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I've been developing a software and am now bringing in additional people to the project, who want to work on it for a share of future profit.

I founded a company (currently an LLC) to host this project, and am ready to begin the patent process, but I have a few questions first:

  1. How (basically) can I divide ownership of any intellectual property that I plan to patent through the company, so that different people have different guaranteed shares of all future value coming from this new software?

  2. How much money (USD) might I typically need to spend patenting intellectual property?

  3. How do I begin? Typically, how does one seek out local legal expertise for a patent process? I'm new to my area and don't know of any patent lawyers.

Also:

  1. How can I protect this IP from being stolen by members of the venture or their associates in the mean time? If someone were to attempt to patent this today, could I challenge the patent by proving prior ownership of detailed documentation on the subject?

This is all in regards to the US patent & legal system.

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1 Answer 1

Jonathan,

I don't suggest divided ownership of the underlying IP as this can get very messy. Instead, I would recommend providing the contributors with ownership in the LLC that owns the IP.

Depending upon the complexity of the features you want to protect in the software, preparing and filing a patent application could be on the order of $8k to $15k. Once might spend another $8k to 15k during the prosecution phase (i.e., responding to Office actions issued by the USPTO, possible Requests for Continued Examination and/or Appeal). Once the patent application is allowed by the USPTO, you must pay an issue fee and then maintenance fees at 3 1/2, 7 1/2 and 11 1/2 years after issuance to maintain the patent in force.

Here's a link to an article about finding a patent attorney ==> http://www.inc.com/guides/finding-patent-lawyer.html. Most of my business comes from referrals from existing clients. So, I'm not sure I agree with the advice in the article against seeking such referrals.

With respect to protecting the IP from being hijacked by members of the team, I would suggest obtaining an assignment of the IP sooner rather than later. If a member of the team attempted to file a patent application on your invention, this is something that could be addressed by the new derivation proceeding provided by the America Invents Act.

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