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[mdm]

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.

[eric stasik]

Dear mdm,

Yes.

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.

[Isaac]

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.

[M. Arthur Auslander]

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.

[JimIvey]

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:

<quote>
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?
</quote>



Sorry for the ultra-long post.  More is coming....

[JimIvey]

...continued....

<quote>
> i'm confused because i want as broad a patent as
> possible, but am required to describe in detail how to
> make my invention, which narrows the coverage?  

Officially speaking, a narrow description doesn't narrow the coverage.  The Federal Circuit is being quite emphatic about that point more now than ever.  However, patents expire 20 years in the future.  What will the courts rule then?  Who knows?!  

Bottom line: be conservative!  If you describe too little, you lose the claim(s).  If you describe too much, you end up arguing a little about whether that over-description influences the claims.  Again, you choose.

There are two things you should remember when meeting the disclosure requirements above.  

First, the "present invention" is NEVER the subject of a sentence and is NEVER described directly.  Everything is "in accordance with" the present invention, "according to" the present invention, "in accordance with the principles of" the present invention, etc.

There is one exception.  The PTO really wants to see the subject heading, "Summary of the Invention".

Second, what you describe in the detailed description section is "an illustrative embodiment" of the invention, or an "illustrative example" of the invention.  In one embodiment, .... in an alternative embodiment,... etc.
>
> i know it's actually the claimms that define the scope
> of protection, so is the description only an example
> of one variation of the device (assuming a state that
> in my description)?  if my claim discloses a fastening
> device for assembly, and my detailed description says
> rivet, would using a screw violate my patent or not?
> similarly, if i claim comprising of rigid material,
> but specify bent alluminum in the description, would
> welded steel infring on my patent?

Two points here too.  

First, it matters what the claims say.  If you say "means for fastening", they look to the description and then determine equivalents.  Is a screw equivalent to a rivet?  Don't use English or common sense to determine equivalence!  This is the law!

Under Section 112, paragraph 6 ("means for" language), the range of allowable equivalence is quite narrow.  You should read "equivalents" as "nearly identical articles" in S 112, p 6.  If you want someone to blame, look to Congress (of 1953, I believe) in which the S.Court had ruled something to the effect that "mean for" means "*any* means for" and Congress didn't like that.

Second, assuming you avoid "means for", the short answer is "Yes."  Is a screw a "fastening device?"  I think so.  Will the judge and jury?  Who knows?!  Is welded steel "rigid material?"  I think so.  Will the judge and jury?  Who knows?!  Be conservative!

But, there's a limit to how conservative you can be and avoid the ridiculous.  In short, there's a limit to how much your patent attorney or you can do.  It's a human system implemented by humans.
>
> again i will consult an attorney prior to submisssion
> so i do not hold any responses liable, just need some
> clarification.

Good idea.  I hope this clarifies.
>
> must say i am so very excited about this process and
> potential, kind of scarry and fun at the same time.

That's what I experience on a daily basis!

Good luck!
</quote>

My apologies for reproducing the entire post, but it seemed rather on-point and took a long time to type the first time.  

The bottom line is that I don't see this careful, conservative approach from people following Mr. Pressman.  It makes me wonder if it's lack of experience on the part of the drafter of the application or a lacking in Pressman.

Good luck!

[Chris_Whewell]

If you are out to obtain patents, you can probably succeed in doing that, since you will only be dealing with the patent office (provided the developments you contemplate meed the standards for patentability).  

If you are out to make money by licensing or selling a patent, that will take on new dimensions, as your dealings will be expanded from dealing only with the patent office to dealing with others.  Of course this is predicated on the assumption that your developments have commercial value.  If the value is significant, as perceived by others, then someone will likely do their best to utilize the technology without accounting to you.  If it is in the $10MM range of value, then you can expect  to be engaged in some legal battles.   should that time ever be reached, the alleged infringers will, by virtue of having made money on the development, act adversarily, which could be the cause of great pains.  

Realistically, about 2 - 5 % of all inventions ever make enough money to recoup the patenting costs, for various reasons.  Introducing technology successfully requires, inter alia,

1) newness
2) not easily designed around;
3) not covered by an existing patent
4) able to be manufactured at a cost which will enable a decent profit to be realized;
5) must be compatable with existing protocols and manufacturing techniques, requiring minimal capital investment to produce, or else have benefits which justify the CAPEX;
6) no environmental hurdles;
7) nominal expense with regulatory agencies;
should be patentable hopefully;
9) must provide an advantage to a customer sufficient to motivate them to buy it at the price you offer.

These are the main ones, as I see it.  If your developement(s) overcome these barriers, then it is likely that others will want to copy it.  When that happens, you need to be prepared in advance for the battles which will ensue.  If you were putting a roof on a house, and you never did it before, and you don't want it to leak, the job is best left to someone with experience in doing it - even then there is no guarantee.  

If I were you, I would look at everything you think you have that is valuable in your mind, and pare it down to one or two that have the highest likelihood of market acceptance at a price which will deliver you a profit after you pay the utility bill, the tax man, and your lawyer and will leave a couple dollars in your pocket.  Then seek an experienced Practitioner who is savvy and street smart.

[M. Arthur Auslander]

Dear Mr. Whewell,
Your posting is one of the best I've seen on this forum.

[Chris_Whewell]

Thanks !

The toughest part any developer of technology faces is to weed out those inventions not worthy of resource expenditure and to pursue only those deserving of precious time and money.    Most inventive types have more ideas than they do resources, and it is easy to become confused about which one(s) warrant pursuit.   Being rigid and pragmatic early on pays off in the long run.  Judiciously prudent is the one who chooses to not pursue any of them, if the analysis shows that all 47 ideas conceived are lacking of flawed in just a single critical area each !  Failure in those critical points spell disaster, and inventors arriving at a conviction that someone else will appreciate the beauty of a non-commercializable invention enough to write a big check has been a re-curring fantasy scenario which many of the so-called "invention development" companies have made handsome fortunes from !

[M. Arthur Auslander]

Dear Mr. Whewell,

My observation has been that many inventors can be as compulsive as alcholics. My hopes to help with ELAINE's Workshop® E arly L egal A dvice I s N ot E xpensive™ and the Reality Check® have hardly been worth the filing fees but a feel good about trying. Many who need help do not want to be helped and the regular clients seem to come from regular sources rather than the service marks.

There is the worst reality, many good inventions just don't make it. I have recounted the patent for a very good friend that a disclosee rejected, then and then won a $50M industrial prize for an inferior product.

The retrospective answer now seems that the patent should have been filed and pushed in China where there was a greater need.