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I am researching a possible patent attorney who has educational backgrounds in mechanical and electrical engineering. He has obtained more than 800 patents over the course of his 30 year career.

In his website, he states the prices of 3 categories of inventions, which are mechanical, electrical, and software/business methods.

If my invention is a software method and process for a dating app / website, would this attorney be a good choice?

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    Most relevant is their experience with software patents. You should ask specific questions about those like how many, how recent, perhaps specific patents numbers so you can read a few.
    – Eric S
    May 10 at 0:48
  • I would ask how he deals with “seems abstract to me” rejections.
    – George White
    May 10 at 1:59
  • Do you have any technical content in this software invention? I.e., is it more than a list of requirements/goals that the person of ordinary skill can readily implement on a computer once given? If not, I don't mean to be negative, but it's a fact that such patents are hard to obtain, harder to enforce, and generally not deserving of protection in the eyes of many. Though I'm sure as purely a business proposition it can still be profitable to file - payouts for patent lawsuits can be so large that the chances of winning can be decimal percentages and it is still worth it.
    – bhuff36
    May 10 at 9:19
  • @bhuff36 Let's take Tinder's swipe patent as a benchmark. It is more sophisticated than that. And I have read recent patents granted to new features of dating apps. What I have is more sophisticated than all of those. May 10 at 16:08
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    I guess it's lucky I'm not a lawyer as I wouldn't be able to keep a straight face while explaining to a jury that match limits on dating apps is a protectable invention.
    – bhuff36
    May 10 at 17:46

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Since all my patents were prosecuted while I was in a corporate setting, I never hired a patent attorney. That said, 800 granted patents is impressive. However I would focus entirely on the lawyer's experience with software patents. How many and how recent are his software patents? Post Alice patents especially. I'd ask for some recent examples and I would read them. Make sure the claims don't seen excessively narrow. The fact that the attorney isn't a software engineer or computer scientist doesn't disqualify them, but it isn't a plus.

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  • He replied to my question and stated that only 12 of his patents were software. And only about 4 of those 12 were issued. He currently also has 4 software patents that have not been examined yet. May 11 at 3:14

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