Question
We are a Boston-based startup developing a software in the field of medical applications utilizing structural mechanics and CFD analysis. We are looking to file for a patent before we go public on our technology. What are some points we should consider before hiring a patent attorney for the patent? I guess from our side it would generally be good if the lawyer/firm could help us with other legal issues later down the road when we start commercializing the invention. How do we know it's a fit?
Answers: 2 public & 3 private
Patenting of software or computer implemented inventions can be challenging. The approach to assessing the patent eligibility of such inventions varies significantly from jurisdiction to jurisdiction, with the US being particularly difficult at present. My advice would be to find an attorney with a technical background relevant to you invention (i.e. CFD and structural mechanics) and also with significant prosecution experience with software inventions. Realistically, you only get one chance to get the patent application right, so finding the right attorney for that should be priority. Commercialization will be easier if you have a strong patent application in play.
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