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[fb]

All our resources, and counsel, are focused on our main invention. However many ancillary inventions (which led up to the main invention) are in various stages of development but have no budget for counsel. Some of these inventions are still just ideas; some have been posted online; some can be used to help the main invention, and some are completely separate. They are all going to be built and used in the next several months anyway; the question is only if they are going to get patent apps filed.

Since no counsel will hired to draft apps for these other inventions, the question is should I just do it myself so as to just get some prosecution going. My understanding is that the only cost would be about $1k of fees in the U.S. The thing is, I would not want to do any "damage" to the marketability of these inventions, compared to not filing at all. But if there is a chance that I could use my experience (from our counsel's drafting of our main invention) to at least get some kind of app going for these other inventions, then these other inventions would at least be tied up for a few years waiting for OA, which would give us time to get the marketing going with the main invention. But, if filing my own app for these other inventions would do some kind of "damage" (besides the filing fees) compared to not filing at all, then maybe I should not file them.

[bleedingpen]

If you ever attempted to litigate the patent on the main invention against my client, I would immediately look to the pro se related subject matter applications for some damning language to hang you with.

[fb]

Yes it would not stand litigation, but from a marketing standpoint is it more damaging to have the pro se patent (which presumably somehow got issued) compared to having no application at all.

In other words is there something about a pro se app or issuance that can cause the inventor/marketer to be sued or to have to pull the product entirely, compared to if he never filed an app in the first place.

[Wiscagent]

If you ever attempted to litigate the patent on the main invention against my client, I would immediately look to the pro se related subject matter applications for some damning language to hang you with.

I had the same thought.  

But if the main application has already been filed, do you think a subsequent application could be used to disparage the earlier-filed case?

How about if the later-filed applications do NOT claim priority to the first application?

[MYK]

Well, if the USPTO turns up a serious prior art patent that is still in force, you might choose to cancel the product rather than risk litigation.  Of course, if you didn't file, and that same patent were out there, you might be at even higher risk, and would have sunk more into you development and marketing by then.

BTW, you know about small entity status, right?  If you're a startup with only a few people involved, filing fees (among other things) are half price.

[fb]

I thought $1k total was about half price. Maybe I was off.

Well, if the USPTO turns up a serious prior art patent that is still in force, you might choose to cancel the product rather than risk litigation.

Don't you mean "currently enforceable patent", which would be an infringement concern? Because if I did not file at all, I would not care about prior art.

[bleedingpen]

If you ever attempted to litigate the patent on the main invention against my client, I would immediately look to the pro se related subject matter applications for some damning language to hang you with.

I had the same thought.  

But if the main application has already been filed, do you think a subsequent application could be used to disparage the earlier-filed case?

How about if the later-filed applications do NOT claim priority to the first application?

Yes.

[fb]

Yes the later app would disparage the earlier?

Seems it would be the other way around if the earlier was pro-se.

[Robert K S]

Total small entity filing fee is $462 + $40 for assignment recordation = $502.

This presumes electronic filing, no more than 20 claims and no more than 3 independent claims, no multiple dependent claims, application not more than 100 pages, etc. (no other funny business).

[bleedingpen]

Yes the later app would disparage the earlier?

Seems it would be the other way around if the earlier was pro-se.

Any poorly written application in the family can cause problems with enforcement of any other patent issuing from an application in the family. 

[fb]

Yes of course.  But, does the poorly written application add possible damage, of any kind, compared to not filing at all.

For example, in advertising there is "puffery", which could be viewed as a poorly-written PR attempt. Puffery can sell a lot of product, but can also shut down the marketing campaign depending on how it is viewed by the FTC. So if you were going to definately do a self-written PR or ad campaign, and you couldn't hire an ad firm or counsel to make it right, you might be better off not doing any campaign at all.

So in drafting applications, is there any way that a poorly written application can add damages compared to not drafting one at all?

[bleedingpen]

Yes of course.  But, does the poorly written application add possible damage, of any kind, compared to not filing at all.

For example, in advertising there is "puffery", which could be viewed as a poorly-written PR attempt. Puffery can sell a lot of product, but can also shut down the marketing campaign depending on how it is viewed by the FTC. So if you were going to definately do a self-written PR or ad campaign, and you couldn't hire an ad firm or counsel to make it right, you might be better off not doing any campaign at all.

So in drafting applications, is there any way that a poorly written application can add damages compared to not drafting one at all?

Yes.  A poorly written application has negative value.

[Ghoti]

Please correct me if wrong with the below....I'm still learning.

If the poorly drafted application was linked (ie part of the family) of the well drafted application then it could definitely create problems. Eg the well drafted application describes knives and leaves it open to include a range from cutlery to hunting knives. The poorly drafted application describes knives and then defines them to be limited to only cutlery. Later you try to enforce the well written application on a hunting knife, but the opposition use your poorly drafted application to show that the knife in the claim is limited to cutlery.

If the poorly drafted application was not linked, ie not part of the family of the well drafted application ... then I don't see the harm. From my knowledge, it would be hard (impossible?) to import problems in the poorly drafted application into the well drafted application in this senario.

Assuming I'm right RE if its not part of the family. What happens if the well drafted app is incorporated by reference, or, is written using a cut and paste approach from the well drafted app....does this change things?

[bleedingpen]

Please correct me if wrong with the below....I'm still learning.

If the poorly drafted application was linked (ie part of the family) of the well drafted application then it could definitely create problems. Eg the well drafted application describes knives and leaves it open to include a range from cutlery to hunting knives. The poorly drafted application describes knives and then defines them to be limited to only cutlery. Later you try to enforce the well written application on a hunting knife, but the opposition use your poorly drafted application to show that the knife in the claim is limited to cutlery.

If the poorly drafted application was not linked, ie not part of the family of the well drafted application ... then I don't see the harm. From my knowledge, it would be hard (impossible?) to import problems in the poorly drafted application into the well drafted application in this senario.

Assuming I'm right RE if its not part of the family. What happens if the well drafted app is incorporated by reference, or, is written using a cut and paste approach from the well drafted app....does this change things?

What happens when the poorly drafted app makes statements about the state of the art or who is one of ordinary skill in the art?  Or when the inventor says (this comes from seeing first hand) that something would be obvious to do (and that something is later claimed in another of client's apps)?  Or what happens when the claim scopes start to overlap and you have double patenting problems?  Or when the pro se inventor doesn't update his attorney on material references or office actions?  Or when the pro se inventor argues a position inconsistent with the position taken by his attorney in the other apps? 

I can go on and on, but I don't see the need to. 

[Ghoti]

Thanks... I had not considered those types of problems.