At some point, many startup entrepreneurs realize they need a patent. Patents help protect innovators’ intellectual property, but the process for submitting and gaining approval for one is rigorous, expensive, and time-consuming.
The San Antonio-based law firm Shah IP Law opened in May to provide startup companies counseling on intellectual property and how to develop a patent portfolio as well as patent prosecution – the process of writing and filing a patent application and pursuing protection for the patent application with the patent office.
A former patent litigator, Samar Shah founded his new law firm to support the growing entrepreneurial community in San Antonio and Central Texas.
“When I was litigating patents at Akin Gump [a San Antonio law firm and Shah’s previous employer], I received a lot of questions from established and startup tech companies in San Antonio about patent protection and intellectual property strategy,” Shah said. “I realized that there is a huge demand for patent counseling services in San Antonio.”
The local demand for patent counseling translates into a gauge of the overall entrepreneurial scene in San Antonio. Shah counsels clients from the tech sector and software development field, as well as many biotech entrepreneurs starting medical device companies.
“I realized there’s a big need for a lawyer to help startups build at the foundational level, because the strategy considerations are different when you’re starting your company,” Shah said. “You want to use your patent to attract capital and to identify collaboration opportunities. There are specific things I advise client to look for before pursuing this because securing patents is expensive.”
Shah explains that a utility patent can be as much as $10,000, and that’s just to file the patent. It also takes another $5,000 to $10,000 to get that patent through the U.S. Patent Office. In the end, it can easily cost $25,000 or more, and it can take about four years.
A utility patent, also known as a “patent for invention,” prohibits other individuals or companies from making, using, or selling the invention without authorization.
Shah’s experience before moving to San Antonio three years ago helped prepare him to practice patent law. He previously worked with one of Silicon Valley’s most prominent technology law firms— Fenwick and West, a national technology and life sciences law firm.
“I wrote my first patent for Palm [the maker of the then-ubiquitous Palm Pilot personal device assistant] when I was just a second-year law student,” Shah said.
While in California, Shah wrote patents for technology giants Google and Facebook as well as other startups, spending about 80% of his time writing patents for the two online giants. He devoted his remaining time to software and medical device patents.
Some of the patents Shah wrote are for technologies many take for granted today.
He worked on the patent for the technology Google uses to scan books, another for the algorithm that allows YouTube to organize a viewer’s playlist, and one of Shah’s early patents for Facebook was for the algorithm that suggests people to connect to based on one’s network.
For now, Shah is the only employee of his firm. He occasionally partners with the tech law firm of Innocenti Jones for larger clients who need a range of tech company legal services.
“It’s so critical for startups to get out on the right foot,”Innocenti Jones co-founder Debra Innocenti said. “Samar can help startups prevent the missteps when it comes to patents while understanding the need to provide value to companies operating [in a] lean [way]. It’s all about figuring out what’s best for the client and telling them, ‘No, you don’t need this now, spend your money elsewhere.’”
Shah uses big data analytics and other advances in legal technology to turn the traditional setback of working alone into a competitive advantage.
“Predictive analytics allow lawyers to access much larger data sets – Say, every decision the patent examiner has ever made – to help inform our clients,” Shah said. “By leveraging data analytics from Juristat and others, we can now know more about how a particular art unit or an examiner at the Patent Office is prosecuting patents than my colleagues at large firms who don’t use data analytics.
“We also use technology offered by companies such as ReedTech and AltLegal to automate many of the drafting and docketing tasks that were previously performed by expensive attorneys or paralegals.”
Shah is also developing technology software that would automate more of the back end legal processes for businesses.
“By leveraging these technologies, we are able to provide IP [intellectual property] services that rival [those of] the biggest law firms in the country, but at a fraction of the cost.”
Shah’s law firm joins Innocenti Jones and Easy Expunctions as lean San Antonio law firms leveraging emerging technologies in order to operate efficiently and effectively.
After Chris Turner founded Turner Logic, a custom software and hardware development company, he turned to Shah for advice on patents for startup companies.
“Patents are an investment, and sometimes it can be hard for startups to decide if and when to make that investment,” Turner said. “I am currently working with Samar on a patent for a project, and he has provided a lot of new insight on patent strategy that has helped in my decision-making process.”
As Shah continues to work with entrepreneurial clients on patents he cannot yet discuss, it will only be a matter of time before he can point to examples of local patents that have led to innovations that are now part of everyday life.