Posted by Stefanie Zucker on October 28, 2010 · 6 Comments
It’s a rainy day here in Atlanta and I’m sitting here thinking back on everything that’s happened from the day my sister 
asked me to help her make her “little idea” a reality. Just about a year had passed since we started our journey and it was becoming painfully obvious that there was no way Suzanne and I were going to be able to bring this product to market on our own… The reality was that we were going to have to file some sort of patent application and neither of us had a clue as to where to begin. We would also need better drawings than the concept sketches Suzanne had created so off I went looking for a patent attorney and some engineers.
The patent attorney was not terribly hard to find…although little did I know that he was to be the first in a LONG LINE of patent attorneys we would eventually work our way through…(sorry…I mean work with). By the way – if I ever meet you and you hear this very faint “sucking sound” over my shoulder…that’s the sound of attorney and patent office fees sucking money out of your bank account …and I hate to tell you this, but once that sound starts it doesn’t EVER go away. On a positive note, you do get better at blocking it out…kind of like what happens when you live a few miles from a train track. But my apologies, I’m off topic…
So we needed a patent attorney (no way was I going to even try and file this on my own) and after speaking with a number of friends we were given several recommendations. I won’t bore you with the whole process we went through, but in case you ever find yourself in a similar situation, here are some of the questions we used in our evaluation:
- Does your firm handle medical devices?
- NDA’s: what’s needed and for whom (mechanical engineers? industry experts?)
- Volume of patents submitted last year and would any of those clients be willing to be references?
- Costs we can expect (“hourly rate” or by “# of claims” or by “total project”)?
- Overview of process : schedule and fees
- Patent research / searches: what needs to be done before / during filing?
- Path forward/options: a) Make/Sell Product; b) Make/Sell Prototype; c) License Patent
- Probability of success for each
- Expected costs
- Timeline
- Role of attorney in each of these options (if any)
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- “There’s a lawyer’s address book sort of – called the Martin Hubbell Directory. All law libraries have them as well as some city libraries. It will tell where a lawyer went to school and background info. A lawyer may be unimpressive in school but ELECTED to a position (i.e. president of the national trial lawyers association) by his/her peers. If the lawyers themselves elect someone that’s impressive”
- “Also check with their insurance company for how long they’ve been insured and how many times they’ve been sued and by whom. The court cases for lawsuits are on public record and you can read them at the court house…if they’ve made lots of stupid mistakes that got their cases thrown out of court, well then look elsewhere.”
In the end we chose an attorney from NYC that passed our due diligence with flying colors. It was from him that we learned some valuable lessons…
First – here’s what a “typical” patent process should look like.
- Begin with patent search for “prior art” to see if a patent is even worth pursuing). The search is based first on appearance of item and then claims and takes approximately a couple of weeks
- Choose materials you ultimately expect to use
- Establish the company / incorporate
- Contract with a patent draftsman You should end up with 2-3 sheets of drawings in approximately 1-2 weeks
- The patent application is drafted and submitted: …After 10 days you should be granted “Pending” status; it will take approximately 18 months – 2 years to Issue
- Create a business plan and begin “selling” to potential investors
Second – given the lack of regulation in the back of an ambulance, our device could likely be considered a “useful article of manufacturing” rather than a medical device…which could potentially save us years and hundreds of thousands of dollars in government approvals.
Finally – the process would cost approximately $6k for the initial filing with the assumption that 2 amendments would have to be filed at a total additional estimate of approximately $1.7k.
15 years, 2 US patents, 2 International patents (…and 2 others pending), a possible lawsuit and somewhere around $200,000 later, I have learned a valuable lesson:
When it comes to patents and lawyers – the word “approximately” has numerous definitions…the word “naïve” however is now perfectly clear.
Until next time…thanks for listening…
Oy, what a process! Clearly takes tenacity and devotion. Good for you guys!!
.-= parenting ad absurdum´s last blog ..Dromophobia and other parental hazards =-.
Thanks! I can’t think of a better way to put it than you did (“oy, what a process!”)… it’s been “interesting” to say the least…and there have been some major battles along the way. I am grateful that I had my sister as my partner in this because she’s always backed any decisions I’ve made – whether they were right or wrong – a hundred percent. And I’m also grateful for folks like you who leave such supportive comments. Thanks so much for the encouragement!! 🙂
I am SOOOOO feeling your pain! May I just add that the liability issues related to anything that could potentially save a child are just as challenging, and don’t get me started on finding a lawyer who is truly a partner!
.-= Rebecca Wear Robinson´s last blog ..How do you cut death rates 17 =-.
Crazy isn’t it?? …how hard it can be sometimes to do something good??
What I don’t really go into in the post is that there have been times over the years…especially right after 9-11 when my consulting business slowed to a standstill and the legal bills kept coming….that I really thought I was going to have to give up, declare bankruptcy, etc. I never felt so lost in my life. (There was a reason I called this “Dying to save the lives of kids”…).
I will be forever grateful that my family supported what I was doing and helped me through what was probably some of the worst days I’ve ever experienced. I just keep hoping that one day this will actually turn into something that saves a child’s life…and then finally everything will have been worth it.
.-= Stefanie´s last blog ..Halloween 2010- Make It a Treat This Year =-.