Frequently inventors will ask me if it is a good idea them to prepare and file their own patent applications. Whenever I am asked such a question I suspect the person doing the asking already knows the answer, but is hoping against hope that they might find someone who will tell them what they really want to hear.
You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix. You won’t die if you screw a patent application, which is virtually inevitable, but you will not likely be pleased with the outcome. If you do achieve rights they will be far more narrow than necessary and you will have created an unnavigable prosecution history that will almost certainly make the claims you do have rather useless.
Having said this, it is not at all uncommon for inventors to want to attempt to draft and file patent applications on their own. The cost of hiring an attorney to draft a patent application can price some inventors out of the market, so they are left with the choice of doing nothing to pursue their invention and dreams or trying to do something on their own. Inventors who are going to attempt to draft their own patent applications need to go into the process with their eyes wide open, realize that the resulting patent application will be better if a patent attorney is involved in the drafting, and most importantly understand that there are a good number of things that you can and likely will do that will lead to a resulting right that is compromised or completely worthless.
Collecting the information necessary to prepare a patent application covering a computer related invention can be quite challenging. Typically, most computer related inventions today relate at least in some way to software, which is at the core of the challenge. This software challenge stems from the fact that the software code is not protected by patent law, but rather how the software operates is protected. This means that the description needs to be one that can be replicated by others regardless of how they choose to write code to accomplish the necessary tasks.
A patent does not need to be a blueprint, but it needs to direct. For example, you do not need to provide the code for the scripts, although that is certainly one way to make sure it is described adequately, and perhaps something you may want to consider if you have a working prototype that you want to protect (more on this later).
Generally speaking, the goal is to provide enough description so that someone who is “skilled in the art,” which is a legal term that refers to those who would be expected to possess the knowledge and understanding appropriate to comprehend the invention, can make and use the invention after reading the patent application. In order to satisfy the patent law description requirements the explanation of the software in a patent application must give the programmer enough information to be able to sit down and know how to write the code having only read the description contained in the patent application.
One of the things that makes protecting computer related inventions tricky is that first you have to define the invention, and defining the invention is not something that is altogether easy when the invention is a computer process or relates to software. Sure, it is easy enough to define a list of desired functionality, and if you have some computer programming skills it is easy enough (after investing the requisite time) to write the code that will enable the functionality, but that which can be protected via patent lies somewhere between the desired functionality and the code, making the defining of the invention rather elusive for some, particularly those who are new to the patent arena.
Further complicating the matter is the reality that over the last several years the law of patent eligibility in the United States has been in flux. It did become largely settled with respect to software and business methods thanks to Bilski v. Kappos, which was decided by the United States Supreme Court. This case left the industry with the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter. The Supreme Court determined in Bilski that the machine-or-transformation test is not the only test for patent eligibility, but rather that it was an important clue. But what exactly does that mean?
When filing a patent application it is extremely important to make sure that the invention is as fully described as possible. Patent attorneys say this all the time, but what does it really mean? How do you “fully describe” an invention in a patent application?
The answer is that you always want to have as much information about the invention as possible. You want to very broadly and generally describe the invention, but you also need to have high specific discussion of the various nuances of each and every aspect of the invention. Frequently inventors will say to me, “but I don’t want to be highly specific because then it will be easy for someone to get around my invention.” This is typically following with a very confident: “Therefore, I will only generally describe my invention without mentioning to many specifics.” That is a tragic mistake.
What happens if the patent examiner finds the broad, general description of your invention to be in the prior art? If you don’t have nuances described in your specification what will happen is you will get a rejection that is impossible to overcome. Those nuances are going to be how you distinguish your invention over the prior art, both the prior art you know about when you file but more importantly the prior art that you didn’t know about and couldn’t have known about because it hadn’t yet been published prior to your filing.
This is one of those articles that I write every so often, in slightly different ways, in order to try and explain to inventors what it is that they need to know before they make an enormously costly mistake. For better or for worse, there is a popular conception that patent attorneys and patent agents are not really necessary and an inventor can do it themselves and save money. The truth is that patent attorneys are among the most highly trained attorneys you will ever meet. In addition to having to successfully complete law school and take a State Bar Examination, patent attorneys must have a scientific background or else they cannot even sit for the Patent Bar Examination. As my friend John White explains, a person becomes a patent attorney when they lack sufficient personality and charisma to do tax work! But when it comes to describing your invention in a document that will grant you exclusive rights with respect to only what is disclosed and claimed, isn’t that the exact type of person you want in your corner?
It is extremely common for inventors to make mistakes that will render their hopes and dreams of a patent null and void. I cannot tell you how many times over my career I have talked to inventors who have come up with something really special and are now ready to file a patent application. Frequently the story is that the inventor created something several years ago (perhaps more) and they have been using it and people love it. They finally now have the money to pursue a patent and want to get started. Those familiar with patent law know they cannot get started, because rights have irreparably been lost. The only recourse is to improve your magnum opus enough so that it is patentably unique compared to your original invention, which is not something that is typically easy for individuals to do.
Another thing I see with increasing frequency is the inventor who doesn’t have much money and who wants to do things themselves. The first question inventors without much money should ask themselves is whether they should even be pursuing an invention. The cost of filing for and obtaining a patent is typically quite minor in comparison to the amount of money required to create, market and distribute the invention. So if you can only muster several hundred dollars and need to file your own application because that is all you have, what are the realistic chances that you will be able to move forward in the commercialization process? Have you thoughtfully considered what you will do with the patent? Have you explored whether there are realistic licensing opportunities? Do you know there is a market for the invention?
Inventors and entrepreneurs who shop around find that if they take their invention to a number of different patent attorneys they are likely to get a number of different quotes for services ranging from patent searches to patent applications. In fact, you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings. See Cost of Obtaining a Patent. So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.
Often times a patent attorney or patent agent will start with drafting a set of claims. In fact, it is probably accurate to say that about 70% of patent attorneys start with the claims. There is nothing wrong with starting with the claims, and there is nothing wrong with starting with the written description, it is a matter of preference really. The claims will be what defines the exclusive rights that are ultimately granted, and many patent attorneys and agents think in terms of claims. The difficulty comes, however, when a set of claims are drafted and then the written description is drafted to match the set of claims crafted. When this occurs the written description is no broader than the claims, which means that there is no support in the written description for anything other than the claims originally filed. This is one way that some bargain basement providers operate, and it can be catastrophic for the unknowledgeable inventor.
Means-plus-function claiming has been disfavored (by and large) since at least 1994 when the Federal Circuit handed down its decision in In re Donaldson, where the Federal Circuit sitting en banc explained:
If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.
In other words, if it is not in the specification then the fact that it may be a “means” to accomplish the function does not save you. Means that accomplish the recited function that are not within the specification of a patent application are not captured by the claims.
Means-plus-function claiming is not very popular in many technical disciplines because of how narrowly limited the claims are to what is specifically disclosed. Over the years, however, mean-plus-function claiming has continued with various levels of popularity for those who deal with computer-implemented methods (i.e., software). After all, software is just a series of steps directing a machine (typically a computer) to perform certain processes to accomplish a result. Thus, “means for” doing something remained a rather descriptive way, at least generally speaking.
It has come to my attention that earlier today in his e-mail newsletter Hal Wegner has once again attempted to take a cheap shot at yours truly. Yes, I know that truth and accuracy are not the hallmarks of Hal’s newsletter, and normally I do look the other way when I learn of cheap shots by Hal, which are a dime a dozen. When Hal challenges my business and makes blatantly inaccurate statements I do find it necessary to respond.
In his newsletter Hal takes issue with my Invent + Patent System™, which is an innovative approach to the patent process on which I have my own patent pending. See U.S. Patent Application No. 20090307004. Hal writes: “[IPWatchdog.com] touts a do-it-yourself drafting system that promises a pro se inventor one (1) hour preparation time for a complete provisional application…” Again, I do realize that Hal Wegner is not known for his investigative accuracy, and he seems to not let facts get in the way of telling the story he wants to tell. Notwithstanding Hal’s need to cut down everyone and everything, whether deserved or not, I would expect that even Hal would be able to appreciate that what he wrote is inaccurate and unfair. In fact, the inaccuracies and lack of due diligence suggest that Hal’s comments may rise to the level of intentional malfeasance.
Although a patent application is not a sales pitch per se, most inventors will find it quite helpful to list as many descriptive objectives of the invention as is possible. As a general rule you should, however, stay away from laudatory language and puffery (e.g. “the best gadget known to man” or “the perfect solution” or “using this tool is unquestionably the choice any professional would make”). When you puff the tendency is to skimp on the descriptive details, which are essential to an appropriate patent application. Further, is anyone really likely to take your word for it being “the best”? That is why infomercials demonstrate the functional capabilities of an invention. In a patent application you need to describe the functionality and leave the selling to the salespeople later.
By way of example, many times inventions are not one of a kind, but rather they are improvements upon existing solutions. In this situation it is common that the advantage of the new invention lies in that it is cheaper to make, easier to use, more efficient, less noisy, easier to clean, more durable, stronger, faster, more resilient, etc. etc. These are things that you should include in your disclosure, but frequently this type of patentably relevant information is not conveyed with as much detail as possible and appropriate.
Over the last several weeks I have been rather irritated by two algorithm cases decided by the United States Court of Appeals for the Federal Circuit. See Show me the Algorithms and CAFC Kills Means-Plus-Function. In these cases the Federal Circuit was determining the validity of software patent claims written in “means-plus-function” style, which is authorized pursuant to 35 U.S.C. 112, ¶ 6. Essentially, means-plus-function claiming allows the drafter to claim the invention based on the functionality rather than the more traditional (and preferred) claim technique that employs structure within the body of the claim itself.
A claim term is functional when it recites a feature by what it does rather than by what it is. There is nothing intrinsically wrong with the use of such claim language, although it is becoming more and more apparently (if it wasn’t already apparent enough) that the Federal Circuit frowns upon means-plus-function claiming.
U.S. patent laws specifically allow for the protection of inventions that are improvements upon the work of others. The law says: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. 101 (emphasis added). Indeed, virtually all inventions are improvements. It is quite rare to see a truly pioneering invention, which is one that is the first of its kind.
But how do you go about patenting an improvement? The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art. You should absolutely focus on structure, not on the method of use. Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case. In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.
Lately I have received a lot of requests from independent inventors who have drafted their own patent application and want me to review it prior to them filing it with the United States Patent and Trademark Office. The reason for having an attorney review a patent application drafted by an inventor are obvious — they want to make sure that they did everything properly.
The requests I have received lately go something like this: “I have drafted a patent application that is 30+ pages of text, plus claims and 10+ drawings. I would like to have you review the application before I submit it to make sure I haven’t made any mistakes. I also hope this review doesn’t take you more than 1 hour to complete.”One hour to complete? I don’t even believe it is possible to carefully and critically read and absorb an application of that length in 1 hour or less. This is an unrealistic request and one that is sure to turn off an experienced patent attorney who might otherwise be willing to help.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
Typically blog roll links are not helpful to a website's rank. To give some additional "link love" to those we think you might be interested in reading we have moved our blog roll and links to a dedicated page. Go to IPWatchdog Blog Roll & Links.