|File your own patent
are always people who will spend
amount of time to save money, and there are other people who will spend
money in order to save time."
save time, a precious resource, for important things like building your
business, hire a lawyer to prepare and file a patent application.
If you want to save money, and are prepared to spend some time to
prepare and file your own patent application, then continue reading.....
Conduct a prior art search
Drafting a Patent Application
3. Filing a
At one point or another, many people have an
idea for an invention. But
some people will proceed to devote their time and creative ingenuity to
produce something concrete which they believe may have commercial
value. At some point it becomes important to decide whether the
proposed invention has enough potential to warrant further research.
Read this article
invention: License or 'make and sell'
Assuming that enough research has been
done into the possible commercial value of the invention, and the early
results are positive, the next step should be to conduct a search for
Conduct a prior art search
important for 2 reasons: ~
You must know where
you stand relative to the current
state of the art, and
If you are going to
prepare and file your own patent application,
having copies of closely related patent documents available is
invaluable for creating your application documentation. The
drawings, the written description, and most important, the claims, will
be of enormous help.
can use these
documents as a template for preparing your own
application. Do not be intimidated by the convoluted archaic writing
styles in the prior art documents. They were prepared by lawyers, in
accordance with outdated rules and traditions. They are simply designed
to impress and intimidate the
uninitiated. You cannot change the rules to suit your own writing
style. But it does not take an Einstein to learn to imitate these
styles and compose a manuscript that will impress the legal profession.
the run-on verbiage to understand the underlying concepts. You'll be
able to imitate the writing style when drafting your own patent
application later on.
In the days before the
internet, conducting a patent search was hard to
do. People had few options other than to hire a patent attorney. This
IP professional would have close relationships with representatives
residing in Washington DC. The job was to communicate the client's
invention to the representative via post and telephone. The rep would
then go to the patent office library and conduct a search using
microphiche records. The results would then be relayed to the local
attorney, who would then prepare a patentability opinion on the
basis of the
This was obviously a long drawn-out task worth every penny of the
attorney fees passed on to the client.
Nowadays, such a rigamarole is no longer required. Conducting your own
patent search on the internet is
piece of cake. You can usually do it in an afternoon using the USPTO
search records, Google Patents, or
even international patent databases such as WIPO (World Intellectual
Property Organization). Preparing a patentability opinion (i.e.
determining the likelihood of being granted a patent) is another
matter, and will be discussed later.
Using these global tools, you will be able to read and download all the
prior art documents you need, and more, to guide you in preparing your
own patent application. There are various kinds of search strategies
available. Some IP professionals warn about doing cursary searches that
may miss important prior art which may impact your ability to obtain a
patent, or potentially more harmful, obtain a patent, but have that
patent challenged in court as being invalid. Generally speaking, being
bogged down by concerns over such downside disasters can take the wind
out of the sails of any start-up enterprise. There are no certainties
in this field, regardless of how much cash you choose to invest in
legal opinions. The legal arena of IP law is very much like the bygone
days of the wild west. It is a gold mine of opportunity for the IP
professional. But all the risks are borne by the inventor/entrepreneur.
One might spend half a lifetime performing prior art searches, yet end
up missing an all-important piece of prior art which may or may not
invalitate a patent, or prevent a patent from being issued. Worst of
all, you may be possibly wasting your resources on a product which no
one cares to buy.
It simply adds to the fact that the patent system in its current state
is filled with more worm-holes than a garden patch in spring. My own
rule-of-thumb is to do your best, given your time and money
constraints, then proceed to concentrate on the stuff that is really
important - the product, its potential value, and how best to bring it
This is the Link to the USPTO search site:
are a few key points for conducting a patent search provided by the
search can start by using the Quick Search option. This allows you to
combine words and phrases that represent the field of search as closely
as possible, searching in various places like the title, abstract, or
specification, to locate representative patents. After repeating this
process several times, searching through the list of patents to find
those best representing your invention, you can select a few that are a
good match. You may then select the class or classes and subclasses
they represent, and proceed to serach within these subclasses to
further narrow the search. When you find the patents that are most
closely related to your invention, you can search the text of each
patent for content which resembles your concepts.
should be to get a good feel for the classes and subclasses in the area
into which your invention falls. It may well be that the subject matter
is spread over multiple classes in the USPTO classification system.
Doing an exhaustive search can be a tedious and time cosuming task.
Sometimes a good sampling of closely related patents can do the trick
in providing not just a feel for the state of the prior art, but also a
template to use for preparing your own application. My personal
bottom line is that you will always be in a state of uncertainty to one
degree or another. Hence, you should optimize your search task relative
to your objectives, gain an understanding about the art in your field
of search, and make your decision as to if and how to proceed with your
One other thing...
suppose that you uncover
that is a dead ringer for what you thought was your original invention.
You will likely feel crushed and defeated. If you are a true innovator,
you will likely walk away from the original project and begin afresh,
or you may come up with an improved version of the original idea and
renew your effort along this new path. On the other hand, if you are
more inclined to risk taking, you should be aware that patent law is
far from being a perfect solution to the granting of intellectual
property rights. The patent examiner who will be charged with
determining the fate of your patent applicatin is only human, and sub
ject to quota systems at that. There is an array of tricks at your
disposal to improve your chance for being granted your patent. So if
your objective is to have a patent granted, with no concern about its
scope or ultimate validity, you may want to learn more about the
various ways in which the Ip professional can satisfy the client's
request for a patent that may ultimately prove to be worthless.
Drafting a Patent Application
into this task, take a step
back and assess your options. Assuming that your invention falls into
the category of "utility", you have the options of
filing a full utility application, or a provisional application.
A provisional application is nothing more
than a full utility application absent of the claims.
A provisional application is much simpler
to prepare, to file, and costs much less than a non-provisional
application. In addition, a provisional application can be abandoned
with little downside if the invention bombs.
A provisional application
incentivizes a prospective licencee to
your invention because it provides the flexibility of modifying the
final product to better fit the needs of the licencee. For all these
reasons, many attorneys prefer filing a
provisional application as a first step in the process. Although some
practitiones suggest preparing a provisional application using rough
pencil sketches and somewhat crude verbal descriptions, it is
good practice to prepare a full formal utility application, less claims
for filing in the patent office. What makes a provisional application
attractive is its status as a placeholder, giving you an
all-important priority date. The provisional application is never
examined by anyone in the patent office, but just sits there waiting
one year from the filing date. It then becomes abandoned, and you lose
your priority rights, unless you file a full utility application
claiming priority from the provisional application. An abandoned
provisional application is kept confidential in USPTO files and never
made public. Hence, the essence of the invention will not enter the
The provisional application does not require any claims to be filed,
but only a set of drawings and disclosure (the description of the
invention). Thus, it is much easier to prepare and to file. It also
extends the life of your patent by a full year. Above all, it gives you
the flexibility to come up with improvements which can later be added
(without the priority date)
in your formal utilty application. in addition, should you intend to
licence your patent to a company, it allows the licencee the privilege
of adding improvements, and also to file worlwide applications based
upon the original provisional application.
includes these basic components:
application forms, which can
from the USPTO web site.
The following is a
listing of the
sections required in a
patent application . Each section is identified by its heading in
the body of the application.
Title of the Invention
descriptive word or phrase by
which the invention will be referenced
description of the invention
that appears on the cover of the published patent
Background of the
problems, prior attempts at solutions which the invention overcomes
section that precedes the detailed
each drawing figure by number and capsule description
Full and complete specification
each drawing figure and each numbered element
Formalized statements defining
the subject matter having exclusive rights
Graphic illustrations depicting
the invention, as needed for providing clarity
in the written specification
essential component for just about any kind of utility patent
USPTO classification system lists major
classes and subclasses.
new to the patent system, it may be useful to browse through the patent
in order to develop some basic familiarity with the patent system.
Preparing the Specification
1. Prepare a rough sketch showing
parts and features of your invention. If it is an electrnics or
software invention, use block diagrams or a flowchart. Sketch a series
how the parts interact. Remove any non-essential components and draw
skeletal or stripped-down version.
2. Identify the invention with a
e.g. "Pivotable laptop Stand" and each part with a name and a number.
Use balloon drawings with arrows to provide clear visual cues.
styles illustrating two basic
utility patent concepts:
(b) Process or Method
3. Filing a
filing a Provisional Patent Application
The USPTO (like any of
the other national patent offices) is a stickler for exactness in all
formalities that are part of a patent application.
You should study the examples of
documentation which are presented in these pages, and other examples
will be documented in these
components which form part of your application:
Abstract: A brief
overview of the technical disclosure in
the specification not exceeding 150 words in length.
Specification: The written
description of the invention. The
specification is comprised of the following sub-categories:
Claim(s): One or more
claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as
Drawings: Any drawing
required under 37 CFR 1.81(a) See
37 CFR 1.53(b)
After you have prepared a complete set of documents in the
correct format, convert them to PDF format. This is simple if you have
a wordprocessig program like Microsot Word on your computer.