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I have an Invention ... Now What?
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   am I crazy?
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am I crazy?
« on: Mar 1st, 2004, 9:17pm »
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I am an engineer with considerable technical writing experience including preparation of technical and licensing documents.   I have a number of ideas that I believe to be commercially valuable and may be patentable.  In most cases the ideas are relatively straight forward product innovations that I am technically capable of  explaining and ensuring they are technically viable.   Since there are a number of ideas that I would like to pursue, I would like to learn to do this myself if possible to avoid the substantial cost of hiring a professional.   As a minimum, I am attempting to prepare a provisional patent that I can use to assess the potential value of the idea.  
I have  read a few books on taking ideas to market and obtaining patents and I believe that I have a reasonable understanding  of  what is involved.  I have read the book “Patent It yourself” by David Pressman and followed that guidance to prepare a couple of draft patents.  I think I have a grasp of the concepts and writing techniques and have prepared a reasonably sound document including broadly defined claims.   It is my understanding that I may get some assistance from the patent office itself.   However, I also recognize the value of experience both in preparing a patent and subsequently in negotiating any rights that I may acquire.
The question is,  “am I foolish to try to take this on myself?”    I expect the answer is "that depends" on a number of factors including my capability and the complexity of the invention.  But I would be interested in some opinions as to whether this is just stupid under any circumstances or whether an amatuer with basic engineering and technical writing skills can have a fair chance of success.  
Thanks for any advice, instructions, web sites, references and opinions you can provide as to how or whether to proceed.
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eric stasik
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director, patent08

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Posts: 391
am I crazy?
« Reply #1 on: Mar 1st, 2004, 10:06pm »
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Dear mdm,
There are about 1000 ways to screw this up. Even if you write a decent application, do you have the necessary declarations and forms? Are you set up to do electronic filing? Do you know how to answer office actions properly so that they are compliant? Are you aware of all of your obligations of disclosure? Are you interested in obtaining foreign patent coverage? etc.  
You can save yourself a great deal of money by doing a lot of the drafting work yourself, but to file an application without experienced, professional assistance will likely undermine the value of any patent you might receive. At least pay a qualified attorney check your work before sending it in!  
As a reality check although I am a registered agent I don't file and prosecute applications on a regular basis and I would never do so without getting the assistance of a more experienced colleague who does it on a regular basis to check MY work.  
Good Luck,
Eric Stasik
p.s. The only assistance you are likely to receive from the patent office is to be told to get professional help. Examiners have too little time as it is to review an application and spending time educating an applicant is an unwanted burden.  
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eric stasik

patent engineering,
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and licensing services
postbox 24203
104 51 stockholm
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Posts: 3472
Re: am I crazy?
« Reply #2 on: Mar 1st, 2004, 10:38pm »
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David Pressman's book is the only book I would recommend to a non practitioner who was bound and determined to draft his own patent.   I also recommend the book to people who just want to understand the process.
I believe there is enough advice in the book such that if you understood and followed all of it you could do an adequate job drafting a patent.  I don't believe the full ramifications of his advice are always easily appreciated and easily followed.   There are somethings in the book that I do not agree with.
I used Pressman's book as a guide the first time I attempted to draft a patent.    Fortunately, I was doing some overflow work for a friend who was not expecting professional results from me.  If the PTO had received my first attempt, the client would have been in serious trouble.
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M. Arthur Auslander
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Re: am I crazy?
« Reply #3 on: Mar 2nd, 2004, 3:38am »
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Dear Mdm,
Likely, yes.
Unless you consider and understand, patent, confidential disclosue, copyright, normal business practices and trademark, you may be naked in the street.
Just having the good idea does NOT make the money. You also have to be just as careful and not be taken advantage of, even though you can't live with them you can't live without them, but it has to be someone you can trust and also do the job.
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M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law
3008 Johnson Ave., New York, NY 10463
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Posts: 2584
Re: am I crazy?
« Reply #4 on: Mar 2nd, 2004, 2:58pm »
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I guess I'm the last "regular" to weigh in here.
Are you crazy?  No.  You're asking my favorite question:  "How hard can it be?"  That question always signals the beginning of an adventure!  As the Chinese wish their adversaries, "May you live in interesting times!"
And, you properly predicted the answer to the natural follow-up question, are you foolish?  It depends.
I've had a number of clients write their first draft of an application using David Pressman's book, but I was only moderately impressed with one, and that one was based on an earlier application I had written for him as a model.  So I'm not particularly optimistic about the results you'll get from Mr. Pressman.  I haven't read his book, so I can't say why the results are dissappointing.
First:  Don't file a provisional!!  It's a special thing for experts only.  If you don't know what you're doing, it will only screw things up for you.
Here's an excerpt from a message I posted on another list.  I think it might be helpful for you:
On Thu, 2004-02-26 at 07:30, ?????? wrote:
> drafting my own patent application,  will have it
> reviewed prior to submission by a patent attorney but
> want to go in having a completed application.  
> i am aware that the claims can be resubmitted if too
> broad or not written correctly, i also understand that
> the patent office can help you re-write a claim if
> needed, but what i'm not sure of is how detailed a
> description is necessary?
David is right.  They won't re-write the claim if submitted by your attorney, and they won't try very hard to get you fair coverage.    
The U.S. has the most stringent disclosure requirements in the world, as far as I know.  There are at least three basic disclosure requirements.  
You must describe the invention in sufficient detail as to enable one of ordinary skill in the art to make *and* use the invention.  For those who are counting, those are two separate requirements.  Miss one and your patent is gone.
What's "the invention" that you have to describe?   It's defined by the claims.  Which claims?  The ones you originally filed or the amended claims of the future?  The future claims!  So you have to know what your future allowed claims will look like!  That crystal ball on my desk is not merely decorative!
The bottom line is that you have to have a pretty good idea of what your claims might end up looking like when it's all done.  That requires anticipating what types of rejections the examiner might make and how you plan to get around those at a later date.  If -- when writing the specification -- you guess wrong as to what the claims will look like and don't properly support them, they're invalid.  
What's one of ordinary skill in the art?  It depends.  Guess wrong, and your claims are invalid.  
The lesson here: be conservative!  Assume one of ordinary skill in the art isn't all that bright (or at least feel confident that you can produce evidence of what's well known in the art if necessary).  Assume you may want extremely specific and narrow claims and "enable" those.  The penalty for describing too little is invalidity -- no protection.  The penalty for describing too much is working harder than you have toprior to filing.  You choose.
The third requirement is referred to as "best mode".  You are required to describe the best mode contemplated by the inventor(s) for practicing the invention.  Again, what's "the invention?"  It's defined by the*future* claims.  
The best mode is a subjective test.  What's in the mind of the inventor(s)?  The test is applied *as of the time of filing*.  So, if you file early before you work out all the little details that make the invention work well as opposed to just work, you don't have to describe all those later-ironed-out details.
Again, be conservative!  When it doubt, write it out!  If you write too little, you lose.  If you write too much, who cares?
Sorry for the ultra-long post.  More is coming....
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James D. Ivey
Law Offices of James D. Ivey
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