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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