The Inventors’ Dilemma: Drafting your own patent application when you lack funds

By Gene Quinn
October 22, 2016

financial crisis dollar on a white backgroundFrequently inventors are faced with a dilemma that is all too common for entrepreneurs. Generally speaking, most will bootstrap a project, whether it is an invention or start-up. That means long hours working without compensation, without revenue and not enough money to do everything that really needs to be done in a perfect world. Lack of funding presents great challenges.

The first entrepreneurs’ dilemma that inventors typically face is with respect to whether to hire a patent practitioner or to simply go it alone and prepare and file a patent application. Obviously, if you can afford competent legal representation that would be the best path to take, but entrepreneurs, and inventors, rarely have the funds available to do everything that really needs to be done. Thus, corners sometimes need to be cut. That is just the nature of business.

The problem with cutting corners in the patent space is that there are so many pitfalls lurking around nearly every corner. Indeed, representing yourself can be a little like taking out your own appendix. If you have acute appendicitis and you are hiking in the mountains many hours away from the nearest hospital taking out your own appendix looks like a much better option all of the sudden given the alternatives. But ordinarily you wouldn’t dream of removing your own appendix. Similarly, if possible you really shouldn’t be representing yourself as you seek a patent. There will be times, however, when it is either do at least some of the work yourself or the project just can’t move forward.

Not surprisingly, many inventors faced with this entrepreneurs’ dilemma will decide to proceed on their own, at least initially. That is a perfectly fine choice, but it needs to be done with eyes wide open. It also requires the do-it-yourself inventor to become as knowledgeable and familiar with the process of describing an invention and drafting a patent application as possible.

Before you decide to embark on the path of preparing your own patent application, even a provisional patent application, there are a few questions about your invention you really need to consider. Ultimately, whether you decide to go it alone and do-it-yourself or you hire a patent professional, having this information at the ready will greatly facilitate the process.

  1. What are functions or features that consumers will identify as an advantage?
  2. Are those functions or features likely to be patentable or contribute to the patentability of your invention?
  3. What other solutions currently exist that consumers could identify as substitutes for your invention?
  4. What patents or published applications exist that relate to your invention? If there are patents are they in force or have they expired?

These questions are critical because they will start to get you thinking about your invention in a different way; in a way that most inventors are unaccustomed to thinking. The truth is that with any invention there will be pieces, parts, features, functions or characteristics that are more likely than others to contribute to patentability. A patent attorney would need to identify what those features are, so you should as well. Inventors absolutely must start with identifying the patentable feature. Only then can you really ever determine whether moving forward with a patent application makes sense.

 

For example, it might be interesting that your new widget is the first of its kind to be painted yellow, but will painting it yellow contribute to the patent examiner believing you’ve invented something worthy of a patent? No. What you need to do is identify the inventive concept and decide whether that is enough to warrant the time investment and cost associated with obtaining a patent. Hopefully that inventive concept will be something that consumers will identify as an advantage. Remember, obtaining a patent costs money so the only way it will make sense is for you to be able to charge a premium for your product or service. If you patent something that consumers do not perceive as an advantage that usually winds up being a poor business decision in the long run.

In addition to focusing on the core of what makes the invention unique, which will hopefully be perceived as an advantage, you need to know what else is available on the market, and what else has been patented or attempted to be patented. For you to get a patent your invention must be unique when compared with the prior art (i.e., that which is known, such as those things available on the market, patented or published in patent applications). You simply cannot know whether what you have is unique unless you compare it to what is known to exist. That means you absolutely must know what previously exists and then compare it to your invention. This means you are going to need a patent search. While it makes sense to do your own search it is generally the case that inventors find little even when there are volumes of relevant information to be found, so a professional patent search can be a very worthwhile investment even if you are going to otherwise attempt to do the rest of it (or much of the rest of it) yourself.

The last critical thing from the list above deals with whether any previously issued patents that relate to inventions that address the same problem have expired. This is an absolutely critical consideration because once a patent expires the invention and all obvious variations of the invention fall into the public domain. When a patented invention falls into the public domain anyone could use that invention or any obvious variation of the invention for free. It can be very difficult to compete against free unless what you’ve come up with provides a significant advantage. Therefore, it is important to not only consider the existence of the prior art, but it is critical to consider whether there is prior art that is too close that has now fallen into the public domain and is freely available. Potential licensees will consider this, and so should you. It can be a major hurdle to a business deal, which means it is better to know up front rather than after you’ve invested large amounts of time and money.

For those who are going to go it alone I’ve created a self-help system – The Invent + Patent System™ – which has helped many thousands of inventors create provisional patent applications. Even if you wind up deciding to hire a patent attorney using this system can and will help you create a much more detailed disclosure of your invention, and get you to think about things you undoubtedly never would have thought about otherwise. If you are going to go it alone I strongly recommend you consider using it, but frankly any inventor could benefit from using the system. I also recommend you do as much reading on IPWatchdog.com as possible, focusing on those articles that relate to completely describing your invention in a patent application. Specifically, at a minimum I recommend the following articles:

Each of these articles mentions and links to other articles, so please read as much as you can. If you are brand new to the subject you might find it most easy to start with Invention to Patent 101 – Everything You Need to Know to Get Started, which is a tutorial broken down into discrete reading assignments that start with the basics and get more and more complex as your knowledge progresses.

Best of luck, and happy inventing!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com 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 and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments.

  1. Anon October 22, 2016 11:26 am

    A question for those “on a budget”…:

    How do you plan on enforcing your patent right if you are lucky enough to obtain one?

    Another question (courtesy of the AIA):

    How do you plan on protecting your patent right against serial IPR’s if you are lucky enough to obtain one?

    If you haven’t thought through the business aspects (cost to obtain, cost to protect, cost to enforce), then your decision to take only the first step in simply not thought through well enough.

  2. Gene Quinn October 22, 2016 12:19 pm

    Anon-

    Those are very good questions indeed. I probably need to refurbish my “why do you want a patent” article.

    While I cannot answer for all inventors, I suspect that the fear of not having money to enforce patents or being challenged is not one that will inventors from moving forward. Years ago I was speaking at the Manhattan Inventors Group to a room of easily 150 independent inventors. I asked them if I told you that you had a 1 in 3,000 chance of making money working with a particular company how many in this room would be convinced that your invention would be that 1? 99% of the people in the room raised their hands. It was at that moment that I gave up with respect to warning people about the bad actors and instead just started trying to give them good information and options. Inventors are optimistic.

    Ironically, those who would be deterred by the long odds and the lack of funds and the obstacles are generally, in my experience, the ones who would have the best chance of succeeding. Unfortunate.

    -Gene

  3. Ken October 22, 2016 1:32 pm

    Anon, a key difference is that you can always at least “hope” more money will come down the road to deal with protecting or enforcing your patent if and when it’s needed. Conversely, drafting and prosecuting the patent typically has to happen *before* you even know how well things might turn out for your company. And unfortunately, as we know, mistakes or deficiencies at that stage can often be impossible to fix later regardless of potential funding.

  4. Anon October 22, 2016 2:28 pm

    Ken,

    “Hope” is not a business plan.

    Patents are a business asset.

    My question was for the earnest and serious business-minded folk. Anyone can pipe dream and start down a path spending money and then “hope.”

    It would be my counsel not to do so.

    (and yes, time flows of money would be captured in a normal business plan – I think the bigger point here is to simply expect that the initial cost of drafting, filing, and prosecuting is not the end of it all – and to plan accordingly)

    I will also agree with you as to the inability to make up for earlier deficiencies. That is a good point to add.

  5. Benny October 23, 2016 6:22 am

    Anon,
    In answer to your question at 1 — wait till an infringing product hits the market, then sell your patent to a PAE or, preferably, to one of the infringer’s competitors. Become an arms dealer in a patent war.

  6. Curious October 23, 2016 9:25 pm

    Before the AIA and CLS Bank, my comment would be “if you don’t have enough money to hire a decent patent attorney, odds are that you are not going to have enough money to get your business off the ground.” I have seen an individual inventor make money off of a self-prepared application. However, it was in a day and age that patents were presumed valid and could readily be enforced, and this inventor literally just got lucky with the technology.

    These days, I would put it like this “There are very low odds that you’ll get your application allowed. Even if you get your application allowed, there are very low odds that your claims won’t be junk. Even if your claims aren’t junk, there is very, very low odds that your patent will survive invalidation attempts and just attempting to defend your patent will likely bankrupt you.” The time a small-time inventor spends drafting a patent application would likely be better spent developing their business. Ultimately, if one of the big guys decides to copy what they do, they’ll have very little recourse to stop them. However, there is an off chance that the big guys may decide to buy out the inventor’s business instead. I would worry much more about developing market share (or even a market) than worry about patent protection.

    With the patent system in its current state, a cost/benefit analysis for obtaining/enforcing patent protection by a small-time inventor just doesn’t justify filing a patent application. Although this opinion is against my best interest, it is an opinion I strongly believe in.

  7. Curious October 23, 2016 9:29 pm

    In answer to your question at 1 — wait till an infringing product hits the market, then sell your patent to a PAE or, preferably, to one of the infringer’s competitors. Become an arms dealer in a patent war.
    That is all well and fine, but if a patent attorney never touched the claims (and the inventor failed to file a Continuation Application so as to preserve the ability for a patent attorney to step in and draft good claims), most PAEs won’t even touch the patent. PAEs can afford (because there are so few of them out there) to cherry pick these days. If you are looking to sell a patent, it had better be spotless. However, being “spotless” is the antithesis of an inventor-written patent application.

  8. Paul Cole October 24, 2016 7:32 am

    As is well known, a person who is advocate in his or her own cause has a fool for a client.

  9. Leo Mazur October 29, 2016 4:23 pm

    Great Article Gene,

    As President of the Inventors Society of South Florida, I am always being asked to recommend an inexpensive patent agent ” because attorneys are just Too darn expensive”. What I tell anyone who will listen is, have the expected end result of your patent dictate the budget for it.

    In other words, if you are planning to sell the product on a website or in a few local stores where it will be generating a few thousand dollars a month, most likely your infringer will be doing the same thing and it will not be worth taking them to court.

    Also in this case, if your infringer is a large entity, you will not have the finances to defend your patent against them anyway. So whether you have a patent or not is irrelevant. Maybe filing Pro Se is a viable way to keep the door open just in case it unexpectedly starts to takes off.

    However, if you have something really disruptive that you plan to license to a major company, you will need the biggest bazooka you can get and let’s face it, your Pro Se Pea Shooter just isn’t going to cut it. Therefore you must budget accordingly.

    That being said, I always encourage inventors to do extensive patent, product and industry searches as well as to try to learn as much as they can about the patent process and yes, even try their hand at writing their own patent. This way they can begin to understand what the patentable traits are regarding their invention. Without being able to recognize what you Can own, you will have no idea of the ultimate value of your invention.

    Therefore, I believe this article and the associated articles should be required reading for any would be inventor whether they plan to go Pro Se or not.

  10. Gene Quinn October 29, 2016 7:04 pm

    Leo-

    As always much food for thought my friend. I’m going to have to circle back to this in the coming weeks.

    I absolutely think doing a search is critical, and after so many years of preaching the importance of a patent search I now have to preach the importance of a product search. Once upon a time the only place people would look was in the local hardware store or maybe a quick Google search. Now they do patent searches and forget to look online.

    If only there could be a 10 step approach! Of course, the problem is you really need to be doing all 10 things at once, and sometimes out of order might make more sense given your goals, the project dimensions and your budget. It really would be a 10 step matrix I’m afraid.

    I hope you are well. Please say hello to everyone in South Florida. It has been too long!

    -Gene