Can I File My Own Patent Application

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Of all of the frequently asked questions, this is one of the most difficult to answer. The legal answer is, of course, yes. Thomas Jefferson filed his own patent application, as have many inventors over the last two centuries. The Patent Office was designed to be approachable and helpful to the individual inventor, especially in regard to provisional applications.

Provisional patent applications do not have a requirement for either formality or patent claims, and since provisional patent applications are never examined by the Patent Office, as long as certain rules are followed with respect to complete disclosure and disclosure of the best mode of the invention, provisional patent applications are good candidates for self-filing.

Nonprovisional patent applications, however, are incredibly complicated. They are not so complicated to write, and it is not so complicated to explain the invention, but over 200 years of legal changes in the Patent Office, and court interpretations of legal doctrine, and the often high stakes involved in patent litigation have created complication. Almost every single word in a patent application and claim becomes challengeable in court, in the event that the patent is asserted against an infringer.

It is understandable that not all inventors will be able to seek assistance on their inventions and having patent applications professionally prepared. Although it may be possible to file your own provisional patent application, it is my advice that at least some help should be sought in preparing, filing and prosecuting a non-provisional United States application. Quite frankly, if you cannot afford some legal assistance with preparing, filing and prosecuting your United States patent application, seeking patent protection is likely not a worthwhile endeavor. Without legal assistance, there is a very good likelihood that your patent will not survive the examination at the Patent Office; even if it does survive, the average inventor’s patent will be so narrowly limited in scope that the patent will be of little commercial value.

One point to note here is that the Patent Office trains its patent examiners to be very helpful to pro se inventors, but despite their friendliness and enthusiasm for assisting pro se inventors (and it has been my experience that they are very helpful towards inventors who try to prosecute their own patent applications), the general mindset of the average patent examiner is to allow claims only with the narrowest possible scope. This mindset develops over interacting with patent attorneys who represent inventors seeking the broadest possible patent scope on their patent claims. It is the job of the patent examiner to protect the integrity of the system by carefully examining and narrowing the scope to the least possible allowable claim, so that the value of the issuing examined patent will be insured. Asking patent examiners to help you write a patent claim is akin to getting your used car appraised at the car dealership prior to advertising it for sale in the paper. The patent examiner is going to be much more conservative, much more so than the advice you would likely get from a professional patent attorney or patent agent.

If you permit me a little bit of literary license in order to tell you about case I dealt with some years ago, I’d like to tell you a story about my client named Bill. Bill is an entrepreneur who lives in Darien, Connecticut; Darien, as you may know, is not just an Amtrak stop between New York City and Boston. Bill was referred to me by an attorney friend of mine in New York, and Bill had written and filed a patent application about 1996. The application covered an invention that he had conceived of involving the use of floppy disks in computer printers. His idea was that images on floppy disks should be directly printed by a computer printer by inserting the floppy disk into the printer and having the printer print them.

Unfortunately, the claim pretty nearly covered all the suggestions made by the numerous interactions with the Patent Office Examiner and consisted of two full columns in the issued patent. The claim was so narrow in scope at this point that after reading the detailed elements of the claim, it would have been nearly impossible for someone to intentionally been an infringer of this patent. After the patent issued in 2002, this client contacted me and asked me to approach a large printing company to inquire about the possibility of licensing this patent from him. Although the invention was very valuable and there was virtually no relevant prior art prior to my client’s filing of the patent application, the narrowness and complexity of the single patent claim would make the patent almost useless to anybody who owned it. In essence, the patent was fairly worthless as issued.

Now fortunately, there were a couple of things that favored this pro se inventor. First of all, the detailed description was, in fact, extremely detailed. My inventor liked to write, and he put a lot of effort and creative energy into the patent specification itself. The main embodiment contained a media reader on the printer; there were also many alternative embodiments that were included in the specification. Second, since the inventor came to me shortly after the issuance of the original patent, it was possible for us to go back to the Patent Office and ask for a broadening reissue of the patent application. A broadening reissue is a procedure with the Patent Office in which the inventor requests reexamination based on a broader claim scope that was not the subject of the prior examination which led to the issuance of the patent. Although a narrowing reissue may occur anytime during the life of a patent, a broadening reissue must take place within two years of the patent’s issuance. So despite the fact that the claim was almost uselessly narrow upon issuance, we were able to utilize the detailed description of the original filing and request that the Patent Office reopen examination and consider broader patent claims based on embodiments that were not originally the subject matter of earlier claims.

The moral of the story is that my client would have faired better had he found a way to get some legal assistance at an earlier stage than the patent process. There is no doubt that the patent would have issued much more quickly, would have had much broader claims, and would have been much more immediately valuable as licensable intellectual property to a printer manufacturer.  Since he failed to do so, many thousands of dollars needed to be spent on prosecuting the reissue application, and much more was lost in monthly revenues that would have been available, had a time-consuming reissue examination of the patent not been necessary.

http://www.carrferrell.com/can-i-file-my-own-patent-application

How do I decide what to patent?

The bane of all business is competition. On a macroeconomic level, competition is critical for social efficiency; it generally drives the conservation of resources, better products, and more effective services. For the individual business – that is, yours and mine – competition has the negative impact of ultimately commoditizing our products and services. When products get commoditized – that is, become commonly available goods produced by multiple suppliers – the only relevant business question is whether you are willing to be the low-cost producer. In a commoditized market, price is the only distinguishing feature among producers; in such a market, unless you are willing to meet or beat the competition on price, your business will quickly become marginalized. The other problem with commoditized markets is that they almost always heavily favor large, established and/or foreign suppliers. Since cost is often driven by efficiency and labor prices, larger companies will often be able to take advantage of economies of scale and foreign labor to undercut pricing.

By patenting product features, you can prevent the commoditization of your product.

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For example, imagine that you are a small company in the wheelbarrow business. If ever there was a commodity business, this is probably one. Wheelbarrows have been commonly produced for multiple millennia in every country of the world. Let us say that the leading producer of wheelbarrows in the United States is Acme Industries, and that their products are largely produced in China and imported into the United States. To compete as a wheelbarrow supplier, you will need to either compete on price or provide a set of product features that are not available from Acme. Competing on price will require that your company find a way to buy raw materials at lower price and then operate factories more efficiently and at a lower cost than those operated by Acme. Since Acme has been established in business for many years, however, they have acquired a tremendous institutional knowledge base of cost-efficient business practices and processes relating to the manufacture and distribution of wheelbarrows. Therefore, it does not make rational business sense to try and attack Acme on price alone.

Alternatively, your company could innovate a set of wheelbarrow features that Acme does not have. For example, perhaps your wheelbarrow has a deformable tub. In the wheelbarrow trade, the business end of the wheelbarrow that carries stuff is referred to as the tray, tub or bucket. Your company’s deformable tub is made of synthetic rubber that is shaped to automatically shift the load to the center line of the tub so the wheelbarrow is self-balancing and much easier to maneuver. Furthermore, your design has a durable plastic hatch built into the tub that can be opened to completely drain the wheelbarrow of its contents (gravel, cement, water, etc.) And since the tub is manufactured of synthetic material it will never rust or corrode, even when used with lime, caustic fertilizers and powdered swimming pool chlorine.

If patents can satisfactorily protect these features, then Acme is no longer a competitor. The products that your two companies produce are different and will support different price structures in the marketplace. The price of your wheelbarrow will now be set by the relative value of the additional features that your product provides to consumers, and not simply by how low Acme can or is willing to price its products. Patent protection decommoditizes your products and allows pricing to be driven by the value of the differentiating features.

When is it too late to file a patent?

In addition to the limitations on patentable subject matter, the patent laws of the United States also prohibit granting patents on otherwise patentable inventions due to certain occurrences, known as barring events. If a barring event has already transpired with respect to an invention, then there is no point in filing a patent application because no patent can ever issue that claims that invention. For example, if the invention was on sale or in public use anywhere in the world more than one year before an application is filed, the invention cannot be patented.

http://bit.ly/1VQBIEd

http://bit.ly/1VQBIEd

One act, no matter how small, trivial or obscure, can constitute public use and bar patentability. My favorite example of this situation involves a hundred-year-old story about a woman’s corset. A woman was complaining to her fiancé that her corset-stays were always breaking. Determined to make her some stays that would not break, he invented a pair with springs. He presented the stays to her and she wore them for more than two years before her fiancé applied for a patent. While they were worn in the corset underneath her clothing for a long time, no one else ever saw them. However, the court said that these acts placed the invention in public use, even though the public never learned of them and were highly unlikely to learn of them as a result of the woman’s use. Public use has nothing to do with the likelihood that the public will learn about the invention from the use. It has to do with whether the invention is used in public.

I had a client a few years ago that ran a teaser advertisement in a leading German newspaper in conjunction with an annual electronics tradeshow called Cebit. Although the new product was not publicly shown or sold at the tradeshow, the advertisement disclosed enough about the new product to render the invention unpatentable in the United States when the product was released a year and a half later.

It is important to note that deciding whether an occurrence constitutes a barring event can be tricky, as the statutory language has been heavily interpreted though numerous patent court cases. For instance, “on sale” means both “offered for sale” as well as “actually sold.” It is advisable to consult a patent attorney if the anniversary of a potentially barring event is quickly approaching, or if there are doubts as to whether an occurrence more than one year ago may already bar patentability.

http://www.carrferrell.com/when-is-it-too-late-to-file-a-patent

When should I file my patent application?

On Valentine’s Day morning in 1876, Alexander Graham Bell filed an application for the telephone – which was to become one of the most valuable patents ever issued. By incredible coincidence, Elisha Gray arrived at the Patent Office later that same day with his independently developed telephone invention. After years of litigation, Bell received the patent, launching the modern telecommunications industry. Gray slipped into relative obscurity.

https://en.wikipedia.org/wiki/Elisha_Gray

https://en.wikipedia.org/wiki/Elisha_Gray

Although prior to March 16, 2013, the United States granted patents to the earliest inventor, the current law follows the first-to-file system used by most of the rest of the world, and grants patents to the first inventor to file a patent application.

The best advice for any entrepreneur is to file early and to file often. Filing patent applications on developing ideas does not need to be expensive. A provisional patent application can be self-prepared and filed with the Patent Office for around a hundred dollars. Provisional applications can be thought of as placeholder applications, and while they are never examined by the Patent Office, they provide a filing priority date for invention details which are provisionally disclosed.

FAQ Fridays: Who are the inventors to a patent?

A photograph of Henry Ford, Thomas Alva Edison, and Harvey Samuel Firestone- the fathers of modernity.

A photograph of Henry Ford, Thomas Alva Edison, and Harvey Samuel Firestone- the fathers of modernity.

At first blush, identifying an inventor should be a pretty easy task. Clearly it is someone who invents – the innovator of something new, useful and non-obvious. But what if two people collaborate on an invention? Are both “inventors?”Although seemingly simple in the abstract, the identification of inventors is often very complicated. Key to the analysis of inventorship is taking a careful look at the actual invention being claimed.

For example, let us imagine that you succeed, where all others before you have failed, in inventing a perpetual motion machine. You are able to uniquely arrange the elements of the machine so that, if properly constructed, perpetual motion will occur. One important piece of your invention is a frictionless bearing, for which you have not yet conceived of an implementation. Without this novel bearing, the motion of your machine will not be perpetual. You discuss your motion machine with an associate, Billy, who is immediately able to sketch a novel solution for the frictionless bearing for you. Neither of you being able machinists, you then approach Candy, who is able to build the bearing using blueprints supplied by Billy. With this bearing, you are then able to construct a working prototype. Before announcing your Nobel Prize-worthy achievement, you seek to file a patent application on your new machine.

Who are the inventors of this perpetual motion machine? If the machine itself is the subject of the patent, then you certainly are an inventor since you conceived of the machine and identified the parts needed to make it work. Billy is also arguably an inventor, since without his bearing contribution the functional operation of the machine would not be possible. Indeed, Billy may be entitled to a separate patent on his invention of the valuable, frictionless bearing. Candy, however, is probably not an inventor of this perpetual motion machine, since she did not contribute to the conception of the invention, but merely followed the instructions of Billy’s blueprints in machining the bearing. Although unquestionably valuable, Candy’s contribution did not elevate her to the level of “inventor.”

When filing a patent application, it is essential that all true inventors be named in the application. Purposely leaving a true inventor out of a patent application, or purposely adding the name of a noninventor, may give rise to later invalidation of the issued patent. As a matter of practice, it is preferable to err on the side of being over-inclusive in naming inventors. Individuals whose names are erroneously added to a patent application seldom complain, while inventors whose names are left off a patent application are much more likely to seek redress and challenge the patent’s validity. Avoid, however, gratuitously naming friends, relatives and superiors in your patent application, as inventorship will likely be challenged in the event that the patent is later litigated.

FAQ Fridays: What Can Be Patented?

Illustration of a photophone transmitter, showing the path of reflected sunlight, before and after being modulated (https://en.wikipedia.org/wiki/Photophone)

Illustration of a photophone transmitter, showing the path of reflected sunlight, before and after being modulated (https://en.wikipedia.org/wiki/Photophone)

Nearly anything can be patented. Machines, medicines, computer programs, articles made by machines, compositions, chemicals, biogenetic materials, and processes, can all be the subject matter for a United States patent. To get some handle on the contours of patentability, it is sometimes easier to think of the things that cannot be patented.

Laws of nature cannot be patented. Had Albert Einstein attempted to patent general relativity, his patent application would have been rejected by the Patent Office, at least in the United States. General relativity is a law of nature like entropy, sunshine, and the vagaries of weather. Materials for atomic weapons cannot be patented, presumably because the Patent Office is happy not to have the recipe for these materials available for public consumption. Articles contrary to the public good are not patentable. Since the buying and selling of human organs is illegal in all of the U.S., systems or methods that are dedicated to enabling the commercialization of human organ exchange would not be patentable.

Aside from these few categories, virtually anything that is new, useful, and nonobvious can be patented. To fully appreciate the bizarre range of inventions accepted by the Patent Office, visit the online patent database at www.uspto.gov.

Image creator: George A. Bockler, 1660

Image creator: George A. Bockler, 1660

One of my favorite intellectual curiosities is studying perpetual motion machines. Since a perpetual motion machine has never been built, it is not that difficult a subject to study. For some reason, though, the idea of building and patenting perpetual motion machines has been the Holy Grail to our world’s population of technical wackos – and there have been many. Although the exact definition of what constitutes a perpetual motion machine remains unsettled, at minimum it consists of a machine that, once set in motion, will continue in motion without ever stopping and without the influence of any further forces required to keep it going. An example would be a pendulum that, once started, never stops.

The obvious problem with perpetual motion machines is that in our earthly world, negative outside forces such as friction and gravity always work to retard and prevent true perpetual motion. More importantly from a patent definition standpoint, since a perpetual motion machine can never do work, otherwise the energy in the system would quickly be drained, can it really be called a machine? That is, do all machines, by definition, do some work? So even if a perpetual motion machine could be built, it might not even be patentable since it may not be truly useful, except perhaps as a novelty item.

In any event, if you do plan to file a patent application on a perpetual motion machine, be prepared to provide a working demonstration to the Patent Office – it is the only non-life sciences invention I am aware of that still requires the submission of a working model.

Source: http://www.carrferrell.com/what-kinds-of-things-can-be-patented

FAQ Friday: Why do Patents Matter?

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Patents are critically important to many kinds of businesses, particularly businesses that rely on technology and innovation for effective competition with others in their industry. The evolution of products in these types of industries tends to be so rapid and perpetual that it can be quite challenging just to keep up with the momentous progression, much less protect the ingenuity in a timely manner along the way. But the timely procurement of the protection a patent offers can provide businesses with five major benefits.

  1. First and foremost, patents enable limited monopolies for their owners. These monopolies often allow a company a quiet period of up to two decades or so to reap the exclusive benefits of resources invested in research and product development.

  2. A second benefit of patents is that patents protect the invention from unexpectedly leaving the business. Like a ball and chain tethered to the technology, the patent prevents ex-employees, customers, and competitors from taking the innovation and marketing their own competing products.

  3. Third, patents provide a tangible measure of research and product development output. Patents allow companies to keep score of how effectively their research efforts are producing innovative ideas and provide an excellent way of memorializing and organizing these inventions.

  4. Fourth, patents provide a business in a competitive industry with a defensive bargaining chip to exchange in the event that the business finds itself the target of someone else’s patent. This is often referred to as the defensive use of patents. Since patent owners may completely exclude others from practicing their inventions, the mere payment of money to a ptent owner may not be sufficient to enable an infringer to stay in business. Often the threat of a patent counterclaim and the resulting exchange of patent rights is the only way that aggressive competitors can coexist. Without patents, operating a technology business in a crowded market is akin to swimming in a shark tank with a nosebleed.

  5. Finally, patents allow sophisticated entrepreneurs and businesses to exercise offensive control over their markets. With well-planned patent filings, a company may be able to control its own destiny and greatly impact the future of its competitors. This process, called “Strategic Patenting,” looks at a company’s product plans as well as the product roadmaps and patent portfolios of key competitors. For examining the company’s own product plans, the initial questions asked in this process may include:

  • What are the key technologies needed to extend current products into the future?

  • How can we control these technologies and prevent others from hijacking our roadmap? and

  • Where can we get missing technologies needed to extend the product plan?

 

Source: http://www.carrferrell.com/why-do-patents-matter

FAQ Fridays: What are Patents?

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Patents are government grants of temporary monopolies to creators of useful and ornamental inventions. A patent serves as a protection, preventing others from the unauthorized making, using, selling, or offering to sell the invention for a fixed time period—20 years in the case of utility patents.

This protection affords the patent owner the opportunity for economic reward and also serves as an incentive to continue creating other inventions for even further financial gain. In exchange for this protection, detailed information regarding the invention is disclosed to the public, to be freely used by all once the patent monopoly expires. In fact, the patent protection is a bargain between the public and the inventor—the almost complete and unfettered protection of temporary exclusivity for an invention in exchange for explicit written instructions on how the invention is made and used.

Why Patent? A Lesson in Protecting the Independent Inventor

My first exposure to patents as a kid was a story in our small town newspaper about an inventor by the name of Bob Kearns. Bob suffered permanent eye injury from an exploding champagne cork on his wedding night. The visual impairment made it particularly difficult for Bob to drive during rainstorms, motivating him to design a variable timer circuit that enabled intermittent operation of an automobile’s windshield wipers. Bob patented his invention, built a prototype, installed the device on a 1962 Ford Galaxie, and demonstrated his invention in 1967 to engineers at the Ford Motor Company. Ford filed its own patents on the windshield wiper controller and offered the feature on its new 1969 models without ever reaching an agreement with Bob. Soon, every car manufacturer in the world was building cars with variable control windshield wipers. Bob filed suit, and after some protracted legal wrangling, settled with Ford and other automakers for some $50 million, at a time when $50 million was still a lot of money.

Several important lessons come from this story of Bob Kearns. First of all, small time inventors can make significant contributions to technology – you do not have to be a Shanghai-based conglomerate to invent something valuable. Second, even simple inventions can be important contributions. Bob’s windshield timer reportedly only had four components – it was almost a trivial technical breakthrough, yet no less useful. Finally, patents level the playing field somewhat for small inventors when dealing with large companies. Is it difficult to enforce patents against mega companies? Yes, but the damage awards from large companies can also be disproportionately large.