Inventor Pitfalls: Causing Irretrievable Patent Damage

As you can probably imagine, over the years I have had the opportunity to work with many inventors, the majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. I have found that those who are serious are also capable of meaningfully participating in the preparation of their own patent applications. These folks are motivated, but they simply do not know what to do, or exactly how to do it, and they are afraid to mess things up by trying to do something themselves that is over their head, not because they are not smart enough, but rather because this patent stuff is really hard and very complicated.

As I tell students in the patent bar review course I teach, you could not – drunk and on a bet – come up with a more screwy patent system than we have in the United States.  The rules are complex, and unnecessarily so in many (if not most) situations.  For example, do you know how long “a month” is?  I bet you think you do, but I bet you haven’t a clue how long “a month” is considered to be under the rules in place at the USPTO.  See Do You Know How Long A Month Is?

The rules at times seem arbitrary, and show little evidence of an overall thoughtful consideration. It almost seems that some rules have been created for the purpose of tripping up users of the system. I don’t believe that is how the rules were conceived, but it is how they have evolved over time.  That being the case, should inventors be going solo and trying to protect their own inventions? NO! That would be similar to trying to remove your own appendix. If you can at all get to a hospital you really should not be removing your own appendix, but if you are lost in the woods and you are facing certain death if you don’t act, then act. Similarly, if you have any options you should be pursuing those options and not blissfully filing and prosecuting your own patent application.

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All too often inventors feel that the assistance of a patent attorney is really not necessary. That is an opinion shared by many unfortunately. It is not unfortunate for the patent attorney really, but rather it is unfortunate for those who hold the belief because invariably those who represent themselves obtain rights that are so narrow that they are practically useless. Recently I have had the occasion to be contacted by several independent inventors who did file their own nonprovisional patent applications and are now facing a First Office Action that rejects all the claims.  A First Office Action that rejects all claims is not uncommon, but these applications have little or no useful discussion of the invention so there will be little or nothing anyone can do to help them ever achieve a patent.

Simply stated, a bad patent application results in either an extremely narrow patent or no patent at all.  All that time, money and energy wasted.  These inventors, who are unfortunately the norm for those who represent themselves, may well have had an invention that could be protected but through a faulty application will now likely never receive a patent on their invention.

Never forget that the Patent Office’s job is to examine what you present, not to help you obtain the broadest protection possible, or even protection that would be at all useful. On top of that, there are many things that can be hopelessly compromised at the outset of the patent application process, which will make it impossible to obtain a patent of any kind, or at the very least force you to file another patent application to correct the deficiencies present. If you do have to re-file you will then be giving up your original filing date, which can prove fatal.

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One of the most common mistakes I see deals with the inventor being unable to describe what they feel is the patentable feature and/or unique contribution their invention is making to the relevant technology field. This is why doing a patent search is absolutely essential. Until you understand what is known you have absolutely no way of knowing whether a patent is likely to be obtained, and everything is describes with equal importance when there are almost certainly certain features that deserve greater attention because that is where the patentable invention resides.

Frequently I hear from inventors that they have never seen anything like their invention on the market, so they know there is nothing that could stand in their way of obtaining a patent. While this may seem logical, it is simply not true. There are a good number of reasons why something may have been patented, or a variation that is too close for comfort may have been patented, and still the product not reach the market.

For example, many times independent inventors will obtain a patent and then run out of money or lose interest and, therefore, the product never makes it to the market. Then when others come up with the invention themselves, or learn of the now defunct patent, they choose not to pursue it because without being able to protect the invention with a patent as soon as the product comes to market it will be copied by others if it is successful. Due to the laws of nature, and the reality that there are only a finite number of solutions to any particular problem, every generation invents, or re-invents, many of the same things. Thus, it is always wise to do a patent search to start the process.

I guarantee a patent search will uncover inventions that you did not know were out there. With over 8 million utility patents having been granted in the U.S. and well over 1 million pending patent applications, there is always something that can be found that at least relates in some ways. You are always better off knowing about those related inventions. This allows you to determine whether moving forward makes sense, and it also allows for a patent application to be written to accentuate the positive, and likely patentable, aspects of an invention.

When filing a patent application you should always specifically and explicitly mention that which sets your invention apart and will indeed make the invention patentable. As with everything else in patent law, you do need to be careful. You should stay away from saying things like “the only thing that makes the present invention unique is…” Rather, consider saying something like “one of the things that makes the present invention unique is…” The second alternative is only slightly different, but leaves the door open for you to argue later that there are other aspects that make the invention patentable. The first alternative could be construed as an admission and very difficult, if not impossible, to get around. In essence, if you say something simple, and seemingly harmless, you could be giving the Patent Examiner the ability to use your own words against you.

The moral of the story is to be careful.  Getting help from a trained patent professional is the best and safest way to proceed.  If you do not have the funds available to seek competent professional advice you should really ask yourself whether you should be pursuing the patent path.  We all have dreams, and sometimes we take risks, but the invention to patent to commercial success path can be long, time consuming and expensive.  I dream big myself, so I am not about to tell others not to follow their dreams and believe in themselves and their inventions, but it is best to go into the process understanding what lies ahead and pursue moving forward in a financially responsible way.