Should Independent Inventors Prepare and File Their Own Utility Patent Applications?

I received a question today from a newbie inventor. She has read a book about pro se (doing it yourself) preparing and filing a utility patent application and believes that possibly she can successfully prepare and file a utility patent application on the product she is developing.

She worries though that she might not properly prepare her utility patent application and believes that she cannot modify her original application so she must “get it right the first time” (actually, that is incorrect… the application can be modified but: 1. new information called “new matter” cannot be subsequently added and 2. her claims as originally presented might lock her into a bad position such as for getting the broadest patent protection possible).

She does not have/want to spend her money on attorney’s fees (typically $3,500.00 to $7,500.00) to have her utility patent application professionally prepared for her. She feels her only alternative other than filing pro se is to find an investor, sometimes called an “angel”, to help her with her costs. She says “It just seems so overwhelming.” which is a typical state-of-mind in which independent inventors find themselves.

My response to her is that an experienced technical writer (or similar DETAIL ORIENTED writer who writes a lot – MANY inventors leave out parts of their invention that are CRITICAL which cannot be added later and retain the original filing date… the so called “new matter”) can adequately prepare and file their own provisional patent application, which is a complete disclosure of the invention including the component parts and how they work together (or for a method… the steps and how they work together). I have not used any of the patent preparation software on the market to prepare a provisional patent application.

In my opinion, NOBODY WHO IS NOT PROPERLY TRAINED IN PATENT LAW (shouting intended) can adequately prepare and file their own utility patent application let alone and prosecute it to issuance through the U.S. Patent Office (USPTO). Utility patent applications have strict requirements for preparation (especially the heart of the application… the claims) and will be scrutinized by a court if your invention becomes a commercial success and someone wants to invalidate it.

It takes not only the legal knowledge acquired by passing the Patent Bar Exam given by the USPTO, but about 2-3 years of TRAINING under DAILY SUPERVISION of a seasoned patent attorney. Therefore, a newbie Patent Attorney or Patent Agent (not an attorney) who passed the Patent Bar but has not been trained by an experienced Patent Attorney is not even qualified to prepare your patent application by him/herself! Would you “go under the knife” using a “surgeon” who only read a book about doing brain surgery and you are his/her first patient? I think not!

She is also contemplating using a software package to file a provisional patent application. I have not used such software, but it may be a valuable aid in preparing a provisional patent application (see below about having the results reviewed by a Patent Attorney). Regarding software programs to prepare a utility patent application, “artificial intelligence” currently cannot even adequately simulate the decision-making processes of a cockroach or a fruit fly… let alone the decision making processes of a trained Patent Attorney.

However, I do recommend doing a write-up and sketches of your invention to clarify and crystallize your invention in your mind. You CAN use a book or software to assist you in this process. HOWEVER, submit your work to a Patent Attorney to edit and finalize! I encourage you to read all you can about patents and the invention process, but be careful about your limitations.

The reason you do not hear about the improperly prepared patents written by independent inventors being invalidated by the courts is that virtually none make it to the court system by achieving commercial success. Thus, independent inventors are “lulled” into a false sense security that since “Joe the Inventor” “successfully” prepared, filed, and got his own patent, I can do so too. They do not realize that the issued patent is virtually WORTHLESS (i.e. claims offer very narrow coverage under which competitors’ products do not fall or “infringe the patent” and/or flat out invalid due to mistakes made by the inventor)!

Check out my article about pro se inventors who have already filed a patent application (separate post below).

Have you done a patent search to see if your invention is even patentable (is useful to do something, is new, and is not an obvious thing to do)?

You can use the USPTO web site if you like, though patent searching is as much an art as a science and takes doing a lot of searches to master. See:

http://www.inventionpatenting.com/us_patent_office.html

I can do a professional patent search inexpensively at:

http://www.inventionpatenting.com/order_patent.html

Also, I have two special offers on filing patent applications for a LIMITED TIME ONLY:

Prepare a Provisional Patent Application:

http://www.inventionpatenting.com/file_provisional_adwords.html

Prepare a Utility Patent Application:

http://www.inventionpatenting.com/file_utility_adwords.html

I hope this helps you. Let me know if you have further questions.

Best regards,

Brian R. Rayve

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Are You Discouraged About Your Making Money From Your Invention?

Lets face it… starting a new business is tough! I have been running InventionPatenting.com since 1999 to help independent inventors protect and make money from their new product ideas… all at a reasonable cost. Sounds like a simple and workable business concept right… especially when so many invention marketing companies have been taking undue advantage of new inventors for years?

Well, a new business does not “take off” on its own simply by setting up a web site (which I learned after setting it up in late 1999). It takes a lot of knowledge and hard work! Even now, having learned how to promote my web site, it is still often discouraging.

My point is that perseverance is key. If you have a new product idea that has not proven a marketing success, re-evaluate your product. Is it really as good as you think it is? Many inventors “fall in love” with their new product idea oblivious to the reality of the situation. Ask prospective customers to use and evaluate your product. Does their feedback match your thoughts about your product? If not, specifically find out why. Ask them whether they would purchase the product if they saw it on the store shelves. What price would they be willing to pay for it given its advantages (and probably some disadvantages – most things in life are a trade-off) over competitive products.

I hope this gives you some insight… and renewed inspiration. More to come!

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You Filed a Utility Patent Application Yourself (Pro Se Inventor) – Now What?

So you prepared your own utility patent application to save money. While taking the time and effort to do so is commendable, you really need to have your utility patent application reviewed by an experienced patent attorney (particularly the claims) when you receive a First Office Action from the U.S. Patent Office to make sure your application properly covers your invention. You will also need his/her professional help in responding to the Patent Office.

It takes about 2-3 years for a patent attorney to be trained (under the daily supervision of an experienced patent attorney) to properly prepare a utility patent application and prosecute it through the Patent Office to a patent. An inventor such as yourself cannot possibly hope to do it properly first time! The money will be well spent.

Keep in mind three principles…

1. the breadth of coverage of an issued patent is what counts… not the fact of having a patent. This is so you maximize the number of devices that violate your patent (get your rightful patent coverage of your invention).

2. The enforceability of an issued patent also counts so you can enforce those rights.

3. Keep your invention CONFIDENTIAL (you can use a Confidentiality Agreement if properly used which is a separate subject) until you consult with a patent attorney about which countries around the world in which you want to get patent protection. It is expensive to get patents and you might say to yourself “I only want/can afford patent protection in my home country”… but keep in mind that some international company might come to you later wanting to patent it in many countries!

Preserve your rights to get patents in foreign countries… consult a patent attorney! Note that keeping your invention confidential includes NOT PUTTING YOUR INVENTION ON THE INTERNET.

Also, note that you CAN MARKET your invention before your patent issues… just be sure of the ramifications of your marketing activities ahead of time by consulting a patent attorney as I suggested above!

Ultimate Independent Inventor Resources Has Arrived!

Dear Independent Inventors,

Want a comprehensive listing of resources compiled to help independent inventors such as yourself succeed in protecting and making money from your invention or new product idea?

Check out the Ultimate Inventor Resources I just added at:

http://www.inventionpatenting.com/ultimate_inventor_resources.html

Why not bookmark the web page for future reference as we will be updating it frequently with new information?

You can also download my brand new Ultimate Inventor Resources Gadget at:

http://www.inventionpatenting.com/ultimate_inventor_resources_gadget.html

Best Regards,

Brian R. Rayve

Frantic Inventors Wanted!

Are you a typical newbie inventor… frantic to get started making money from your new product idea but not having a clue what to do?

Don’t worry, most people feel the same as you when they start out. The first thing to do is to file a patent application to lock in your legal rights to your invention. You can file a provisional patent application to lock in “patent pending” for one year. It cannot issue as a patent, but a utility patent application can be based on it if filed during the one year patent pending period can and retain its filing date.

A utility patent application can issue as a patent after going through an examination process at the U.S. Patent Office. To be patentable, your “idea” must new and non-obvious. Usually, before filing a utility patent application, a patent search is conducted to see whether the inventor should invest the money to file one. A provisional patent application is much less expensive and thus a patent search is optional, though advised if other investment is going to be done to bring a product to market.

Once you have locked in patent pending filing one or the other type of patent application, you can tackle marketability and licensing issues, which I will discuss at a later date.

You can sign up for a provisional or utility patent application at:

http://www.inventionpatenting.com/file_provisional.html

You can see more information about provisional patent applications at:

http://www.inventionpatenting.com/provisional_patents.html

Best regards

Brian Rayve

What is the International Convention, also called the Paris Treaty?

Many countries are members of the International Convention, also called the Paris Treaty.

These countries allow inventor(s) to claim “foreign priority” based on the filing date of the first filed patent application in a member country, provided a patent application is filed in the member country within one year of such first filed patent application (within 6 months for design patent applications).

The United States is a member of the Paris Treaty so as to grant such priority based on a foreign patent application.

Don’t count your clicks before they hatch!

Patents For Inventors on Their Inventions - Relationships

Do you have a website promoting your new product idea? It can be a great way to promote products. However, there are many pitfalls to doing so naively.

For example, I have been spending thousands of dollars on pay-per-click search engines over the last few years to promote my website. I have received many click-throughs but the costs have far outweighed any profits made from the clicks.

Recently I read that RELATIONSHIPS count, not CLICKS! I thought to myself duh! Why did I not properly follow-up with all of the people who clicked through and signed-up to download my free Independent Inventor’s Kit? It seems so simple now.

Well, that is why I am now blogging regularly and emailing those click-throughs to establish relationships with them! Most will probably never buy any products or services from me, but those that do will be worth it (financially speaking).

Regardless, I did not get into business solely to make money (though it helps to pay the bills), but to help people. I hope that those people who never become customers are helped by the free information they get from my website.

Well, I hope that you follow-up on the leads, including paid clicks, that you get… they are worth persuing to build those relationships and some end up as friendships.

Remember to offer some incentive (that helps people) to capture contact information… typically at least first name and email… so you can follow up. Also keep in mind that people are flooded with emails these days. Most people throw out 9 out of 10 emails they receive… so make sure your emails offer VALUE to recipients (i.e. supply some knowledge or product worth spending their increasingly scarce time to open and looking at).

In future articles I will write more tips on alternatives to email follow-up. Stay tuned!

Talk to you again soon… remember to follow-up and build those relationships!

A Cutting Edge Solution for Mowing the Lawn!

Patents For Inventors on Their Inventions - Lawn Mower

I do not know who this is… but steering so as to cut the entire lawn may be a problem! Likewise, I hope that a snooze shut-off is included so the lawn mower does not unwittingly cut the neighbor’s lawn… and the neighbor’s neighbor’s lawn… and so-on.

Actually, my father tried using one of the first self-propelled push mowers to automatically cut the lawn in our backyard in the early 1970s. He placed a post in the middle of our backyard and connected it to the lawn mower using a rope long enough to reach the outer edges of the lawn.

The diameter of the post was such that one trip around the post caused a length of rope nearly equal to the cutting width of the lawn mower to wrap around the post. This continually moved the lawn mower inwardly towards the post to provide slightly overlapping cuts.

Only one problem my dad did not count on… the lawn was rectangular in shape!