A must-see for app developers! How to choose a patent attorney/firm that is strong in patents | A thorough explanation of the criteria to avoid failure and the market price

"I came up with an idea for a revolutionary app! I want to start a business with this"

"What if a major company imitates a new service that puts the company's fortunes at risk..."

When developing an app or web service, when you come up with a new function or business model, the first thing that crosses your mind is the risk of being hacked. Patents are the most powerful weapon to avoid this risk and turn your company's technology into an exclusive asset that competitors cannot touch.

However, there is a pitfall that many developers fall into.

It is easy to think that ``patents are the same no matter which patent attorney you hire.''

I would like to make this clear. In the field of applications (software), failing to choose a patent attorney can be fatal.

If you hire a firm that is not familiar with IT, they may not understand the algorithms that engineers have worked so hard to develop, resulting in patents that are too narrow to be of any use, or in the first place, you may not even be able to apply for a patent because the technology cannot be explained properly.

In this article, I will thoroughly explain "How to identify a patent firm/patent attorney who is truly strong in the application/IT field" from the perspective of having been involved in numerous IT/startup patents.

1. Why do "apps" fail without a professional patent attorney?

First of all, in the patent industry, each patent attorney has specialized fields such as "mechanics," "chemistry," and "electricity." Among these, "software (IT/applications)" is a very special and difficult field.

Why is it necessary to have a patent attorney who specializes in IT for app development? There are three main reasons for this.

① It is necessary to verbalize "invisible processing"

In the case of traditional "machine" patents, the structure was obvious just by looking at the drawings. However, app patents are different.

The value of an app lies in the algorithms behind the screen design (UI), such as ``how it communicates with the server'' and ``how it references the database and what kind of logic it uses to return results.''

A patent attorney with little IT knowledge won't understand the meaning of your words even if you explain, ``I hit the data with an API, and asynchronously process the value returned in JSON...'' As a result, a ``weak patent full of loopholes'' that describes only superficial screen movements is created. This makes it easy to avoid patent protection by simply changing the way the program is written.

② Because the speed of technology obsolescence is abnormally fast

Trends in the app industry change dramatically every year.

For example, technologies such as ``generative AI (LLM)'' and ``Web3/blockchain,'' which did not exist a few years ago, are now being incorporated into apps as a matter of course.

If you hire a patent attorney who does not keep up with the latest tech trends, he may not be able to determine that the technology is already old (publicly known), and may end up filing a useless application, or conversely, your case may be rejected as being too cutting-edge to be understood. We need a partner with the knowledge to keep up with the speed of development.

③ "The ability to construct a business model patent is tested

In recent years, app patents are not only about pure technology, but are also becoming more important as 'business model patents.

Techniques are required to obtain rights not only in ``how the program works,'' but also ``what new business problems will be solved using IT'' and ``how to be billed''.

This requires not only legal knowledge as a patent attorney, but also deep understanding and insight into IT business.

2. 5 points to find a firm/patent attorney who is strong in app patents

Then, what specific criteria should I use to select a request destination? Please check the following 5 points on our homepage profile and initial free consultation.

Point 1: Do you have a rich track record of patent applications and registrations in the IT/software field

Anyone can claim to be "strong in IT," but the most reliable metric is "Achievements".

The patent office's examination standards (rules) for application and software patents change rapidly, and it often happens that the logic that worked a few years ago doesn't work now. Therefore, rather than textbook knowledge, what is most important is "track record" of always handling the latest projects in the field.

• Checking case studies: Check the firm's homepage to see if there are application/registration cases posted in fields similar to your business, such as "AI," "IoT," "platform business," and "SaaS." Be careful if there are only achievements in "mechanical parts" etc.

• Attachment to "registration": It is important not only to simply file an application, but also "whether it was actually registered as a patent." IT patents tend to be rejected by examiners as ``merely an idea,'' but experienced patent attorneys have accumulated **``experience in logically persuading examiners and winning rights (= ability to respond to notices of reasons for refusal)''.

One way to do this is to ask during your interview, ``Have you had any trouble registering any app-related projects you've dealt with recently?'' You can trust a patent attorney who can provide specific examples.

Point 2: Are you highly sensitive to the latest technology and communicating it

There are patent attorneys who claim to be ``strong in IT,'' but their knowledge has stopped at 20 years ago.

Check whether the firm or patent attorney is disseminating information about the latest technology through blogs, SNS (X and Note), seminars, etc.

• "Explanation of the revised examination standards for AI patents"

• "About rights protection in NFT and metaverse space"

• "Intellectual property strategy in SaaS business"

Patent attorneys who share their views on these topics are always on the lookout for information and will be eager to understand your new app.

Point 3: Is communication cost low (chat tool compatible)

Speed is a game in the field of application development.

In offices where the only means of communication are telephone, email, and fax, and where files are exchanged using ZIP files with passwords, the speed of development is reduced.

• Can you easily consult with us using chat tools such as Slack, Chatwork, or Microsoft Teams?

• Can you quickly hold an online meeting with Zoom or Google Meet?

• Does it support sharing documents using cloud storage (Google Drive, Box, etc.)?

These are not just a matter of "convenience," but also a test of literacy: "Are you willing to adapt to the client's (your) work environment?"

Point 4: Can you make proposals that go into "UI/UX"

The user interface (UI) and user experience (UX) are the lifeblood of an app.

An excellent patent attorney who specializes in applications will propose patents not only from the server-side processing (back end), but also from the UI/UX perspective, such as ``how the screen changes when the user operates it.''

When you ask, ``Can we patent this comfortable screen transition?'', choose a patent attorney who can give you specific advice such as ``Let's protect it with a design right'' or ``To make it a patent, let's write it as a set with the process behind the scenes.''

Point 5: Do you understand the circumstances of startups and ventures

Offices that have worked with the intellectual property departments of major companies are accustomed to the approach of ``we have ample budget and we don't mind the time it takes.''

However, many app developers and startups are in a situation where "I have limited funds and want a patent right away."

• Proposal for accelerated examination: Would you be willing to propose a system that would shorten the examination process, which usually takes over a year, to a few months (minimum 2 to 3 months)?

• Cost transparency: Can you give us a clear estimate of success fees and intermediate costs in advance?

• Understanding of financing: Do you understand management strategies such as "I want patent pending status first in order to appeal to investors"?

Choosing an office that understands these and is strong in startup support will increase the success rate of your business.

3. Cost and period you should know before making a request

I've heard that it's expensive, but how much does it actually cost? In order to relieve your anxiety, I'll tell you the general market price.

*It varies depending on the office, but this is a standard guideline for IT/software patents.

The average cost of app patents (total amount: around 600,000 to 800,000 yen)

The cost of obtaining a patent is mainly incurred in three phases.

1. Application fee: Approximately 300,000 to 400,000 yen

   • This is the stamp fee to the Japan Patent Office (starting from 14,000 yen) and the fee for preparing the specification by a patent attorney. Application patents tend to be slightly more expensive than mechanical patents because they have a large amount of description.

2. Intermediate processing cost: approximately 100,000 to 200,000 yen

   • This is the cost of preparing a written argument or amendment when the patent office says, ``This part is similar to existing technology, so it cannot be done (notice of reasons for refusal)'' during the examination process. This is where a patent attorney can show off his skills.

   • *This does not apply if you register in one go.

3. Registration cost: Approximately 100,000 to 150,000 yen

   • This is the cost (including success fee) for passing the examination and establishing and registering patent rights.

In total, if things go well, you should expect to pay around 600,000 to 800,000 yen.

There are some offices that offer "cheap prices" (such as a total price of 300,000 yen), but we do not recommend choosing based on price alone, as the quality of the specifications is low and there is a risk that the patent will be easily circumvented.

Period until acquisition

• Normal examination: On average, it takes about 10 months to 1 and a half years from application to examination results.

• Early examination (recommended): If certain conditions are met, results will be available in 2 to 3 months.

  • Because the life cycle of apps is short, many development companies use "early review." Choose a patent attorney who can handle this.

4. Ask this during your consultation! List of questions to determine if you are a “strong patent attorney”

Finally, when you actually meet with a patent attorney (free consultation), we will introduce some "magic questions" that will help you see through the other person's ability. Try asking these questions and see if you get a satisfactory answer.

Q1. "Have you obtained any patents for apps or SaaS like mine in the past?"

Due to specific confidentiality obligations, we may not be able to reveal the company name, but the key is whether or not you can specifically talk about ``what technology field and what logic was used to obtain the rights.''

Q2. "Is it possible to obtain rights not only for the technical aspects of this app, but also for the business model?"

Even if the technology is not novel, it may become a patent if it is combined with a business mechanism. A patent attorney who immediately responds and dismisses this by saying, ``It's impossible unless there is something technically new'' may lack the ability to make proposals.

Q3. "If the examiner rejects your application saying, ``This technology is common," how can you argue against it?''

Excellent patent attorneys predict that the examiner will say this at the time of filing the application. Make sure you have an alternative plan (plan B) such as, ``In that case, you can argue by emphasizing the uniqueness of ○○ processing.''

5. Summary: Choose a partner with "translation ability" for app patents

The most important thing when applying for a patent for an app is "The ability to 'translate' abstract ideas and codes in your head into solid legal texts that the patent office will recognize."

No matter how great an app you develop, if the translator does not understand the "language of IT", the true value will not be conveyed. On the other hand, teaming up with a good IT attorney can give your app strong legal protection and create an exclusive market that keeps competitors at bay.

If you are having trouble choosing an office, please remember the following three things.

1. Can you communicate with engineers (technical background)

2. Are you able to propose a business model (proposal ability)

3. Can you respond to the development speed (mobility)

Patents are both a "shield" to protect your business and a "spear" to attack it.

Selecting a partner to entrust important ideas to. Find a patent attorney who sympathizes with your technology and works with the same passion without compromising.

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