The Inventor’s Patent Dilemma: Beware the many pitfalls waiting to trip up the unwary

PitfallAs you can probably imagine, over the years I have had the opportunity to work with many inventors. Many of the inventors I have worked with have either been first time inventors, or experienced inventors or engineers who are 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 patent law is dense, unapproachable and very complicated.

As I always tell students, you could not – drunk and on a bet – come up with a more screwy patent system than the one 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? In truth, since the Patent Law Implementation Treaty Act became the law of the land in December 2013, there are no longer any one month deadlines at the Patent Office, but there are two month deadlines and two months is always at least 60 days, but may be two calendar months (i.e., up to 62 days). For three months it is always three calendar months.

If the patent rules test your knowledge of the meaning of “a month,” where else do hidden traps lurk? Pretty much everywhere is the unfortunate answer.


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 certainly 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. But when you are an inventor or entrepreneur and you have a dream there are a lot of things you have to do and never enough money to do everything you should do, let alone do the things you undertake properly by hiring professionals to ensure mistakes are not made. This is the inventor and entrepreneur’s dilemma.

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 ALWAYS obtain rights that are more narrow than they otherwise could have been, sometimes so narrow that they are completely worthless from a commercialization perspective.

Over the years I have had the occasion to be contacted by independent inventors who did file their own nonprovisional patent applications. They will frequently call me when they are facing a First Office Action that rejects all the patent claims they filed.  A First Office Action that rejects all claims is not uncommon, but these applications filed by individuals that I am asked to review usually have little or no useful discussion of the invention. That means there will be little or nothing anyone can do to help them ever achieve a patent. Sometimes they understand that they made a critical error, but usually they blame the patent examiner or a rigged patent system. The truth is they didn’t file an application that was legally adequate. Cutting corners isn’t always the most economical approach.

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 initial patent application they will now likely never receive a patent on their invention. It may not seem fair, but we do not have a “fairness system,” we have a justice system. And when dealing with patent procurement the law is what the law is. There are many pitfalls waiting to trip up the unwary.

First and foremost those who are going to go it alone need to never forget that the job of the patent examiner is to examine what you present, not to help you obtain the broadest protection possible, or even protection that would be at all useful in a commercial sense. 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. Therefore, inventors need to appreciate that the first filing is an all-important, critical filing that absolutely must describe the invention and all of the variations with as much detail as possible. You need to describe everything from the broad general invention to the most specific version of the invention and everything in between. See articles tagged completely describing an invention.

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 9 million utility patents having been granted in the U.S. and millions of published patent applications in the U.S. alone, there is always something that can be found that at least relates in some ways to what has been invented. 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.

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.

For those who are going to proceed with their own patent application you need to read as much as you can to become as informed and educated as possible. I strongly recommend you read the many articles we have on that relate to various aspects of patent drafting. I would also encourage you to consider using the Invent + Patent System.

Happy Inventing!


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

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One comment so far.

  • [Avatar for Eric Berend]
    Eric Berend
    October 10, 2016 11:23 am

    Thanks again, Gene. Given your long and principled advocacy, I really don’t mind the plug you put in at the end (for the Invent + Patent System).

    The only thing I would venture to add, is that if you are one of the few inventors who has also conducted legal proceedings as a pro se, you will at least have some idea of the sheer scope and scale of the unintuitive and seemingly contrary complexity and sheer arbitrariness of the system, and be better positioned to both understand the value of a good competent patent attorney and have some valid basis for assessment of said attorney.