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Can Patent Expense Be Controlled By Inventor Effort?

As a New England patent attorney, I know that obtaining effective patent protection and patent coverage at low cost, to provide affordable patent protection for small business and independent inventors, is important in raising venture capital and protecting the market for new products or for making money by licensing or selling of patents. Thus, a reasonable strategy is needed to control, check, cut or curb patent attorney costs, charges and fees, and yet avoid money saving gimmicks.

 

By: Robnathans@aol.com

The Supreme Court of the United States has stated that a patent application is perhaps the most difficult legal document to properly prepare. Understanding the often complex technology involved in the various technical features of the invention, and the claim drafting process to properly cover such inventive features can be difficult and time consuming, and hence patent attorney legal bills based on hourly charges can be worrisome. The information below is provided to help the small businessman and independent inventor, who often lack funds, cut costs; see the disclaimer on the last page.

 

Trap: The Low Cost Design Patent Application

At the onset, the inventor must understand that a so-called "design" patent application, in contrast to a regular "utility" application, is hardly ever of any value. These often misleading "design" patent applications merely protect the aesthetic, ornamental appearance of a product like a lamp base or a telephone, having a radically different visual appearance, and thus do not provide effective protection for most inventions, because the inventive product can be copied, having a different ornamental or aesthetic appearance. These ornamental design applications just require a drawing of the outer configuration of a product to illustrate its appearance, and technical understanding or description of the mechanism of the product is not needed. The time consuming drafting of patent claims is not required, and is improper. The claim is merely the appearance of the article as shown. Thus, design applications cost little to prepare (they are readily invalidated in court). For a further discussion of design v. utility patent applications, see the index of the U.S. Patent Office web site http://www.uspto.gov Another trap for the unwary and uninformed inventor is the so called provisional application.

Trap: The Low Cost So Called Provisional Application

The U.S. Patent Office web site discusses the limitations of provisional applications and invention disclosures, see the index in: http://www.uspto.gov The filing of a reduced fee, so called provisional application, was permitted by the U.S. Patent Office in 1995 to conform our practice with foreign patent offices under treaties. For $75 the inventor can file the provisional and receive a tentative filing date which must be followed by filing of a regular utility application within one year to give this act any value at all.

The well informed inventor has learned that you cannot obtain an issued patent by filing a low filing fee provisional application or an invention disclosure in the Patent Office, and that only filing of a regular utility patent application will result in an issued patent, providing the needed protection of the invention. The provisional application is misnamed because it is not an application to obtain an issued patent, and is merely an application to obtain an early filing date (often invalid) for a regular patent application which must be later filed within a year and necessarily prepared earlier.

The provisional is supposed to give the inventor time to see if his or her patent rights can be licensed or sold, before filing the more expensive regular utility patent application. Due to patent attorney backlog, and the required preparation time, the inventor really "buys" closer to nine months time. However, just try to find a company interested in the submitted patent rights, and come to a near negotiated conclusion of a licensing agreement with an interested company in nine or ten months! The initial submission process, and signing of the usually required non-confidential disclosure agreement often takes at least a month alone. Then, evaluation of the technical merits, and merits of the invention from a marketing and manufacturing cost standpoint must be carried out, along with a patent search to determine whether significant patent protection exists at all. All of this is usually performed before serious negotiations even start.

An additional, much quoted rationale for the provisional, is that candidate licensees or purchasers of the patent can be approached without fear of having the invention stolen. However, this rarely occurs. False oaths made upon filing a patent application constitute perjury. Companies will willingly pay an inventor a royalty, which is a minor share of the profits, for a real money making invention.

Furthermore, the early provisional filing date is often ineffective or invalid for the following reasons. The provisional, which does not require claims, is of questionable value at the very least, because the invention description, written by the inventor to save patent lawyer fees, is often inadequate to support good claim coverage, which must later be drafted in the regular utility patent application. Inventors often emphasize in their descriptions, the many benefits they seek, without describing in adequate detail how the benefits will be obtained. In other words, they submit descriptions that are inadequate to teach the ordinary worker in the art how to put the invention into practice without undue experimentation. Such descriptions cannot be used to adequately support a later filed regular utility application, and thus the provisional is worthless in preserving the early filing date, which is the reason for filing it in the first place. Time and effort are wasted.

Alternatively, technical data is submitted which is often a rambling mass of undifferentiated details, which do not clearly and adequately focus on and point out the precise nature of the invention and its subsidiary features. The later drafted claim language (the terms of the claims) has to precisely pinpoint the inventive features, and must find clear support in the terms used in the specification to make the claims readily understandable. This will be difficult at best, if the original provisional description is a mass of undifferentiated details.

In like manner, this is also true for the informal drawings, usually needed to support adequate claims in the later regular patent application. The drawings in the provisional cannot be too vague or too detailed. The detailed description, the related drawings and the claims must be understood all together, like a string ensemble, to adequately explain the precise nature of the invention and its subsidiary features, and to distinguish them clearly from the prior art. To make this happen, all parts of the application should be drafted together. As technology becomes more complex, this endeavor becomes even more challenging. Rarely can the inventor present his or her own provisional to a patent attorney to have him or her "tack on" a set of claims in a few hours which can result in a patent application producing a valid patent, or an application acceptable to the patent examiner. A professional inventor, who obtains many patents over the years, can be the occasional exception.

Hence, the claims should be drafted by the attorney, along with the precise description of the inventive embodiments in the specification that supports and clarifies the claim language required by patent law, and along with the closely related drawings. As a result, the patent attorney usually does in fact draft the entire application in the first place, for just about all of her clients. Inventors simply cannot draft a set of claims having the detailed definiteness requirements of the Patent Office examiners. They also canít draft a set of claims of varying scope that include claims broad enough to cover the envisioned ways that the invention may be built or practiced, and yet not be too broad, so that they read on the prior art. This is why twenty claims or more are usually drafted in each application, and not one claim. It takes years to learn this particular skill. Sometimes an inventor going it alone in the Patent Office to save the attorney fee, can get an exasperated examiner to draft a claim for him. (Patent examiners donít like pro se inventors due to the many, many mistakes they make in the patent prosecution process, which must be objected to.) The odds are that such a claim will be a "picture claim", due to examiner time pressures, which picture claim is worthless, since an infringer can modify or use the invention in a way to "design around" the claim. All elements of the claim should "read on" the infringerís process or product. Of course, we are often getting patents to protect the small business client against competition from a potentially infringing competitor.

To further complicate matters, the provisional application requires no particular formatting, while the later filed regular utility application requires a very particular format. Thus, the application descriptions in the provisional must usually be extensively rewritten by the attorney in the later filed regular application for this reason also. This is a problem because the later filed application cannot include new matter to attain the advantage of the provisional of an early filing date. What is "new matter" is a can of worms, best avoided. Accordingly, provisional applications generally waste time and donít save money.

 

Lowering Patent Costs By Inventor Drafted Descriptions and Drawings Less Claims

To summarize, in order to obtain effective patent protection, the patent attorney produces a patent application that describes the various features of the invention in a clear and concise manner, understandable to workers in the art, so that a prospective patent licensee or purchaser of the patent rights, or a judge or jury, or an infringerís patent attorney, can readily grasp the invention. The invention description, and supporting drawings must not be too detailed, which tends to hide the invention, or too generalized and sketchy, which fails to particularly fully explain the inventive features. Inventors often fail to clearly describe or pinpoint the crux of the features of their invention and they virtually always fail to write a set of claims that particularly point out the exact nature of the invention under the patent law and otherwise fail to comply with the Patent Office claim drafting requirements. For these reasons, the inventor who attempts to prosecute the patent application himself, will typically present the Patent Office final rejection to the patent lawyer, which results in filing a new belated patent application in the Patent Office. Time is lost and more money is spent.

Proper formatting of patent applications is strictly required by the U.S. Patent Office. The inventor, in preparing a detailed description of the invention, with proper informal drawings of the right scope for the patent attorney, can greatly reduce patent attorney time, otherwise needed to fully and clearly describe the invention and to edit and rewrite the inventorís notes, to have them comply with the required Patent Office format. As a result, the billed attorney time and legal bills and attorneys fees can be substantially reduced, particularly for a high tech invention, to the benefit of the client. The required format, in the order indicated, is as follows.

The TITLE of the invention should not be too short, and thus non-descriptive of the invention, or too long, which will result in the Patent Office examiner requiring that it be shortened to no more than a dozen words or so.

The BACKGROUND OF THE INVENTION is a description of how the problems solved by the inventor (or similar type problems) have been solved by others in the past. We can briefly refer to and discuss prior art patents and scientific publications (copies for the patent attorney) dealing with past approaches to solving these problems. The disadvantages of these prior art solutions should be briefly mentioned. Then, we discuss the desirability of providing new, beneficial results and fresh desired goals to be met by using the invention, and what they are in some detail. The new "present invention" of the inventor is usually not described here. This is in contrast with the immediate description of the invention, by the inventor, in his or her typical write up for the patent attorney.

BRIEF SUMMARY OF THE INVENTION follows. It is a concise description of the so called crux, gist or core of the invention including its various features: e.g. "One or more of the desired benefits or goals mentioned above in the "Background" are met in accordance with a first feature or embodiment of the invention which comprisesÖ.", and so forth with regard to a second and third feature or alternate embodiments of the invention. The summary is exemplary of the invention and does not limit the scope of the invention, which is the function of the claims. Inventors typically insert lots of variations in how the invention is to be practiced here which is improper. Such description belongs in the detailed description described below.

BRIEF DESCRIPTION OF THE DRAWINGS describes the rough sketches or informal drawings which usually must be provided to illustrate the concepts of the various embodiments of the invention. If proper sketches are prepared for the patent attorney by the inventor, he need not redraw them, and costs are reduced. The sketches must be approved by the patent examiner and will later be used by the patent draftsperson to prepare the formal drawings, if and when the patent is allowed. Thus, the inventor need not be concerned with line quality or exact details of his sketches; the usefulness of the sketches in clearly illustrating the concepts and workings of the invention schematically, is what is important. The following are objectionable: details used in engineering drawings (e.g. dimensions, notes, shadings and centerlines), printing of more than 3 or 4 words or phrases on a figure, or lots of printing and filled in or darkened portions, stylish details such as used in "power point" illustrations (a box merely labeled a camera, amplifier, motor control circuit etc. is often sufficient). Such types of objectionable items have to be removed by the attorney, increasing his or her fees. Before the inventor prepares the informal sketches, he or she should study the drawings of the issued patents printed out, or at least viewed during the preliminary novelty patentability search at http://www.uspto.gov or http://www.patents.ibm.com The component parts in the sketches should be numbered, and are thus easily referred to in the inventorís detailed description before being presented to the patent lawyer. Often, simple block diagrams, or flow charts showing computer steps or process steps will suffice.

DETAILED DESCRIPTION OF THE INVENTION is a description of various ways (embodiments) of practicing the invention. The description should refer to the numbered parts, often boxes, of the informal drawings or sketches just discussed. Like the "Summary," the "Detailed Description" does not ordinarily limit the scope of the invention, as this is the function of the claims, which must necessarily limit the invention, to distinguish the finally issued claims from the prior art. Thus the inventor need not worry about describing every variation on a multitude of ways of carrying out the invention. The last "other embodiments" paragraph can briefly mention a number of alternate ways of carrying out the invention, other than the most preferred way (the best mode) which must be described in some detail. Intentional withholding of the best way of practicing the invention known by the inventor, can render the patent invalid.

 

THE CLAIMS. The inventor should not attempt to draft the claims as they will invariably be rewritten by the attorney. It takes years of exposure to patent prosecution to learn how to claim an invention properly.

The ABSTRACT OF THE DISCLOSURE need not be prepared by the inventor, since it does not aid the attorney in preparing the patent application.

Hence, to save substantial costs in a meaningful way, the inventor can prepare a proposed specification for use by the patent attorney, which has the characteristics and attributes set forth above. To do this effectively, the inventor should study a number of patents retrieved during the preliminary patentability search, which are closely related to his invention. Of course, the principal motive for performing the preliminary novelty search is to determine whether the differences between what the inventor thinks he or she has invented and the prior art are significant. These differences need not be "flashes of genius" but must be non-obvious variations on the retrieved prior art to support patentability. However, in addition, the patents printed out by an on line preliminary computer search can also be beneficially used by the inventor to study the aforesaid format of the written specification, required by the patent office, of the various patents various retrieved by the search.

These retrieved patents will often have descriptions and drawings similar to the desired patent specification to be written. For example, a patent requiring a computer program, or a series of chemical method steps will often have a flow chart; a patent directed to an electronic system will have schematic block diagrams, often with some circuit drawings of particular electronic components forming unique circuits which may be desired. A mechanism invention will have drawings, often complex, of numerous interacting mechanical parts; an optical invention often includes groups of lenses defined in tables in a very particular way, and so forth. These patents, readily available on line at http://www.uspto.gov or http://patents.ibm.com are excellent teaching tools to enable, at least some inventors, to prepare a meaningful and well-written patent specification to be submitted to a patent attorney. Besides having the proper formatting to save on billed patent attorney time, such a patent specification will help rapidly teach the attorney what he needs to know about the invention to effectively prosecute the application to obtain a readily understandable, valid patent. This can be time consuming in complex fields of technology. The inventor is often a specialist in her field, but the patent attorney usually has to be a "jack-of-all-trades." Also, if the informal drawings are proper as explained above, they do not have to be redrawn by the attorney to save more billing time.

DISCLAIMER: There is no attorney client relationship between the reader and myself and the general information herein provided for the benefit of the public does not constitute legal advise; every client fact situation is different. Prepared by Registered Patent Attorney Robert L. Nathans, 36 Stag Drive, Billerica, Ma 01821 U.S.A.; 978-667-3060; fax 978-667-1316. Feel free to write, telephone or e-mail me at robnathans@aol.com with questions or comments. My response thereto does not constitute legal advice.