We are in a new space that's at the cross-roads of mobile advertising/search/(image-search)/(location-search)/(augmented-reality), and need our business process evaluated for 1) patentability and 2) non-infringement of existing patents from Google et al in the space. How much should we budget for this evaluation, and who are some recommended IP attorneys who work with startups?edit: "need our business plan"
The low cost estimates of some of my colleagues surprise me. Frankly, I could not begin to give you an assessment of costs without knowing a great deal more about your business, its technology, and its competitors. It is critical for any start-up company to lay the proper legal foundation---particularly with regard to intellectual property rights. If your business infringes patents or other IP rights held by others, you could face a financial disaster. Thus, the most critical issue for you is to obtain a non-infringement analysis in the countries in which you intend to operate (and in the age of the internet, no one operates only in the United States). The cost of non-infringement analysis depends on a multitude of factors, including the nature of the technology, the industry, the identity of competitors and level of competition, the extent to which your technology builds on or combines existing technologies, the anticipated market for the product, the geographic locations of the company's operations, and many others. Further, the cost also depends on who you retain to perform the analysis. Many start-up companies make the mistake of retaining relatively inexperienced patent prosecution attorneys--attorneys or firms who primarily focus on procuring patents. This is generally a lower cost option than retaining attorneys who specialize in litigating patent cases. But in truth, you are better off if your non-infringement analysis is conducted by patent litigation counsel---patent prosecution attorneys often do not have the litigation experience necessary to make the hard judgments about non-infringement issues. While litigation counsel generally are more expensive than patent prosecutors, you will get a better and more reliable non-infringement analysis if you use someone who has extensive litigation experience. And of course, often the best option is someone with patent prosecution experience who also litigates. Finally, be wary of anyone who says this work can be performed at a "flat rate" or for a few thousand dollars. Experienced, competent patent litigation counsel will ordinarily refuse to handle this work at a flat rate, and in truth the cost cannot be predicted without knowing much more about the specific facts and circumstances. But it is not unusual for the cost of a non-infringement analysis focussing only on the U.S. market to exceed $50,000. As in many other areas of life, when you engage in non-infringement analysis you "get what you pay for."
The cost for either patentability or non-infringement can vary widely. However, patentability can have less variability than non-infringement.
For patentability, most IP owners will limit the search to countries that might have the highest likelihood of relevant art. For non-infringement, many IP owners will limit the search to the most important competitors. After the search, and a brief review of the results, a more detailed analysis might then be limited to those patents having a high degree of concern.
In a very general ballpark, a patentability search/analysis for your technology might run about $3500. A non-infringement search/analysis might run about $8000 or more, depending on the number of patents to be analyzed.
The answer provided is only for general information purposes and does not constitute legal advice.
Everyone who responds, I’m sure, would be happy to help you (if they are not conflicted out of doing so). However, almost all of my start-up clients have come through referrals from corporate counsel with whom I have worked, from current / former clients and from technical advisors and investors. I would suggest that you ask your network of these people for patent attorney recommendations.
As for cost, it will depend a lot on how in depth and far reaching you want you searches, and on how formal of an analysis you need. For example, should it be a world-wide search, or just a US search. And do you want a short synopsis of the analysis results, or a formal, legal opinion upon which you could rely in court. You will really need to interview your potential patent attorneys and find out from them, based on your business needs, what to expect to spend.
Best of Luck!
Legal disclaimer: This answer is not legal advice, but is for informational purposes only. My answer to your question does not create an attorney-client relationship between us. Please contact a licensed attorney in your area for competent legal advice.
Q: " ... need our business process evaluated for 1) patentability and 2) non-infringement ... . "
R: That's backwards. You first need a "freedom to operate" search and analysis to evaluate if your process infringes any currently-in-force patents [and, if so, the likely validity of those patents and potential for suit]. Then, if you have the budget, you need a "patentability" search of all patents [even ones not currently-in-force] and the non-patent prior art to determine if your process has a shot at being awarded a patent.
The freedom to operate search and analysis is, as a practical reality, mandatory because you have a legal duty not to engage in a business that infringes another's patent rights.
The patentability search and analysis is not mandatory because you have no legal duty to seek patent protection for your process. The consequence of this being that you have discretion as to the scope of the search and the scope of the analysis [which obviously affects the cost]. Note: You have no duty to do ANY prior art search and analysis before applying for patent protection -- so if your freedom to operate search and analysis concludes you're safe you can apply to patent your process w/o doing any further searching. Companies with significant R&D budgets, however, go through this patentability search and analysis during the development stage of whatever it is being developed in order to "design around" the prior art so as to get a decent shot at acquiring a patent. Start-ups, however, rarely have the funds necessary.
In short, spend your money on a freedom to operate search and analysis. Like Attorney Ross, I think there's no way to estimate the cost of that search and analysis until the attorney understands your process and evaluates the existing technology landscape. Note: Google's chief legal officer has estimated that 25,000 patent claims protect just one smartphone. Let's hope there is less prior art in your technology landscape.
The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
You need both a patentability and a right to use patent search. They go hand in hand. You need a patentability search to determine if you are going down a path that you are likely to be able to protect with a patent, as you may well need to re-design and modify if you can't get a patent position on your technology, which sounds like it is in the area of mobile computing which is a hotbed of patent activity as Apple, Google and MS duke it out for dominance by using patent portfolios to fend off each other and are seeking additional revenue by factoring them out to litigation houses to monetize. And, to avoid getting embroiled in that battle or that revenue hunt, you need a right to use search to determine if that idea is clear of other patents. Generally these searches tread the same waters, but with a different focus. The right to use looks to find a pathway through the minefield of patent claims that lie in wait for a careless step, while the patentability search looks to see if you have found a pathway through the patent disclosures that are out there. I agree with Attorney Ballard that of the two, the right to use is the more crucial early search so that you don't spend money on a concept only to find out you can't use it because it is claimed in a patent of an aggressive litigious big company or a contingent fee patent enforcement company. However, once you do your design around, the same patents will likely be analyzed in the patentability search and so having done one will make the other somewhat less costly. Yet, as the two searches focus on different parts of the patents for different purposes (coverage vs. prior art disclosure) their will be additional cost when having done either, you have the other search type done. In either case a written opinion, properly written, will cost you thousands of dollars in additional fees, as now the attorney has to be very thorough to help you and not damage you or mislead you. You received great answer from several top notch attorneys, several in your vicinity, several not. You can use a patent attorney from any location and with modern communications it often is seamless either way, but you may prefer a local attorney for the added advice on business matters of local law unless you feel you already have that covered. Call several patent attorneys and ask each to recommend a colleague other than themself and see which are the consensus and then determine who has the technical background to best fit your technology. Avvo is a great place to start that hunt. Good luck. Call any of us for a referral recommendation. Sometimes an attorney out of you local area can give you a more objective recommendation, sometimes not.
The main caution I would give you at this stage is steer clear of the invention promoters like InventHelp or Davisons, or IRI etc.. Spend your limited patent budget with a patent attorney so you get the most expertise for you dollar and so you get ethical and competent advice from a patent attorney not beholden to a promoter.
So far, this is free to you. Until you pay a fee, I am not your lawyer and you are not my client, so you take any free advice at your sole risk. I am licensed in IL, MO, TX and am a Reg. Pat. Atty. so advice in any other jurisdiction is general advice and should be confirmed with an attorney licensed in that jurisdiction.
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