Any good patent lawyers willing to help a team?

We are designing a product that would in turn be sold to all FRC teams based off od their custom designs they want, but first, we have to clear a couple… hundred… patents and I cannot sift through them all myself. Does anyone happen to have connections or know or be a patent lawyer that would be willing to work for free or for a percentage of the sales as a sponsor of our FRC team? :] We would like to not disclose any information on our item or design until production.

I would suggest finding a local one or one in a major city near you that will agree to work pro-bono. A quick google search will pull up quite a few.

Even if you find someone to work with you, filing for “a couple hundred” patents isn’t cheap. You have to pay a filing fee, and a search fee… and other fees. Plus it’ll take about seven years to get through everything, if it does go through. I’d estimate filing with the USPTO for the lifetime of one patent would be several thousand dollars.

If you are looking to market a product specifically for the FRC market, I would suggest contacting AndyMark. I remember hearing Andy Baker speak about this product (http://www.andymark.com/product-p/am-0286.htm) on an EWCP-cast (I’m not sure on which cast, but i suspect it may have been the one about looking inside an FRC vendor/supplier). He mentioned how the student (and possibly the team the student hailed from? Again, I’m not entirely sure) received a cut of all sales of the item for which the student generated the idea. If it would be a similar product, that you could see working with a company like AndyMark on, and receiving a portion of any sales, consider contacting Andy Baker or AndyMark - even if your item is not for them, perhaps they could point you in a direction to help with development and patents.

Thanks for all the help. I will have to look more into pro bono then a company like Andy Mark because it isn’t that type of item, it’s more on a general FRC consumer market than a team/robot market.

Also I’m not filing a couple hundred patents, I have to sift through a couple hundred to make sure what our team has made does not violate them – And there are ALOT on this subject that we just have to barely squeeze by. lol. And that may sound hard as in that there is no more market room but rest assured if this flies through a law office, it will definitely catch the eyes of ALL FRC observers/members. :wink:

Thanks for the advice, and hopefully I will be contacting a Patent Lawyer soon.

Something you can do is get a hard copy of your design and mail it to yourself. That serves as proof of when you developed the idea and will hold up in court should someone try to steal your idea. My grandfather called this the “poor man’s patent.” But this could protect you from potential problems if the idea sneaks out.

What you may want, first, is a patent searcher - not a patent lawyer. Do you need to find the “couple hundred” patents that you want to avoid infringing, or locate any that you might have missed? Or do you already have them and are trying to craft your claims around them? The first part is done by a patent searcher (there are several big firms and many ‘solos’ and small firms that do this, the fees vary), the second by a patent agent or attorney.

(I am technically a patent attorney, once you pass the patent bar the credential never expires, but I haven’t practiced that kind of law in over 20 years so sorry, I really can’t help. I could refer you to someone, but I don’t know anyone who will do this kind of work for free (pro bono) or ‘low bono’.)

AndyMark=best service for general FRC consumer market. I know they sell shirts and hats and carts…

If you’re thinking general consumer market, as in non-FRC, then that changes things.

Just to be clear, the OP is not looking for a patent agent to file a patent (at least not at the moment) but to ensure that their design does not infringe an existing patent.

The common term for what you are seeking is a “freedom to operate” opinion, and they can be very expensive. As pointed out, sorting through hundreds of possibly relevant patents to insure your product does not infringe their claims will take hours… and hours. And so far, I suspect, you are only talking about American patents. Care to know what has been claimed in Canada, Australia, India, Brazil or Europe? Do it all over again and again. Want to know about China and Japan? Better add some translation fees in there. Bill that time at a few hundred dollars an hour and you can see it add up.

Allow me to point out, however, that assuming you want to produce or sell your product in the United States, and that there is an issued American patent that claims your particular device… that does not prevent you from producing and selling your item. Rather it merely gives the patent holder the right to prevent you from infringing upon their patent.

They have to tell you that they believe you are infringing. At that point it is up to you to decide whether to cease producing/selling the product, negotiate a license fee for using their intellectual property, or to tell them “see you in court” where you can either attempt to have their patent thrown out, or demonstrate that you do not infringe. (And if you thought the freedom to operate opinion was expensive…)

So if you do a reasonably decent check of the online patent databases, and don’t find anything directly related to what you are doing, then I’d say go ahead and start selling it. If you can’t afford a freedom to operate opinion then I suspect you are talking start-up expenditures in the hundreds or thousands of dollars and therefore have relatively little to lose. Freedom to Operate opinions are generally sought where start up expenses greatly exceed the cost of the FTO opinion, and thus the legal fees are only a component of the overall bill.

Go for it!

Jason

P.S. As to the “mail it to yourself” suggestion, not only are there far, far better ways to protect an invention (such as filing a low cost provisional patent) but that in 2013 the USA will finally catch up to the rest of the world and change from a “first to invent” to a “first to file” system. http://en.wikipedia.org/wiki/First_to_file_and_first_to_invent

Does that provisional patent cost as little as a postage stamp and an envelope?

In all seriousness, so long as the patent is filed for before March 16, 2013, the first to invent system would still hold true.

Thanks for posting that link though. It made for a really interesting read.

That’s really different from what a patent offers, though.

A patent grants you the exclusive right to commercialize the invention for a fixed period, in exchange for explaining the invention publicly. Someone could challenge a patent, but it’s time-consuming, expensive and complicated by issues of legal standing—in other words, a patent is quite valuable to its holder.

By contrast, the postage thing gives you a piece of evidence that can be introduced in civil court, to bolster your claim that you knew of the invention on or before a certain date. The opposing lawyer will likely try to cast doubt upon it: could it be forged, for example? Since the postal service does not keep records of regular mail transactions,1 it’s almost entirely subjective. Even if it is accepted into evidence, all you’ve demonstrated is that at the time of mailing, you knew something about the invention. That doesn’t even indicate that you were the inventor—so you’re not going to make an infringement action stick on that basis.

In fact, the real value to the postal technique is as defence against someone else’s infringement suit, targeting you. Assuming the court accepts its provenance, if your sealed letter predates the alleged date of the invention, it is prima facie evidence of prior art, which defeats an infringement action.

1 Try registered mail or a courier service, next time. (And inquire about how long they maintain their records. Keep the receipt too.)

Mailing something to yourself doesn’t really hold up in court. If you want to verify that you had an idea on a certain date, write it down, sign and date it, and then get someone else to sign as a witness. This is how the classic laboratory notebooks are done (many of which are electronic now, but that’s a different topic). If you want to be absolutely sure, get a notary to stamp it.

But what does this get you? Just proof that you made the invention before someone else. It prevents anyone from taking your idea and filing a patent on it. It does not give you any rights to the invention. An easier way to do this is to publicize your idea.

As Jason pointed out, any patent filed after March 2013 will be under a first to file system. Therefore if someone can prove that they developed the same invention independently of you, and you hadn’t made your idea public, they can still get the patent and stop you (and everyone else) from using it.

If you do find a pro bono patent attorney to help you write the patent, they can help you with the search as well.

What you can do now is to file a provisional patent now for $125. A provisional patent has many many less formalities involved (such as formal drawings), and you can do it yourself (after a little education). This gives you a year in which to find someone to file formally for you (which costs only $380 but there may and probably will be other fees involved). You will also get the benefit of the first-to-invent provision and an earlier filing date.

The US Patent Office has a lot of help on this - the link is below. Just rememer, getting the patent is the easy part (but beware of scams). Making money from it is harder. You need a business plan. But you can do it!

If you want to sell your idea / device, I would recommend NOT searching for patents that you’d infringe on.
Specifically, if you infringe on their patents KNOWINGLY, you’re liable for triple damages.

The other thing you can do is file a provisional patent application. This will give you a year to sell your idea and be able to claim “patent pending” while still not filing for the real thing.

A book I’d recommend is Patent It Yourself

So you can at least get some background on what you’re doing.

So basically, I will be following these paths and whatever pans out is my choice:

  1. find a pro Bono patent lawyer willing to help us for a chunk of profits

  2. contact andymark or a company relative to my product to get their lawyers to help for a bigger chunk of profits

  3. file 125$ for a provisional patent that may get rejected

  4. just produce the product and while producing, file for patent

But if I file for the provisional and it is found to violate an existing patent, would I be charged in a civil case?

This does not give you a patent, but does serve as proof/evidence that you were aware of the idea/product at a particular time/date.

Also, if you do this, make sure that the postmaster stamps the date across the seals of the envelope, and do not ever open that envelope until a court askes you to. It’s the unbroken seal that helps your cause.

The provisional patent application never gets “rejected”; it gives you a year to disclose your inventions to anyone before making a decision to file or not. You basically tell the USPTO, “Hey, I think I’ve invented something, but I don’t want to file for a patent quite yet.”

I’d recommend talking to a patent attorney, or at least getting that book first before making any business decisions.

This has been shown repeatedly to be completely worthless in court. It is a waste of 45 cents.

  1. Pro Bono means “for free”. Not for a share of the profits. I’d say your chances of finding someone who will assist you for free are actually greater than someone who will do it for a share of the profits. Right now only you believe you have a profitable invention, and if you don’t believe it strongly enough to invest your money in it, why would you expect a patent agent to invest their time in it? On the other hand, you might find someone willing to help you out just because they admire your drive.

  2. If you are planning to invest a large sum of money in developing your product, it may be wise to seek advice from people who have done this before. You may find that they bring more to the table than you think… a partnership that succeeds, after all, is better than a solitary effort that fails.

  3. Unless you honestly expect to earn in excess of $50,000 based on a conservative business plan I wouldn’t bother applying for a patent… provisional or otherwise. You won’t have the revenue to protect it in the event someone does infringe. Remember… a patent doesn’t stop someone from infringing, it allows YOU to stop them by taking them to court. And that costs money.

  4. If you produce the product and unknowingly infringe someone’s patent then it is up to them to advise you of this fact. You will be sent a “cease and desist” letter. At that point you will have to decide what to do, but you will also have a much better idea of the revenue potential of your product and how much time and money you are willing to invest in the fight.

Far more important than your patent plans are your business plans. Protecting intellectual property is only one part of developing a product… I’d worry about the other stuff first. Maybe build a prototype and take it to an event and ask “Would you pay $xx for this device?” and see what the uptake is before you stress over the rest of the details. (Note, however, that if you do wish to patent your design at a later date, you shouldn’t show HOW it does whatever it is that it does until you have filed a provisional.)

Jason

Make sure that what you are thinking about producing is worth the investment. Many FIRST teams have free access to basic machining capabilities.

Most FIRST teams are also cheap. They will copy whatever you come up with for their own use using their own machining capabilities. All your patent will do is show them how to build it. As long as they build it for their own use and don’t try to sell it, your patent means nothing.