Patent Primer for New Innovators

A Guide for the Do-It-Yourself Patent Filers

February 2009

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www.LegalAdvantage.net

“The works of founders of states,
Lawgivers, tyrant destroyers and heroes
cover but narrow spaces and endure
but for a little time, while the work of
the inventor though of less pomp is felt
every where and lasts forever.”
- Francis Bacon
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Introduction
The word patent originates from the Latin word ‘patere’, which means “to
lay open,”or to make available for public inspection. A patent is a set of
exclusive rights granted by a state to an investor or his assignee for a fixed
period of time in exchange for a disclosure of an invention.
There is evidence that patents were used in ancient Greek cities, such as
Sybaris. Patents in the modern sense originated in Italy in 1474; England
followed with the Statute of Monopolies in 1623. In the United States, the
Articles of Confederation laid the groundwork for patent systems be-
tween the years 1778 and 1789.
Patent Law and Substantive Law of Trademarks centers around the
concepts of distinctiveness and similarity of marks and goods. The object
of granting a patent is to encourage and develop new technology and
industry by protecting one’s invention.
Filing for a Patent – An Introduction
During the patent application process, be prepared to:
• Determine if you can patent your invention
• Understand patent law
• Evaluate the commercial potential of your idea
• Perform your own patent search
• File a provisional patent application
• Prepare a formal patent application
• Respond to patent examiners
• Amend an application
• Enforce and maintain your patent
• Market and license your invention
It is essential for you as an inventor to understand the patent process
before venturing into patent filing. The importance of a thorough patent
search cannot be stressed enough. It is the only way for you to check if
someone else has had the same idea. If someone did have the same idea,
did they already patent it? It is also possible that someone had the same
idea and filed for a patent that is currently pending. If the patent is pend-
ing you will have to decide whether to proceed with a new patent appli-
cation with the hope that your patent is granted before the other one, or
to drop the idea of applying for a patent.
Note: Patent pending applications are made public only 18 months after the filing date. Prior
to this, there is no way to find out if a particular application is already in the system.
If your idea is innovative and you have the enthusiasm to work and con-
vert the potential profit margin into a real one, it makes sense to try for a
patent.
 Prior Art

When you have committed yourself to getting a patent, you

need to choose how to file for the patent. The first and most
obvious choice is to go to a patent attorney. The second is to go
to a patent agent. The third is to do it yourself.

Hiring a patent attorney generally seems like a surefire way to

a successful patent. It’s the easy way out. But there is a catch:
in a time of economic downturn where cost cutting is critical,
would you be able to spend anywhere between $8,000 and
$10,000? It might make more sense for you to save money, use
some smarts, and file the patent on your own.

The second way to file for a patent is through a patent agent.

Finally, you may want to write and file for your patent yourself.
If you decide on this choice, we suggest that you check out the
book “Patent It Yourself” by David Pressman. Once you are done
with prep work, we strongly recommend you get an attorney
for a final review of your application before submission.

Steps to Filing a Patent Application

You might ask, Here are a few reasons to do so:

• Looking at statistics, only about one in 1000 new inventions
“Why file it yourself?” become commercially successful. So any mistakes in the appli-
cation probably won’t matter.

• A patent attorney is not a guarantee for a valid and successful

patent, especially considering that most invalid patents were
originally drafted by attorneys.

• Financially, filing the patent application yourself will cost less.

Many inventors have taken this seemingly difficult path and

successfully navigated the patent system on their own. Federal
law necessitates patent examiners at the U.S. Patent and Trade-
mark Office (USPTO) to help individual inventors who apply for
patents without a lawyer’s help.

You first need to ensure that your invention is patentable and

then illustrate and explain your invention in detail.

Don’t let this deter you; you don’t need in-depth legal knowl-
edge to take this process forward. All you need is an aptitude
for learning and an eye for detail.

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 Protection

Keep a watchful record of your invention

Document every step of the invention process and describe ev-

ery characteristic and modification of the invention. If possible,
construction of a prototype may be very helpful. Ensure that all
these steps are documented, dated and signed by you and two
other witnesses.

You cannot get a patent based on Make Sure Your Invention Qualifies for Patent Protection. To
qualify for a patent, your invention needs to meet the following
just an idea. criteria:

New or Novel:
The invention must be suitably novel. It must largely be un-
like anything that has already been patented, or is already on
the market, or has been published. If your invention has been
previously discussed or has been in the market for more than a
year, you cannot patent it.

Prior Art, an identical or similar invention that is publicly dis-

closed by others anywhere in the world, may also prevent the
inventor from receiving patent protection.

Useful:
The invention must serve some purpose and actually work. This
stops inventors, who, for example create a ‘time machine’ that
looks genuine but can do nothing practically. You cannot be
awarded a patent for an empty idea. Such unproven ideas may
only be protected by copyright laws.

Non-Obvious:
The USPTO offers the following assessment to determine if the
invention is non-obvious -”In light of known, similar products,
processes or designs, would a person of ordinary skill (but not
extraordinary skill) working in the field related to the inventor’s
invention consider the differences between the invention and
similar products, processes or designs, obvious?” The “obvious-
ness” of the patent can be recognized by combining the discov-
ery of various pieces of prior art providing there is substantia-
tion in the prior art that they can be combined.

Assess the Commercial Potential of Your Invention

Money is the bottom line when it comes to patent filing deci-

sions. Even if you decide to get the patent without the assis-
tance of a patent attorney or the use of professionally prepared
patent drawings, the entire patenting process will cost you

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Without doubt, there will be
other inventions that
are like yours.
You will need to show how your
invention improves upon or
is different from these
earlier inventions.
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Prior Art
around $1,500. So it makes sense to check and research your
perspective market before you spend the time and money to
file a patent application.
Do a Thorough Patent Search
To ensure that your invention meets all the criteria needed for
a patent, you need to search all the previous developments in
your field by searching published patents in the US as well as
foreign countries. It is also essential to investigate publications
like scientific and technical journals to find related inventions.
Patent searching is a time consuming affair, but is a feasible
task. Like any other new skill, patent searching can be mastered
with practice.
While conducting a search, it is helpful is to categorize what
you have invented. Look in the government classification index
to find the class and subclass that directly apply to your inven-
tion.
Once the list of pertinent patents appears, clicking on the pat-
ent number displays the complete patent. Patent drawings are
in an unintelligible version of the TIFF format that requires your
browser to have a suitable plug-in for viewing, which can pose
a problem.
It is important to read and understand all relevant patents, even
if you are fortunate that no patent anticipates your idea. This is
necessary to get a feel for the language that is used. Pay par-
ticular attention to the claims. The objective in drafting claims is
to make the first set of claims as broad as the patent examiner
will allow them to be, and then to list supplementary claims
that define the patent in detail. Understand the terms used in
preceding patents and try using them in your own application.
You should also pay attention to the format of the patents. Most
follow the same fundamental structure: title, abstract, specifica-
tions, drawings, and claims.
There are numerous software programs available, such as Pat-
entEase, published by Inventorprise Inc., Vestal, N.Y., which can
assist you in building and formatting your patents. It is advised
that you use a do-it-yourself guide, such as Landis on Mechan-
ics of Patent Claim Drafting, by Robert C. Faber (Ostrolenk,
Faber, Gerb & Soffen).
 The USPTO

After this search and research, you must choose what kind of
patent application to file.

When you file with the USPTO, you can either file a regular pat-
ent application (RPA) or a provisional patent application (PPA).
Filing an RPA starts the examination process at the USPTO that
is necessary to get the actual patent.
Provisional patent applications are less expensive than the
regular non provisional patent applications, but last for only 12
months. Within 12 months of this provisional application, you
need to make a decision on filing a regular patent application
in order to retain the advantage of the provisional’s filing date.
This is similar to filing an extension on your tax return: You still
need to pay the taxes and file real tax returns. Claims are not
required for provisional patent applications and are not exam-
ined. A follow-on regular patent application goes to the back of
the examination line. So, if you are racing against time and want
a patent issued quickly, a provisional is not the route to take.

Illustration

Drafting a patent application can be difficult. Prior to filing a

patent application you are required to illustrate your patentable
material in a format specified by the USPTO. While creating such
an illustration, or patent drawing, it is essential to note technical
details, such as size of the sheet, type of the paper, and so on.
The USPTO is very exact about illustrations, and has strict speci-
fications for them, which can be found at http://www.uspto.
gov/web/offices/pac/mpep/documents/appxr_1_84.htm.

A USPTO patent application usually consists of:

• Prior art - An Information Disclosure Statement explaining

why the invention is different from all the other previous and
similar developments.

• Patent specification - A comprehensive account of the struc-

ture and operation of the invention detailing the different
characteristics of the invention.

• Patent claims - An exact description of the different features of

the invention to be covered by the patent.

• Illustrations - All drawings necessary to clarify the specification

and claims.

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 Final Thoughts

• A Patent Application Declaration - A declaration that the infor-

mation in the application is true.

• The filing fee - Small inventors can also include a declaration

asking for a reduction in the filing fee.

Protection of U.S. patents abroad

Most industrialized nations offer patent protection. While
patent requirements and rules differ from country to country,
several international treaties (including the Patent Cooperation
Treaty and the Paris Convention) allow U.S. inventors to obtain
patent protection in other countries that have adopted the
treaties if the inventors take the required steps.

Dealing with a Rejection

Don’t be disheartened if your patent application is rejected.

Unfortunately, there is not much that can be done if an applica-
tion is rejected due to the presence of an earlier similar patent.
Remember, you can avoid this situation by doing a comprehen-
sive prior art search.

However, there are several options if you believe there are

noteworthy differences between your invention and the one
mentioned by the examiner, or if there are other reasons for the
rejection.

If the examiner states that your application does not contain

a detailed enough description of the invention, you can file
another application with the details filled in.
Another option is to file an appeal.

Things to remember:
• This is a long term venture; expect to spend five to ten years before you receive significant income.

• Avoid marketing your patent until you obtain the notice of allowance.

• Do not disclose any information as it may be misused by opponents.

• Conduct all communication with possible partners, keeping in mind the possibility of fighting them.

• Document all communications. After obtaining information about your invention, there is the possibility
an organization may introduce an infringing product within a short period of time.

• Protect your idea with multiple patents. Doing this generally makes an infringer settle quickly.

• If your settlement exceeds $500,000 per infringed patent, expect the opposition to try to invalidate the patent.
 About Legal Advantage

Legal Advantage provides the highest quality output in a timely fashion to IP professionals,
attorneys and law firms. Our experienced and trained team can prepare drawings in a broad
range of technical fields, as per the guidelines of the USPTO, the European Patent Organiza-
tion (EPO) and other international patent offices.

Our staff consists of IP attorneys, graphic designers, patent designers, prior art researchers
and engineers who are well versed in the intellectual property laws and procedures of various
countries.

After analyzing the invention for disclosure, our experts conduct in-depth searches for prior
art. Our prior art search is cost effective and guarantees high quality research when compared
to other organizations. Our team understands the US patent laws and technologies and has
expert knowledge in this field. We give priority to quality and follow a strict and comprehen-
sive Quality Assurance program. After being quality checked by our accomplished managers
and technical team, the project is sent to the client.

Our turn-around time is one of the fastest in the industry. We work around client deadlines
and have built an excellent reputation for speed and quality.

We have successfully completed 15,000 projects in the past seven years, and aim to finish the
same number in the next two years.

Legal Advantage offers the following services:

Intellectual Property services:

• Patent Illustrations
• Patent Drawings
• Patent Proof Reading
• Prior Art Search

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• Contract Management and Drafting
• Document Review, which consists of Litigation Review
and Merger & Acquisition Review
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• Legal Research
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• Trial Graphics
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