DIY Patents: Some Things May Be Best Left to the Professionals
Oftentimes I hear from people who have started the patent process on their own—called representing yourself. The legal term for that is pro se. I addressed some aspects in this issue a few months back, but I want to elaborate.
Is This a Good Idea?
I’ve also talked previously about the various reduced fee and pro bono opportunities for those inventors who do not have the financial resources to use a patent attorney to help them get a patent. Not everybody qualifies, so people are tempted to do it DIY.
The U.S. Patent and Trademark Office (USPTO) is pretty clear on its website that it’s just not a good idea to DIY and highly encourages everyone to consult with a professional to prepare their application. The reason why the USPTO encourages that and why they set up these various reduced fee and pro bono projects is that a patent application is a complicated legal document and one of the most difficult to write.
A patent application has many parts; there are three very important parts:
- The Drawings
While you may be an artist, have talent and a great design, the technical requirements for patent drawings are complex. There are patent artists who specialize in knowing the rules about what’s allowed to be presented in patent drawings.
For example, a dotted line has a very special meaning in patent drawings. It means “I don’t claim this in a design patent application” or that “This is a line that shows a section cut in the utility patent drawing.” So, you really need to know all the different rules to do the drawings.
- Detailed Description
Likewise, there’s a lot of rules about the detailed description.
First of all, you have to look at the drawing and describe everything that’s in the drawing that’s important to your invention. It has to be written clearly. It has to refer to the drawing and you have to use reference numbers that in the drawing. That’s one of the rules.
The second thing is anything that you’re going to claim in your patent application has to be fully explained in the detailed description, called giving an antecedent basis to your claim. Everything in your claim has to be in the drawing and in the detailed description.
- The Claims
The claims are really tough for non-professionals. The claims are the metes and bounds of your invention. What does that mean? It’s the boundaries; it’s what you created that nobody has or has known.
Like I say, you have to develop a basis in the other parts and you have to use very specific grammar and language. For example, a claim may take one whole typewritten page, but it’s one sentence with one period. You’re not allowed to use “the” with a noun until you’ve introduced that noun with an “a” or “an” first. There’s lots and lots of rules.
If you make those kinds of mistakes, the patent examiner will work with you if you are pro se. They expect professionals to know better. This is the reason why the patent office really wants to encourage people not to do it themselves. The patent examiner ends up spending an inordinate amount of time with the pro se applicant to work them through all the technicalities. Then, even with working through that, you still may not end up with a patent because of mistakes.
When Should You Proceed with Your Own Application?
Answer: If you’re under time pressure and don’t have time to engage a professional, by all means, file a provisional patent application. For example, there’s a trade show next week, and you want to do your first public disclosure of your invention. You want to make sure you have it protected before you do. Or maybe you’re going to meet with investors—you’ve gotten that far along—and you need to show them and they won’t sign a non-disclosure agreement.
This may be a time for you to sit down and write the detailed specifications and to prepare some drawings or even photographs. All these things are allowed when you file a provisional patent application. Then, as soon as you catch breathing room, engage a patent attorney to look over what you filed.
DIY is not a great idea, but if you do it yourself and find yourself stuck when it comes time to file a non-provisional application or design application, or if you filed one already and received a rejection and don’t have an obvious clue of how to fix it, contact me. I’ve helped a lot of people who’ve started out pro se, so I have experience in helping those do-it-yourselfers. Just like they show on the Home & Garden network, I’m a professional who can fix the unfinished job; I’m here to fix your pro se application.
Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016