Last week I participated in the 15th Annual Independent Inventors Conference at the United States Patent and Trademark Office. In addition to seeing some old friends, chatting with a number of enthusiastic inventors and mingling, I was also on the schedule to teach 5 breakout sessions on patent claim drafting. The USPTO has graciously granted permission for me to post these two powerpoint presentations here, and they appear at the bottom of this article.
Time after time during the Conference a question kept arising that deserves some attention. Is it a wise idea for inventors to represent themselves? Representing yourself should really be avoided like the plague. Having said that, it is always a wise idea to learn as much about an endeavor as possible before plunging ahead full speed. Learning about patent applications and patent claim drafting is no different, and will likely make you a better inventor in the long run.
As the Conference was breaking up I heard from several of the attorneys in attendance that they were worried that some of the inventors were getting the idea that the Conference was intended to encourage them to file patent applications pro se. I even heard through the grapevine that at least one inventor seemed to get the impression that the Patent Claim Drafting modules were being taught to inspire inventors to do it themselves. I have been teaching long enough to know that once you say something it gets morphed as it is repeated. I didn’t hear any direct feedback so I don’t know what was really said and how. Nevertheless, I thought this might provide an excellent opportunity to discuss the relative merits of an inventor proceeding pro se.
In every session I spoke at during the Conference I always say the same thing: inventors who are going to represent themselves WILL leave patentable matter on the table and unprotected. Throughout my presentations I used the example of the commercial where the guy is sitting at the kitchen table with his shirt off and a butter knife in his hands. The surgeon on the other end of the telephone line is telling him how to do something, perhaps to remove his appendix. He responds: “Shouldn’t you be doing this?” The answer is YES! A trained surgeon should be doing that. Only if you are out in the wilderness, hours away from a hospital and you have an appendix about to burst should you ever consider doing an appendectomy on your own!
Similarly, inventors shouldn’t be rushing out to write their own patent applications and represent themselves pro se. In fact, representing yourself in a patent application is the patent equivalent of taking out your own appendix — a REALLY bad idea. Having said that, many inventors are faced with the situation where they simply cannot afford to hire anyone to assist them. It is either go it alone or do nothing at all. In that situation the inventor is faced with a terrible dilemma. If the inventor goes into the situation understanding they are not going to get the breadth, depth and scope of rights they otherwise could get, and that is acceptable, then they have made a knowing business decision. The Libertarian in me believes that we shouldn’t say don’t do it, but the Patent Attorney in me knows that we need to be realistic about the chances of success and provide that information in a realistic way without sugar coating the reality.
Inventors who represent themselves are ALWAYS going to obtain inferior rights compared to what they otherwise could have had with competent legal assistance. The Supreme Court of the United States has explained that the most complicated legal document to prepare is a patent application and the most complicated part of that legal document are the claims. See Patents: A Most Difficult Legal Instrument to Draft. For an inventor to believe they can do as good a job as a patent attorney is rather foolish. It is extremely wise, however, to learn as much about the patent process as possible. Those inventors who are most likely to succeed will treat inventing as a business, and acquiring actionable information about something as critical as the patent process is just a smart thing to do even if you never plan to represent yourself alone.
As we tried to explain to those attending our claim drafting sessions, the goal of the sessions were to provide some basic, fundamental information about how to draft a claim so that at the end of the day they could perhaps draft a reasonable claim for something as sophisticated as a peanut butter and jelly sandwich. I even several times recounted the story about teaching patent claim drafting in law school and the inevitable meltdown that would occur when students were asked to draft a claim for an ordinary paperclip. This stuff is hard, even for simple inventions. So even hoping a plausible claim for a peanut butter and jelly sandwich could be written was a lofty goal given we had less than three hours between the beginners and advanced sessions.
Not to be deterred, I explained that the true and overwhelming goal was to educate the inventors about what needs to be in a claim and why. My hope, as I articulated it, was that by understanding some patent claim basics they would become better inventors because they could understand what patent attorneys do, the information they need and why, thus being able to better focus their documentation efforts to provide trained professionals more of what we need to help them. By providing more detailed information in a way that professionals can better use the information could either make hiring a professional more economical, or the professional could be afforded more time to prepare a comprehensive disclosure and claims. In either situation it is a win for the inventor.
The sad truth is that the more time a patent attorney can spend on an application the more comprehensive the disclosure will be, the tighter the claims and the more likely any issuing patent will result in a meaningful document that could, if the invention is successful, become the foundation for an entire patent portfolio. This shouldn’t come as a surprise though. All areas of law are like this. The more money you have the better the legal services you can obtain. Patents are no different.
Before providing the powerpoint slides, allow me to point out a tragic error in a claim, which rendered the claim completely worthless. Just several years ago in Chef America v. Lamb-Weston, the United States Court of Appeals for the Federal Circuit issued a decision that perfectly illustrates the problems that can, and will, arise when an invention becomes valuable and the claims are dissected, which will happen. In this instantly famous case it was necessary for the Court to interpret the meaning of the phrase: “heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F.” After the fact it was clear that what the patent claim should have said was: “heat the oven to a temperature in the range of about 400° F. to 850° F.” Because what was said literally said in the claims required the internal temperature of the dough to reach between 400° F. to 850° F., the patent owner had a useless patent. Heating the dough to that temperature would have caused it to approximate a charcoal briquette. Given that was not what the inventor had invented, the invention was unprotected. A nightmare!
Whatever is said in the claims will be interpreted literally, the the claims are the only part of the patent application that defines the exclusive rights granted to the inventor. We get great latitude to define the invention, but because it is up to the drafter to say exactly what the invention is we must do it precisely and so as to not unnecessarily limit the invention. The drafter gets to define the boundaries, and no court will fix what is said, even when everyone believes they know what was meant. Thus, there is great peril when an inventor proceeds on their own without legal representation.
I have long believed this old saying to be true: “an attorney who represents himself has a fool for a client.” That is why when I was sued by an invention promotion firm I hired a law firm to represent me. It is also why when I filed a patent application on my own invention I turned to an attorney at my firm, Mark Malek, for assistance. Mark has also filed patent applications for other attorney-inventors at our firm. In my situation Mark was primarily responsible for the application. Sure, I played a substantive role in the drafting, going over drafts, making comments and suggestions, but Mark was the one controlling the document and the primary author of the application. As inventors we are just too close to our invention, and what holds for attorneys holds for inventors. If you represent yourself you have a fool for a client, at least if there is any possible way you could obtain legal representation.
Thus, those who want to learn more about claim drafting will likely find the powerpoint slides quite useful. They are best, however, to learn more about the process, what is required and how you can facilitate the application process working with your patent attorney. The more you learn the better a consumer of legal services you will be, and that will undoubtedly make you a better inventor as well.
Join the Discussion
5 comments so far.
XioDecember 16, 2010 02:33 am
What is a file wrapper?
patent litigationNovember 16, 2010 02:27 pm
I’m always glad to read a post like this one. I also agree that representing yourself in patent prosecution or litigation is analogous to performing surgery on yourself: don’t do it unless you absolutely have to. As you point out, one mistake in drafting can leave a pro se inventor with nothing. If your attorney commits a similar error, you may at least have grounds to sue him or her for malpractice.
Humbled Pro SeNovember 9, 2010 04:25 pm
You’re certainly welcome, Gene. Yours is one of the 3 patent/IP blog must reads to me (I visit virtually every day); and I never miss any of yours or Rene’s posts.
I picked 25 [of both issueds and pendings] because that was about how many it took me to develop a feel and reasonable understanding of what was needed & expected from/of me/my apps & prosecution requirements/best practices.
And I’ll add a #7 to the above list: Read at least 50 BPAI decisions; 30-40 of which should be in your art group/field of invention.
Gene QuinnNovember 9, 2010 12:44 pm
I don’t know whether you picked the number 25 out of the air, but that is historically viewed as the number of patent applications a new patent attorney must work on before they are ready to represent others on their own without support of someone more senior. By that time you have seen a range of issues that can come up and are well versed. Of course, given that what we do is about innovation there are always things that come up that are at least somewhat unique, so even patent attorneys need to have a support group to bounce things off of from time to time.
Thanks for reading.
Humbled Pro SeNovember 8, 2010 09:31 pm
Gene’s 100%; and as a 10yr pro se myself, I’ve said it before here, and I’ll say it again:
Unless you’ll be happy settling for a patent certificate hanging on your wall to feel proud about (instead of a patent that can make you some real money), do not go it alone; or try to “get away” with paying a patent pro less than 5k-10k+ for the initial non-provisional patent app.
If you don’t have the money yourself, beg or borrow it; work more hours; take a 2nd job, put your wife (or husband) to work, hold a sign on a busy freeway saying, “Will work for a patent,” etc to get it.
And whether or not you nevertheless decide to go it alone or hire a professional, do at least the following:
1. Read everything Gene & Rene have posted here at their site; or at least those postings (and comments) concerning the patenting process.
2. Read the last 6 months worth of postings and comments at PatentlyO.
3. Read at least 25 file wrappers of issued patents + 25 file wrappers of patent applications in the same field of your invention.
4. Pay to have a professional patent/prior art search done.
5. Read David Pressman’s book Patent It Yourself.
6. Read Slusky’s book Invention Analysis and Claiming.