Patent and IP question for software

sysprogrammer

Hi All, (and Happy New Year)

I have a question, and I’m not sure on how to word my question.
So instead I’ll tell you about my situation and then perhaps you can collectively shove me in the right direction.

We recently completed a piece of software , with some very practical applications for our industry.
Now I’m looking to protect our work , and then licence it to various larger firms to use.

Can anyone give me an insight into how I go about this ?
I imagine that I need a competent Patent agent , to help me identify the patentable parts of our software.

I have seen only one other player in this space, and I believe we have made a vast improvement on their offering. (of course I would say that).

I will be sure to keep us all updated on the cost and progress.

Thanks,
Sysprog

ewiz9

sysprogrammer wrote: »

Hi All, (and Happy New Year)

I have a question, and I’m not sure on how to word my question.
So instead I’ll tell you about my situation and then perhaps you can collectively shove me in the right direction.

We recently completed a piece of software , with some very practical applications for our industry.
Now I’m looking to protect our work , and then licence it to various larger firms to use.

Can anyone give me an insight into how I go about this ?
I imagine that I need a competent Patent agent , to help me identify the patentable parts of our software.

I have seen only one other player in this space, and I believe we have made a vast improvement on their offering. (of course I would say that).

I will be sure to keep us all updated on the cost and progress.

Thanks,
Sysprog

AFAIK you cant patent a software. You can however patent specific methods,algorithms, techniques used in the software. For this you need to prove 1) novelty 2) non obviousness to a patent examiner. Need to hire a patent attorney to draft the patent

PS: I had 2 provisional patents. No full patent. So my info is limited/wrong

sysprogrammer

thanks for the reply ewiz9.
I think you're correct , and that I'll need to find something patentable within the software.

Are we allowed to ask for recommendations on boards for a patent attorney ?

Can I ask, How long did your partial patent application take ?

Cheers,
Sys

Axwell

Yes, you can get a recommendation for a patent attorney - as long as the person replying isn't just advertising themselves or their services.

ewiz9

sysprogrammer wrote: »

thanks for the reply ewiz9.
I think you're correct , and that I'll need to find something patentable within the software.

Are we allowed to ask for recommendations on boards for a patent attorney ?

Can I ask, How long did your partial patent application take ?

Cheers,
Sys

Provisional patents are easy. Its more like a pre-disclosure. It gives you sometime to file the actual patent, while protecting the IP. For me it was filed by my previous university outside ireland. So I didnt have to bother much. If you are connected to a University/startup ecosystem (like if you are incubated inside a university, accelerator), go through them. Doing these by yourself is very troublesome and costly. Unless the technique you are trying to protect is very key to the software, its a waste of time. People will copy you anyway, and you wont be able to defend in court. There are many ways to work around a patent. Most startup people dont focus on patents, except for good piece of tech. Instead focus more on fast and agile execution and go to market strategy. Good luck.

sysprogrammer

Again, thanks for the reply Ewiz9,

I am around since before the Internet , so I'm no longer connected to a 3rd level University :-)

I am fully aware that the bigger companies in my area can copy my idea and engineer their own version, so to combat this ,I would like to licence my solution to them.

I feel that this method of selling to a bigger player will yield more money from me in the long term.

Apologies if I am sounding vague , but I think that selling this software to Ford or Toyota would be a better idea than installing in my home-brew vehicle and trying to capture a percentage of a market share.
(I'm not in the vehicle trade , just an example of the larger players compared to my very small Dublin based business).

Thanks,
Sys

Tomkins and Co are a company I've used for filing patents, they are very good. But expect to pay between 2.5K-5K to get the first application filed. And if they are the ones that have to figure out where the IP is and do all the writing you could be looking at more.

sysprogrammer

Thanks El Rfile, (great interview btw)

It will be difficult to enforce this patent. And rather go through such a process my thinking now is to sell this to a bigger player and collect my weekly cheque from the mailbox.

I'm hopeful that you , Antoin or one of the Pedro's have been down this road before and could advise ?

I would be happy to discuss in private or to demo the tech , and I know the likely candidates to buy it from me.

Is it a business sales person I am looking for ? (they would need to be pretty technical/clinical though).

All comments and advice welcome, this is new territory for me and I'm happy to admit when I'm lost :-)

Cheers,
Sys

Paddy001

sysprogrammer wrote: »

Thanks El Rfile, (great interview btw)

It will be difficult to enforce this patent. And rather go through such a process my thinking now is to sell this to a bigger player and collect my weekly cheque from the mailbox.

I'm hopeful that you , Antoin or one of the Pedro's have been down this road before and could advise ?

I would be happy to discuss in private or to demo the tech , and I know the likely candidates to buy it from me.

Is it a business sales person I am looking for ? (they would need to be pretty technical/clinical though).

All comments and advice welcome, this is new territory for me and I'm happy to admit when I'm lost :-)

Cheers,
Sys

Before you go any further with this I would suggest you speak to an accountant or tax adviser as proper tax planning will ensure you obtain the maximum benefit for your work. It will also give you guidance on how best for you to proceed.

Best of luck with it.

sysprogrammer

Paddy001 wrote: »

Before you go any further with this I would suggest you speak to an accountant or tax adviser as proper tax planning will ensure you obtain the maximum benefit for your work. It will also give you guidance on how best for you to proceed.

Best of luck with it.

Thanks Paddy , I have an excellent accountant for a number of years.

I have emailed a Small Business Assoc leader, asking if they can recommend a business for sale expert.

I'll keep the forum updated , as I like to share here and hopefully others can see this journey (which could be 1 day long or 1 year long, who knows).

please keep the comments coming if you have any further advice.

thank you all,
Sys

antoinolachtnai

sysprogrammer wrote: »

Thanks El Rfile, (great interview btw)

It will be difficult to enforce this patent. And rather go through such a process my thinking now is to sell this to a bigger player and collect my weekly cheque from the mailbox.

I'm hopeful that you , Antoin or one of the Pedro's have been down this road before and could advise ?

I would be happy to discuss in private or to demo the tech , and I know the likely candidates to buy it from me.

Is it a business sales person I am looking for ? (they would need to be pretty technical/clinical though).

All comments and advice welcome, this is new territory for me and I'm happy to admit when I'm lost :-)

Cheers,
Sys

First, well done on getting this far. If you have some customers and a revenue stream, congratulations.

That said, there are a lot of 'problems' here in relation to patents. First of all, there has to be real novelty in an invention. A novel application to your industry may not cut it (though it may, you need professional advice here). The second problem is the generalised difficulty of making a claim for a patent in relation to software. This is technical, but certainly possible and in the US, there may be other possibilities. The third problem is the maintenance of confidentiality. If you have shown your fabulous idea to anybody outside your inner circle (for example a customer, except maybe in the most controlled of settings), then you may not be able to get a patent no matter how patentable it is. Of course, getting a patent also costs € and that may turn out to be a forth problem.

Regardless of the patent part, if you have it in mind to licence this to other tech companies, then what you need is a 'technology'. It sounds a bit like what you have is a 'solution'. I think you have to offer 'solutions' to end-users, possibly through resellers and integrators, rather than to other systems integrators. You end up having to do a fair bit of the selling.

I honestly don't know what you need. It sounds to me like (a) it will be tough to get a patent (b) your company is not ready for sale and (c) your concept could be copied (not easily necessarily, but eventually).

This is being pessimistic of course. But I have to tell you, these kinds of companies are really hard to get sorted out and into gear.

So I think that what happens next really depends on how genuinely great product is and your connections in your industry. If you have a great product and great connections, or have access to someone who does, you can potentially make rapid progress. When you have a head of steam, you might be able to get bought out.

A big question is whether you can get the thing to grow at the Goldilocks Speed so that you don't need to bring in capital. (Too 'cold' or slow and you won't have enough money to eat and pay rent; too 'hot' or fast and you need to invest in staff and resources to support the growth).

I don't know anything about your product or sector, but I think your product may need some 'business reimagining' to make it relevant enough to convince people to switch from whatever you are doing now. That isn't because you don't have a great product. It's just that people tend to be sticky to their existing setup.

These are all very general observations of course, based on your understandably sparse details.

I will have a look (confidentially) if you think it would be of any help.

sysprogrammer

Thank you so much Antoin, an incredibly insightful post and one of the biggest reasons I choose to come here for any and all advice.

I will of course jump at the chance to display this technology to you, and get some feedback or get you on-board.

I am away until Wednesday next week and then I can travel to wherever you like for the demonstration.

I'm lucky that I require no funding at all (I have a revenue stream from existing business (thanks to Pedro)).

To try clarify some points and remain vague at the same time :

* I think the replies so far are correct , a patent is an expensive and hard to enforce. I no longer feel i need one if I'm going to sell.

* Licencing this Turn-Key solution to a bigger player is now the path I'd like to take.

* The core of this solution is fully built, I have some cosmetic touches to put in place and make it all look nice

* I work in this space and this is what led me to develop the product, I can see no one else whatsoever with anything similar (being a computer programmer in my industry is a massive advantage).

*you made a point about technology and solution, I would say that I'm about to complete the technology , and this can be handed in entirety to a licencee , it is ready to work.

Finding the connections and agreeing a price for the licence is where I would require assistance.
We all want to see the fruit of our efforts come to fruition, and I would make myself available to any potential purchaser to make that happen.

Thank you again for the sage advice, please feel free to PM me and I'll arrange to meet with you.

I'm actually smiling now, Cheers everyone for making this forum the right place to ask questions , however vague an invention has to be kept :-)

Enjoy your weekend,
Sysprog

pedroeibar1

sysprogrammer wrote: »

Thanks El Rfile,....

I'm hopeful that you , Antoin or one of the Pedro's have been down this road before and could advise ?

Cheers,
Sys

Hi Sysprog,
Patents are outside my skill zone, other than to know that (a) enforcement is a very costly and usually futile experience and (b) the tax treatment of associated R&D and income can be very favourable if structured correctly.
Reading your comments I suspect that you have been / are more comfortable in the development aspect of X rather than the marketing & monetizing of it? That is not an ideal place to be on your own if you want to bring X to market…. Assuming that X is patentable and can be locked down for a period, your options are three-fold – (1) find a backer with appropriate skills, find cash, integrate X into a new product and launch it, (2) sell the patent, take the money and move on or (3) partner (in some manner) with the firm that integrates X into their product. No.3 is difficult and impossible unless X brings a very substantial benefit to their product. The new combined product would have to be a game-changer over the old, and the financial reward significant to warrant any sort of partnership on selling the new combined product. In their view they already have a product, a distribution system and customers, you have just a product tweak, so you are not bringing a huge amount to the party. Even if they agreed to integrate and cut you in with a percentage on sales, be careful that they do not just park the product, sit on it and not grow a healthy sales volume.
With just a superficial knowledge of what you are doing I’d go with No.2
Best of luck with it.
PS The other Pedro was totally disenchanted with this forum and left. Although he later returned to Boards (under a new name) he has not posted here in the last six months and was last online about a week ago.

pedroeibar1

SysP - was writing the above when you posted your last.

dubstepper

I went for a software patent and used Hanna Moore + Curley. I found them very good.

However, in hindsight going for the patent was a waste of time. It can become a distraction away from making your business a success.

It cost us abot 1500 to go for a provisional patent. I wrote most of the documents up and they validated them. You can read sample patents from a google patent search.

sysprogrammer

pedroeibar1 wrote: »

Hi Sysprog,
(2) sell the patent, take the money and move on.
With just a superficial knowledge of what you are doing I’d go with No.2
Best of luck with it.
PS The other Pedro was totally disenchanted with this forum and left. Although he later returned to Boards (under a new name) he has not posted here in the last six months and was last online about a week ago.

Thanks Pedro,
I am indeed following your thinking and going with option 2.
This solution needs a bigger player with the budget to market it successfully, something I have neither the time nor inclination to do.

I'm happy to demo this tech to you if you'd care to give me blunt honest feedback.

I appreciate you taking the time to reply,
Sys

p.s. The other Pedro has always made himself available to answer questions via email over the years. And I cannot begin to thank him enough.
I've chatted to him about this particular piece, and I'll continue to update via this forum post.

sysprogrammer

Antoinolachtnai - pm sent , Thank you

sysprogrammer

Thanks dubstepper ,
I'll take your hindsight and insight !. you have validated what the general thinking is here.

Sys