine Learning::Classifiers::UX/UI::IoT Security::FinTech::Mobile Security::Internet Technologies::Semi-autonomous vehicle software
Founders, CTOs, Senior Technologists, Software Engineers, Designers
A patent application often takes 2-3 months to draft and file; once filed it may take 2 years of negotiating with the Patent Office to get the application allowed
You need a partner with a proven record of successful patent negotiation, also referred to as prosecution, who can anticipate patent rejections and knows how to work with the Patent Office
Face-to-face meetings to discuss the innovation in great detail
PPATENT APPLICATION DRAFTING
Writing the patent application, including the patent claims that define the invention, and preparing the figures
PRIOR ART RESEARCH
Depending on the innovation, we may conduct a freedom-to-operate or patentability search
Nearly all patent applications are rejected multiple times; we prepare responses to the Patent Office rejections; conduct hearings with Patent Examiners to increase likelihood of allowance
Preparing and prosecuting trademark applications
Trademark Procurement For Your IP
Greater than 95% of patents are initially rejected. Only half will be allowed
Should You Patent Your Invention?
If you are in a highly competitive field, working with a technology that is cutting edge or changing rapidly, planning on eventually selling your business, or wanting to license its use, YES!
It is important to file an application as soon as possible to get what is referred to as an “effective filing date.”
Filing #patents for your #inventions can protect your investment. In addition, investors and potential acquirers look for a meaningful patent portfolio. Most #software patents can take years to be prosecuted, and are usually rejected multiple times. A seasoned patent attorney can work with the @USPTO US (Patent Trade Office) to amend and fine tune your patent claims.
How much does it cost?
There are varying rates between providers.
You should budget for the following:
$2,000 to $4,000 – Drafting and filing a provisional patent application for a software innovation.
$8,000 to $14,000 – Drafting and filing a regular (“utility”) patent application for a software innovation:
$7,000 to $15,0000 – Patent application prosecution (starts 18 to 24 months after filing). Cost varies widely depending on the number of rejections from the Patent Office.
First To File :: First To Market :: It Better Be You
The Nag Law Blog
Summary of Services
- Work with Patent Office to successfully negote complex software inventions
- Inventions: all aspects of software (e.g., data analytics, machine learning, classifiers, HCI, UX/UI, interactive TV, mobile security, IOT security, financial applications)
- Create strategic IP protection that aligns patent portfolio with company’s product offerings and market-distinguishing features; work with product teams to develop a narrative that adds value to the company (e.g., “These are our market-distinguishing features, our crown jewels, and here’s the IP we have that protects these innovations” vs. “Here’s a list of our patents and summaries for each”)
- Manage and perform all aspects of patent harvesting and mining (e.g., which innovations are patent eligible? which justify a prior art search?)
- Provide guidance on developing an IP budget and an inventor incentive program
- Manage US export compliance; open source management; trademark and copyright matters
- Build and manage worldwide patent portfolio
- Work closely with founders, CTOs, senior technologists, and designers, to ensure strategic and comprehensive IP protection
Notables: Worked with Sun Microsystems to develop IP for Java Virtual Machine; represented RSA in patent infringement case; built portfolio of 70 US and foreign patents from scratch for mobile and IOT security company; worked with lead engineers on IP for Samsung Smart TV; worked with lead hardware engineer on patents for DisplayPort standard; worked on machine learning and classifiers for semi-autonomous airplanes
Why Hire A Patent Attorney?
The ARTISTRY of a skilled patent attorney is in plain view when she or he meets with your inventors and can translate a couple hours’ discussion into a short series of claims. In the software environment, this requires a high level of technical and claims writing expertise.
The true VALUE of a patent attorney becomes more obvious after the filing when you get that rejection letter, which in greater than 95% of the cases, will arrive in your mailbox. With an allowed rate of only 50%, your response to the rejection, a narrowing of the claims, and the follow-up discussions with the USPTO patent examiner are critical.
Bonneville Flats Land Speed Race
Proven Successful Patent Prosecution
Rupak Nag is an Intellectual Property Attorney with extensive experience successfully preparing and prosecuting US and foreign patent applications. In alignment with overall patent portfolio strategy, he has effectively collaborated with Engineering and Products teams including developers, UX/UI designers, and engineers, and has performed transactional and licensing activities in cooperation with General Counsel and CFO’s.
Rupak has expertise with all aspects of US patent prosecution, has drafted over 200 patent applications, and prosecuted hundreds of applications in a wide array of technologies. He has worked closely with founders, CTOs, engineers, and designers and has assumed responsibilities of in-house IP counsel for numerous start-ups and small-cap companies.
Kwan & Olynick LLP