Patent Questions: How to find an IP Attorney, What Will It Cost and When to File

Factual Questions
1

I’d like to apply for a business method patent for company I’m starting and have two questions:

  1. How would I go about finding a Patent Lawyer to help file my application? (I live in Manhattan.)

  2. What should I expect to pay?

  3. A friend told me that I have 12 months apply for a patent after the invention (business method) is disclosed to the public. As long as no one else can document that they came up with the concept previously, I’d be in the clear. Is that true?

Thanks.

2

The usual disclaimers - I’m a patent lawyer, but I’m not your lawyer. I’m not licensed in New York. This post is purely for general informational purposes, and you should seek advice particular to your own situation, as various exceptions may apply that could render the following statements inapplicable.

The USPTO maintains a list of registered patent attorneys and agents (an agent writes patent applications and negotiates with the USPTO on your behalf, but is not a lawyer and cannot represent you in court). You can just pick someone off the list, or you can ask any friends with patents for a recommendation, or you can ask other contacts (for example, a local university might be willing to tell you which attorneys/agents they use).

Ask the lawyer, but I think a business method patent is going to run $10k-$20k up front and then a similar amount spread over the next 4-10 years. Could be more.

Pretty much. In the US, there is a one-year grace period to file. If you’re looking to get a patent anywhere other than the US, then you want to file before you disclose, because they do not have the grace period (but for most of the world, you can get credit for the date you filed your US application, and file in the other countries up to a year later). But business methods are generally not patentable anywhere but the US.

That said, I would strongly encourage you to talk to a patent attorney before you disclose your idea. There may be aspects that would be patentable in other countries, in which case you would be well-advised to file first. Also, you may find in talking to an attorney that your idea is not patentable at all, and that could change your business strategy.

3

Is there any way to determine which attorneys on the list specialize in business method patents?

Thanks for you’re reply.

4

I am not aware of any attorneys who practice solely in the business method area, although there are bound to be a few.

The only way I can think of offhand to use the USPTO (as opposed to recommendations from friends, etc.) to find an attorney with a practice in this area would be to search the published applications and/or the issued patents that are related to your invention, and then look to see who wrote the cases. (The published applications don’t actually list the attorney, but it’s often in the correspondence address.) You may need to go to the Patent Application Information Retrieval site to look at the prosecution history to figure out who is signing office action responses.

Good luck.

5

Cotact your local ABA and tell them specifically what you are looking for.