I frequently receive a variety of inquiries from independent inventors who set out to draft their own patent applications. One typical inquiry goes something like this: “I have a draft patent application and I would like to get an attorney to review and make any necessary changes before I file it with the Patent Office.” This is quite a reasonable request, and in fact a very good idea. I have encouraged this myself on numerous occasions, but a bit of clarification might be useful.
It is certainly true that once you file a non-provisional patent application your ability to make additions to the application has largely ceased, although you can add claims if the original filing describes what you seek to add. That being said, you still cannot add what is called “new matter.” New matter is simply defined as subject matter not disclosed in the original filing. Thus, you cannot sneak in previously undisclosed subject matter after the filing of a non-provisional patent application. Thus, getting the filing correct is very important.
Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed. Said another way, you only get priority with respect to what is specifically disclosed in the patent application. Therefore, taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical. This is why having a professional review your patent application before you file is definitely wise.
One question, however, is when do you seek the assistance? Frequently many inventors wait too long before they seek help, which means much of what they have done is unusable and various levels of difficult (or impossible) to work with. This is why many patent attorneys and patent agents will not provide this type of service to independent inventors.
Another reason it can be difficult to find a patent attorney or patent agent to provide review prior to when you file is because of unrealistic expectations. For example, I’ve had inventors ask me to spend 1 hour going over what they considered the final draft of the application. That might seem reasonable to a novice, but that is really an unreasonable request that only opens up liability for the patent attorney or patent agent. There is no way to understand the nuances of the invention, consider the prior art, read and debug an application on an invention that you have no knowledge about in just an hour. At best an attorney or agent would only be able to do a cursory review and tell you if it appears as if you have done a fair job of describing what is included in the draft application.
Indeed, it is important for inventors to understand that there is a point at which the work they do on their own ceases to make the entire process cheaper. In fact, if do it yourself inventors do too much on their own without any guidance they may find out that it is quite expensive to obtain assistance to work with what has been drafted. Sometimes a draft by an inventor cannot realistically be edited and improved upon with a reasonable amount of attorney time, which means that the attorney might as well start over. This means no savings whatsoever for all the work done and your project timeline unexpectedly grows.
In at least several situations I have been provided draft patent applications that were upwards of 40 pages single-spaced. Just reading such a document and figuring out what the invention is will take time, at least several hours, perhaps more. This doesn’t include the time that will be spent reviewing whatever prior art search has already been done and reading the relevant patents. By taking the time to create a 40-page draft patent application and already having a prior art search many do it yourself inventors think that they will be able to pay an attorney for only a quick review. While we may wish it to be otherwise, patent attorneys are not magical wizards who can wave a magic wand and put everything in flawless condition for filing. I’ve had inquiries from do it yourself inventors who drafted the specification and wanted to pay me to draft claims, but drafting claims to an invention you are intimately familiar with can and does easily take hours. Drafting claims for an invention you are not intimately familiar with would take much longer.
I can understand why a quick review by a patent attorney would be desirable, but it is simply unrealistic. Let me explain.
I typically spend quite a bit of time on the patent search phase because by doing so we really get to understand the core invention. We also learn what the prior art covers and then collaboratively work together with the inventor to identify what is missing in the prior art and how best to characterize the invention so as to capture the broadest coverage possible. By doing this I am in the best position to help the inventor determine whether the likely available patent claims are worth pursuing given the time, money and energy required.
This in depth patent search process takes time because we essentially engage in a mini patent mapping project that not only looks to see whether the invention described is patentable, but also seeks to identify the open space that is available. So when a do it yourself inventor appears with a patent search and a draft patent application typically none of that effort has been undertaken to appreciate the invention and nuances of the prior art. To meaningfully assist in a patent application I would then have to spend the hours necessary to find the space available before ever starting to edit and supplement a draft patent application.
Once we have a good understanding of what the invention is and what the prior art covers we can identify what space is available. By doing this we can then articulate what features we think will be necessary in order to have a realistic possibility of obtaining a patent claim. This basic feature set becomes the textual description of what will be turned into claim 1, the broadest claim we think we can reasonable seek and obtain. Once we have that then we know how to write the patent application, what to focus on and what other features need to be disclosed as permissive, but not mandatory. In essence, the time spent with the prior art and understanding the intricacies of the invention allow us to identify claim 1, which is the broadest articulation of the invention we will seek to protect. Once that is accomplished you now have a roadmap to the patent application.
Without the effort to thoroughly understand the intricacies of the invention and the prior art the drafter invariably describes the invention as if everything is equally important. The truth is not everything is equally important. Writing page after page about things that are well known is a waste. No matter how many well-known things you try and combine the patent examiner is going to issue an obviousness rejection. This is true now more than ever in the wake of the Supreme Court’s decision in KSR v. Teleflex.
Not honestly appreciating the way that obviousness rejections are handled in the first instance leads to bad decisions. Indeed, patent examiners take their queue from the United States Court of Appeals for the Federal Circuit, which has been known to say Patent 1 shows X, Patent 2 shows Y, therefore it would be common sense to combine X and Y. Of course it would be helpful if they explained why, but there was no such explanation in Wyers v. Master Lock. The Federal Circuit has also been known to say Patent 1 shows X, Patent 2 shows Yy, therefore it would be common sense to combine X and Y. In Tokai v. Easton this was done without any logically satisfying reasoning. So merely combining all kinds of functions and features known to exist doesn’t get the job done any more. There needs to be some kernel that is unique and not predictable. Finding and describing that kernel of uniqueness takes time.
Certainly there are times when I see a draft patent application from a do it yourself inventor and it is a good start. Early on in the drafting process is really when the largest amount of useful and economical assistance can be provided. Before you have a gargantuan draft consider paying a patent attorney for an hour or two to take a look at what you are doing so they can point you in the right direction. It will save a lot of unnecessary time on your part and let you focus on providing the work that is necessary on the key areas required. That is how you save money in the drafting process. Waiting until the end for assistance is not a recipe for obtaining economical assistance.
For those who remain undeterred and are going to create their own patent application I recommend you consider the Invent & Patent System, which allows inventors to create a draft patent application, minus claims. Many times it is best used to prepare a provisional patent application because claims are not required in a provisional, but it can also help you create a solid specification for use in a non-provisional application. There are 10 questions and the user is given a suggested answer template to fill in the blank on each question, as well as information about how the answer to the question will be used and an illustrative model answer from a variety of different technologies. The answers are then intended to be put into a patent template, smoothed out so that the document flows, and text added describing what the drawings show. When inventors do this they create a very good early draft patent application. At this point it would be perfect to have a patent attorney look over the document to provide feedback and guidance with respect to next steps.
At the end of the day the inventor knows the invention best. The question is how do you leverage that information you have in a collaborative fashion so that the cost of preparing and filing a patent application is as economical as possible. If you are not in a position to just hire a patent attorney to do everything from start to finish then you absolutely have to do a little work, get a little help, do a little more work, get a little more help and so on. Frequent touches by a patent attorney to give you direction will keep you on track and make your contributions more likely relevant.
The moral of the story is this: When setting out on a new endeavor it is not wise to pursue a path to the end and then ask whether what you did was correct. You should seek help along the way to make sure you are doing what is required. Otherwise you are likely to get to a point where the most economical solution is simply to start over.
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