Role: Patent Attorney

Phase: 1–2 — Business Foundation through Hardware Prototype Engagement type: Contract Budget: $2,000–$4,000 When to engage: Month 1–2, concurrently with LLC formation Status: Not yet engaged

Why This Role Matters

Actual’s defensible IP is not the badge hardware (hardware is purchasable by anyone) and not the cloud infrastructure (cloud architecture is not patentable). The defensible IP is the method: passive, automatic, edge-captured operational truth with provenance preservation from event origin through downstream financial systems without human action.

Specifically, the two claims worth protecting:

  1. Badge-as-identity: A wearable device that establishes worker identity at shift start via supervisor assignment (no biometrics, no login, no app) and maintains a continuous, verifiable presence record for the duration of the shift.

  2. Passive provenance architecture: A system and method for capturing field operational events (location, motion, proximity) at the edge, storing them with cryptographic lineage and timestamp, and propagating them immutably through a cloud truth layer to downstream operational systems without human data entry at any point in the chain.

A provisional patent application establishes a priority date at low cost and gives 12 months to file the full non-provisional application. It is not a patent — but it preserves the right to one while the prototype is being built.

Scope of Engagement

Deliverables Expected

  • Prior art search for badge-as-identity and passive provenance claims
  • Provisional patent application drafted and filed with USPTO
  • Memo summarizing scope of protection and what the provisional does/does not cover
  • Recommended timeline for filing full non-provisional application

What Is NOT in Scope

  • Full non-provisional patent application (that is a Phase 3–4 decision)
  • Trademark registration (handle separately if needed)
  • Freedom-to-operate analysis (unless prior art search surfaces a conflict)

What to Ask For

“I’m building a hardware plus cloud product in the IoT and field services space. I want to file a provisional patent application protecting two specific methods: a passive worker identity assignment system using a wearable badge without biometrics or login, and a passive provenance architecture that captures field events at the edge and propagates them immutably through a cloud pipeline without human data entry. I need a prior art search, a provisional application drafted and filed, and a clear explanation of what I’ve protected and what I haven’t. What is your flat fee for this engagement?”

Ask for a flat fee. Patent attorneys who quote hourly on provisional applications can run up the bill easily. $2,000–$3,500 flat is a reasonable target for this scope.

Where to Find

Priority 1 — IP attorney with IoT or hardware tech experience Georgia State Bar IP section directory. Ask for referrals from Atlanta-based hardware founders or through the Atlanta Tech Village or ATDC (Advanced Technology Development Center at Georgia Tech) networks.

Priority 2 — USPTO Patent Pro Bono Program For qualifying inventors with income constraints. Limited availability — apply early.

Priority 3 — Registered patent agents (lower cost than attorneys) A registered patent agent can file provisional applications at lower rates than a licensed attorney. Must be registered with USPTO.

Red flags to avoid:

  • Any firm that will not quote a flat fee for a provisional
  • Any firm that cannot name specific IoT or wearable tech cases they have worked
  • “Invention promotion companies” — these are scams targeting individual inventors

Budget Breakdown

Task Low High
Prior art search $500 $1,000
Provisional application drafting and filing $1,500 $2,500
USPTO provisional filing fee (micro-entity) $160 $320
Strategy memo included included
Total $2,160 $3,820

Micro-entity status likely applies: solo founder, first filing, under income threshold. Confirm eligibility with the attorney — it reduces USPTO fees by 80%.

What to Provide the Attorney

Before the first call, prepare:

  • A 1–2 page plain-English description of the badge system: what it captures, how identity is assigned, how data flows from badge to cloud
  • A description of the passive provenance architecture: event origin, local storage, cellular upload, cloud normalization, immutable store, downstream propagation
  • A list of what the system explicitly does NOT do (no biometrics, no app, no manual entry) — distinguishing features matter for claim differentiation
  • Any prior art you have already identified (Spot-r, GPS fleet trackers, timesheet apps — and why they do not cover your method)

The better your technical briefing, the lower the attorney’s drafting time and the smaller the bill.

Exit Gate

This role is complete when:

  • USPTO provisional application is filed and filing receipt is in hand
  • Priority date is established
  • Calendar reminder is set for 11 months out (non-provisional filing decision point)

Known Risks

Risk: Founder delays patent filing until prototype is working. Result: Priority date is lost. If a competitor files a similar method during the delay, the provisional cannot antedate their filing. Mitigation: File the provisional before showing the product publicly to anyone (including charter partner candidates). Public disclosure before filing destroys US patent rights.

Risk: Provisional application is too broad and uninformative. Result: When the full non-provisional is filed, there is nothing specific to claim beyond what prior art already covers. Mitigation: The provisional must describe the specific method claims in enough detail that a person skilled in the art can understand what is being claimed. Do not file a placeholder provisional. A thin provisional is nearly worthless.

Risk: The prior art search reveals an existing patent covering the core method. Result: The company has an IP conflict risk that needs a freedom-to-operate analysis before further investment. Mitigation: Do the search before building further. If there is a conflict, better to know in month 2 than month 14.