I have been told that no one should
apply for a patent without the help of a
lawyer and that any inventor who does so
is foolishly risking making a mistake
that could cost him or her dearly. But I have
six patents under my belt, and I wrote them and applied
for all of them myself. I've been through pretty much
the whole gamut of U.S. Patent Office travails:
rejections, (successful) appeals, and even that rare
event—a patent reissue. Much as I revel in being a
distinctive and unique individual, I don't believe I
possess a special aptitude, and I think most inventors
would benefit from writing their own patents.
Consider the following:
-
It is very unlikely that your invention
(despite its brilliance) will ever be
commercially successful, since only about
one in 1000 is, so any mistakes on the
application probably won't matter.
-
Most patents held to be invalid were
drafted by attorneys, so a lawyer is not a
silver bullet against risk. Among other
problems, attorneys can fail to understand
the invention adequately and thus make
claims that are too broad or too narrow.
-
Doing the work yourself—known legally as
acting pro
se—will save you a lot of money.
ILLUSTRATION: MICK WIGGINS
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Drafting a patent application is challenging,
but for those with an engineering turn
of mind, it's also a great deal of fun.
The most important part of writing a
patent is drafting patent claims that are broad enough
to make your invention something that other people
should license while making the claims narrow enough to
establish the invention's unique and useful nature.
Before you even consider drafting a patent
application, you must do a patent search. It is very
likely that someone has thought of—and patented—your
idea first. In years past, I spent many hours in the
U.S. Patent Office, perched uncomfortably on a radiator
in the public stacks, perusing boxes of crumbling
patents. Now, however, you can do Internet searches from
the comfort of your own home or office, knowing that
every patent is online.
The first step in conducting a search is to classify
what it is you have invented. Look in the government
classification manual to find the class and subclass
that apply to your invention. The manual is available
online at
http://www.uspto.gov/go/classification/uspcindex/indexs.htm.
Let's walk through a typical search. Suppose you have
an idea for a new type of digital tone-detection filter.
Under the broad class "F" you will find filters. You
will note that electrical filters are mostly in class
455 but that in class 708, subclasses 300+ refer to
electrical digital filters. The classes and subclasses
are hyperlinked to the descriptions. Clicking on the
"300+" leads to a list of subclasses 300 through 323,
entitled "Electrical computers: arithmetic processing
and calculating." Subclass 312 refers to tone detection.
The next step is to search the patent database at
http://patft.uspto.gov/netahtml/search-adv.htm.
To search on class 708, subclass 312, enter: ccl/708/312
and click "search." This will bring up all U.S. patents
that have class 708, subclass 312, as a primary or
secondary classification. The point of doing the search
in this somewhat recherché manner is that it will
produce a much shorter and more apropos list of results
than simply attempting to search the text of patent
applications using keywords such as "filter" or
"detector."
Once the list of relevant patents appears, clicking
on the patent number brings up the entire patent. Patent
drawings are in an obscure version of the TIFF format
that requires your browser to have an appropriate
plug-in for viewing, which can be a headache. For
example, Apple's QuickTime plug-in will display the
images when installed in Internet Explorer but not when
installed in the Firefox Web browser. But a very good
plug-in, AlternaTIFF, available free at
http://alternatiff.com, enables
Firefox to display the images.
Read all the relevant patents. Even if you are
fortunate and no patent anticipates your idea, you still
have some reading to do. Read some patents in your
invention's primary and secondary classifications to get
a feel for the language that's used. Pay particular
attention to the claims. The goal in drafting claims is
to make the first set of claims as general as the patent
examiner will allow and then to list additional,
dependent claims that more narrowly define the scope of
your patent. Note the terms used in previous patents and
consider using the same terms in your application.
Also pay attention to the format of the patents. Most
follow the same basic structure: title, abstract,
specifications, drawings, and claims. You can get
software, such as PatentEase, published by Inventorprise
Inc., Vestal, N.Y., that will help you construct and
format your patents correctly. However, the results,
automatically generated from filling in on-screen forms,
often require a lot of manual work to get them to a
point where they will be acceptable. Instead of using
software, I suggest looking at a number of published
do-it-yourself guides to drafting patent applications
and other helpful reference works.