Do-It-Yourself Patents Continued
By Hugh Loebner
First Published April 2006
I strongly recommend the book Landis on Mechanics of
Patent Claim Drafting, by Robert C. Faber
(Ostrolenk, Faber, Gerb & Soffen). This reference
covers drafting claims for every type of invention.
Don't bother to study the entire volume, though. Just
pay attention to those sections that deal with your type
of invention. It will really help.
One note of caution: make sure you spend some time
and effort on the drawings. I always do my own. The
Patent Office is very strict about them, and its
standards for them can be found at http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_84.htm.
In particular, make sure you always use the same
reference numbers for all the elements in your drawings.
That is, if your patent uses, say, a particular
"circular restraining widget," then decide on a
reference number for it and use that number wherever the
widget appears.
Most patents held to be invalid were drafted by
attorneys, so a lawyer is not a silver bullet against risk
After filing your application, don't be too
discouraged if the examiner rejects it. If the rejection
is based on an earlier patent that is identical to
yours, there isn't much you can do. But if you feel
there are significant differences between your invention
and the one cited by the examiner or if there are other
reasons for the rejection, you have several options.
If the examiner claims that your application is
"nonenabling," that is, that you have not described the
invention in sufficient detail for an ordinary worker
"skilled in the art" to make or use one, you can simply
file another application with the details filled in.
Another option is to file an appeal. I have six U.S.
patents: 6959050, 6019393, RE36455, 5525060, 5159322,
and 4949079. The first two patents were awarded only
after I appealed to the Board of Patent Appeals and
Interferences. (Patent 6019393 is for credit card slips
in a restaurant; it allows you to indicate your gratuity
as a percent of the bill, instead of an absolute amount.
Really.)
Getting patent 4949079, for a special type of
scanning device, was even tougher. I had to file an
appeal with the U.S. Court of Appeals for the Federal
Circuit after an appeal to the Patent Office of an
initial rejection failed. I appealed pro se, and
ultimately the patent was reissued. Frankly, I found
writing the appeal briefs enjoyable. And I saved tens of
thousands of dollars in legal fees. Had I not appealed,
I would not have been awarded those patents and that
reissue, so don't be afraid to lodge an appeal yourself.
If you can think logically and marshal your arguments,
you can file appeals—and win. But that's a topic for
another column.
About the Author
HUGH LOEBNER is the president of Crown
Industries, an East Orange, N.J., manufacturer. He
is also a philanthropist and sponsor of an annual
contest for artificial intelligence. He has been
awarded six U.S. patents and has a Ph.D. in
sociology from the University of Massachusetts,
Amherst.
To Probe Further
The official U.S. government guide to patent
procedures is the "Manual of Patent Examining Procedure
(MPEP)," which is online at
http://www.uspto.gov/web/offices/pac/mpep/mpep.htm.
For inventors who want to write their own patents, this
is the most important reference there is; it explains everything.