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Copyright © 2016 by Netanel Raisch

All rights reserved.

www.netanelraisch.com

Raisch, Netanel.

Patents secrets

Edition 1.0

Contents

Should you file?
Patent or know-how?
What to file?
Military related patents
Patent structure
Prior art search
General explanation about prior art
The prior art search problem
BUT it is built in conflict of interest!
Another aspect of the prior search
What to search and where to search
What should be in the invention
When to patent
PCT
Where to patent
US patent
How to file internationally
Working with or without an attorney
Correspondence address
Independent inventor – in the examiners eyes
Prior art search
Writing
Patent attorneys writing inspection
Filing
Non-final office action
Final office action
Further steps
Provisional patent
Writing points
What to include in the abstract
What to include in the description
What to includes in the drawings
What to includes in the claims
What to includes in the abstract
Device or method / one  patent or few patents
Working on hour base vs. task base
Summary

General

For patent attorneys:

I know that there are good and reliable patent attorneys.

I know that it isn’t fair to generalize that all patent attorneys are using inappropriate methods.

I hope that if you are patent attorney and you have just finished reading this book you feel that nothing of the following refers to you.

BUT…

I am sure that if you are a patent attorney you know one of your colleagues who uses one of these methods from time to time…

If you are not a patent attorney I assume that you are an inventor who wants to have a patent for protecting your idea. In case that you are not an inventor you are working in a place who wants to protect your rights as assignee.

And I am also sure that you don’t want to spend good money for nothing. In this book I will tell you from my and my friends’ experiences how to save money while getting a patent.

I have US patents and pending international patent applications, and I think that I learned a lot during the patent process. The point is that even though I learned so many lessons by working with patent attorneys I keep learning new patent attorneys’ tricks… I hope that if I will share with you their common tricks you will not pay the fortune that I already paid.

The book is mainly about utility patents because they are more than 97% of all the patents in USPTO (United States Patents and Trademarks Office). The discussion below is also relevant to other patents types as well.

Should you file?

You have great idea! I know how you feel right now, it is an inspiring feeling – you are going to change the world! Even if not to change the world you feel that you will make tons of money from your idea, it is awesome!

I felt that way many times, at the beginning I was so excited after every new idea that I spent hours speculating how much money I was going to make from each idea…

But the problem is that you don’t want someone else to steal your idea. You want to protect your idea in a way that everyone who will want to use your idea will have to pay you for using it.

So you decide to file a patent about your idea.

The patent concept is exactly what you think you need. The government wants to encourage people to invent new things and to take the development risk on their money so the government offers a short-term monopoly on a new idea to encourage invention. And you… you have such a great idea that will probably change the world and the whole patent concept was invented especially for you.

But actually I want to give you a bit more information before even you start the process for getting a patent. This book will save you a lot of money even if you will decide not to read this chapter because you are sure in 100% that you will file a patent but if you will decide not to file patent at all it will save you even more money.

Let’s start with some statistics (I will refer to the USA, and I will explain why latter):

50% of the patent application granted[1].

5% of patents licensed or commercialized[2].

10% of patents granted to individuals[3].

It means that the chance that your patent will generate profit for you is 0.25%! It isn’t high but it is certainly higher than buying lottery card.

So, as you can see the general risk for filing any patent is really high if you expect a return on your investment, which can be a good deal of money.

If you decide not to file your patent after reading these statistics I have saved you a lot of money but I also dashed your dream and I definitely don’t want to do that  - I filed many patents by myself because I believe that the potential to win was worth it.

And remember we are inventors and we are always sure that we have invented the most amazing thing in the world.

Ok, after we understood the potential to make money from our idea – is filing a patent application the only way for making a money from it?

By filing a patent you choose one specific way with pros and cons, let’s try to check each one of them:

Patent or Know-How?

The patent should include all the necessary data for implementing the idea behind it. In case that you will not tell an important part in your process and someone will copy your invention the court will not help you because the patent should be “Industrially Applicable” (in EU) or show “Operability” (in US), in case that you concealed part of your invention and it isn’t described in the patent the patent will not protect you when others practice your invention.

You can patent part of your invention instead of patenting all of it, but you will describe your patent as part of your invention as well.

In a situation where it will not be easy to copy your invention even after you will start to use it by yourself or after you will start to sell it, there is good chance that not filing a patent at all will be the better idea.

Why NO?

1. Protection period – Patents protect your rights for only 20 years (max) and if you want to use your formula for making a specific beverage (like Coca-Cola) for a longer period, after 20 years people will be able to copy you by law.
2. International protection – You will probably not be able to file a patent in ALL countries. And even if you will file a patent in many countries it will be very difficult to see someone in far-away country because he used your patent without paying you. In case you didn’t file a patent and you protect your know-how very carefully, you will not need to file patents internationally (which cost a lot of money) while still not being concerned about someone which will copy you somewhere.

Why YES?

The reason why it is good idea to file a patent is in case that you plan to try to make a deal for patent commercialization with a big corporation. In such a scenario if you want to reduce that chance that they will use your idea without paying you at all – it could be good idea to have good patents in your hand before starting the negotiations with them. Usually, corporations will not want to deal with potential patent infringement in case that you have patent pending application.

 Why your attorney doesn’t want you to know it?

Patent attorneys make money only if you file a patent, so they may stress the positive side of patent filing over the real risks and in some cases the lack of need for a patent.

What to File?

After you decide to file a patent application now you should start to think what exactly is your patent.

The USPTO explains in simple words what things are eligible for patentability.

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “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,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. See 42 U.S.C. 2181(a).

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes functionality, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required[4].”

You cannot a file patent application for ideas that can’t be implemented as a new physical entity. Lastly US federal courts have ruled that “only software” patents will not be legit anymore because do not include any new physical elements. Only software patents which require special hardware for running them will be accepted along with the hardware[5].

My assumption is that your idea could be a patent but you have to choose which aspect of  your idea you can or you want to file as a patent.

Why your patent attorney doesn’t want you to know it?

There are patent attorneys who will file anything for you even if they know that you have no chance of receiving a patent.

Military Related Patents

In case that your invention is mainly for military uses it is important to know that in many cases your patent isn’t relevant and sometimes will put you in troubles.

In many countries the military can use patents without paying royalties. In other countries there is a special committee which approves the filing of military patents. Some of those patents are not allowed to be published due to security reasons.

There are also militaries which don’t buy products under patent protection because they want to be able to do a tender with few participants.

So in general you should think twice before filing a military-related patent.

Patent Structure

Before I will start to explain in details about potential problems in the process I would like to explain more about the patent structure. The patent includes name, abstract, description, drawings, claims.

1. Claims

I start with the claims because it is not the most important part in your patent  -IT IS YOUR ONLY PATENT. Only what appear in your claims will be examined and offer legal protection under your patent. It is essential to understand it because if you will read a patent application which includes all what you want it to has but that which does not appear in the claims isn’t protected. The claims should be very accurate in words because even one word not in the right place can make your patent useless. For instance if your claims includes the words OR and AND in your claims could make them useless for instance using the word OR could give someone else the option to use BOTH and in such situation your patent will not protect you[6].

It is one example but you have to understand that every words counts and reading the claims again and again is worth it.

Writing good claim is a profession and this is the only place where it is really important to work with experienced patent writer.

Because this part is so important I will refer to it in many places below.

1. Description

The description is the place where you will have to explain in more standard language what is your invention and how it helps the world. In addition you can write many other important things that will help you to get the patent in case that you will get an initial rejection from the patent office. In the description you will have to use drawings in order to explain your invention more completely.

1. Drawings

The drawing are associated with the description. There are rules (http://www.uspto.gov/web/offices/pac/mpep/s1825.html) to follow for good drawings and in general you will have to use black-white drawings without photos. Each part of the drawing should be marked and explained in the description.

1. Name

The patent name can be changed with approval of examiner until you pay the allowance fee. It is simply not so important at the moment that you file the application. There is even a reason not to specify about your invention in your patent name because the patent name is published once you file the application but the rest of the patent remain concealed for the coming 18 month (IN ISRAEL BUT NOT IN THE UNITED STATES—NOTHING IS PUBLISHED UNTIL 18 MONTHS) or till you get the allowance. In this case if you don’t want to tell anyone about your idea you don’t have to tell about it in your patent name.

1. Abstract

The abstract is a short paragraph which explains in few sentences about your patent. It isn’t so important and it isn’t influence your patent protection.

If you are not familiar with patents and patent structure, I very much recommended you to learn it by reading books and articles, many of them being available for free on the Web.

Prior Art Search

General explanation about prior art

As you know, you can’t file a patent about things that are commonly known. If someone has invented the patent before you, you will not be able to get a patent for it.

The MPEP (the patent rule book) states that under 35 USC 102(a)

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

In order to avoid filing a patent that already exists, the patent examiner is required to do a search in order to try to find a similar invention. Just in case that the patent examiner doesn’t find anything that is similar to your invention he may grant you a patent.

The patent examiner does not have to find exactly the same invention like you thought. The examiner can find up to 5 patents that together could describe your patent. (THIS IS THE 103 STATUTE—MIXING ART; YOU SHOULD QUOTE IT ABOVE). See this:  http://www.uspto.gov/sites/default/files/about/offices/ous/Cooper_Union_20130610.pdf

The examiners could theoretically find any prior invention anywhere in order to reject your patent under 103/ obviousness reason but as a matter of fact the examiners do prior art search only in patents. If the examiner finds a patent that looks similar enough to your patent he will find additional patent that will help him to reject it.

For example I filed a patent for alerting and rescuing divers in distress. The examiner found a patent that was supposed to rescue divers but this patent did not includes an alert so he said that this patent together with car-based alarm together with portable computer would make my patent obvious.

The prior art search problem

In order to save you money you should do a prior art search because you don’t want to file a patent that already exists.

You can do the search by yourself in Google Patents (www.google.com/patents) or you can ask your patent attorney to do the search for you.

It makes sense that your patent attorney will do the search for you because he has much more expertise and he can tell you if your invention is similar to something that already exists or would have been obvious from the combinations of existing prior art. For example if you invented something for car wheels it could be found under bicycle inventions.

The U.S. Patent and Trademark Office suggests that a registered patent attorney or agent is a useful resource for conducting a Patentability Search:

A registered attorney or agent is often a useful resource for performance of a patentability search. After an application is filed, the USPTO will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill.  USPTO on using patent attorney or patent agent for prior art search.

BUT it is built in conflict of interest!

If the prior art search will find very similar patent the client will not pay the office for filing a patent because he will know that he has no chance to get a patent. So the patent attorney has an incentive not to work too hard!

It isn’t easy to know what kind of patent search the examiner will do and how he/she will weigh different pieces of existing art. There are more than 8000 patents examiners in the USPTO and each one of them has different strategy for patents search; there are also over 9 million US patents, without taking into account patents and applications as well as research articles from around the world, as any relevant description of art may be considered prior art against your invention. The examiner decides to which category the patent belongs and then he does a keywords search in the specific category. Since  it is impossible to know what will be the examiner’s search strategy it is very important to do a thorough prior art search in few relevant categories.

A potential solution for this problem is to do the prior art search in one office and to tell them that the filing will not be their job so they will not be a conflict of interest.

Another aspect of the prior search

It is highly recommended to find all the patents that look similar to your patent because it will be essential in your patent writing process.

Once you will find all what already invented and you will still decide that your patent is different from all of it you will be able to write the claims in a way that will overcome all the prior art you found. It is very important to define your claims in a way that will reflect the novelty in your patent for example if your invention is a machine for producing tires and your machine make the tires in half time than all the current machines it is a big invention from the business point of view but it may not be enough for a patent, as patents do not reflect economic considerations, only technological improvements over that which is known. If you included additional process that shorten the production time you can’t simply describe your process as your patent – probably someone else already used it for different purpose and you will not get a patent on the process itself. So you have to define exactly the process in the right place in the patent without adding too much info that will make your patent as patent for existing machine.

After you have found all of the relevant prior art it is highly recommended to mention each one of them in specific paragraph and to explain the prior art and why your patent is better and different than the prior art. From my experience the examiner don’t use cited prior art against you!

What to search and where to search

Even though that any form of prior art will prevent you from getting a patent, the examiners in the USPTO search almost only patents. They can search local or international patents but they probably not search articles and books.

The examiners search words from your claims because this is your patent but they don’t search only in claims – they search the full patent!

The prior art search should includes all the description as well as claims.

I will explain later why this search method helps your patent.

Why patents attorneys don’t want you to know it?

1. You will be aware to the conflict of interest in their search and you will consider not to give the same attorney the search and the filing
2. You will ask your patent attorney to show you how exactly he is going to overcome the prior art in your claims
3. You will ask your patent attorney to cite and explain in the specification why your patent is better than the prior art.

What should be in the invention

The patent should includes the core point of your innovative idea – not more and not less.

As I started to explain above you don’t have to file the full process or product but only the innovative parts. It is highly recommended because if you will describe the full process or machine the entire invention will looks like something that already exist and you will not get a patent. But if your claims will be too broad the examiner will not know on what he should focus in his search.

The patent have to protect you from being copied by another company but it will be able to do it only if you will be able to understand what is the invention in your patent. The patent should protect the part that without it will be impossible to copy your idea. For example if you have a great idea for making a new car and this car has many components but the most unique thing is that it has 5 wheels and without 5 wheels exactly it will never work you can protect your 5 wheels car invention and you don’t have to file patents for other components which depends on the 5 wheels structure. It does not mean that if you car includes also a water based engine that you don’t have to patent it but you can patent it in a different patent.

If you will think that writing a claim for broader protection will be better for you in many cases you will wrong. Tring to catch more than necessary could live you with nothing in your hand. For example, if you will try to protect your car invention by claiming that your patent is for any car with more than 4 wheels you will lose everything because the examiner will bring a prior art against you from cars with 6 wheels and in this case you will not get youth patent even though that you was able to get it in case you wasn’t tried to get more than necessary.

Patent attorneys sometimes try to convince clients to get broader claims be telling them that they will be more protected but they don’t tell them that they reduce their chance for getting a patent at all. In addition. Broader claims bring more rejections from the examiner which means more working hours to the patent attorney.

When to patent

When I just started to deal with patents I used to think that I have to file the patent as soon as possible after I thought about the idea because I didn’t want that someone will file the same invention before me.

It caused me a lot of pain… because of many reasons:

The idea wasn’t fully cooked  – you are thinking about an amazing solution for a big problem but you didn’t tested it yet. You think even about many options and scenarios and you are going to file a patent for the best invention in the world, but maybe it could be even better solution.

Before you file the patent it is highly recommended to wait a bit and consider the following points:

1. Will it work?

In many cases the initial thought doesn’t takes into account various scenarios that could actually happened in the real world.

Before you file the patent just do a small test and try your idea. Sometimes it will not work and sometimes it will work but you will find that a minor change made it even better and of course that you want it in your patent.

1. Do you want that all the people in the world will know about it after 18 months?

The problem with patents is that they should be published 18 months after you file them and in many scenarios you prefer not to tell anyone about your idea and technology in the coming years.

You have to think if your technology will be ready for commercialization in the near future and just if this is the case to file the patent. In case that you still work on it in most of the cases it will be wiser for you to wait with the patent filing till you will be ready for disclosing your idea.

You still have to know that there is a minor risk that someone develop the exact same idea in parallel to you and in this case you will prefer to file the patent before him but in most of the cases this isn’t the case even though that most of the inventors have this fear.

1. Does it worth the filing?

In many cases the patent that you want to file does not have commercial value. Sometime the manufacturing cost of your invention is too expensive for the problem size. Sometime it is because the technology isn’t ready yet for implementing what you want outside the lab. And in other cases you don’t know even what the patent will be used for.

In all those cases it will be wise not to file the patent at all. Patent filling cost money, it doesn’t meter if you will learn how to be very efficient in the process but at the end of the day you will spend the money and you will not see anything back, keep your money for a patent that really worth it.

PCT

The PCT is a kind of international patent which don’t give you any protection in any country but it gives you additional 18 month for filing your patent in additional countries and still to keep your original priority date.

The PCT sends you search result which supposed to tell you also what is your chance for getting a patent but there isn’t any correlation between the PCT examination and what the local examiners in the countries that you will file later will do.

The PCT is an expansive process so I highly recommended to do at least rapid check for marketing possibility and proof of concept for be sure that your patent actually works.

After you will file the PCT you can decide in which countries you want to file additional patents like you will read below.

Where to patent

Having a patent in one country will protect you idea in this country only. Considering the fact that it cost millions to protect your patent in all the countries in the world will lead you to the decision in which country would you like to file the patent.

There are few strategies for where to file your patent and I will try to describe each one of them:

1. Where your market is

In case that you have a patent for specific use like ice breaking ship you can define which country actually use and will buy your ship. You will not sell ever such a ship to tropical country so you don’t have to waste your time and money and file a patent there.

In many cases you don’t have to file in all the country which need your solution. If you will have a patent in the biggest countries only you will have a huge advantage which will avoid your competitors from compete with you from many reasons. First because they will have to invest the same money like you in production lines or in R&D but they will be blocked in major part of the market which will make it unprofitable to compete with you.

Second you will have a big marketing advantage because the big international customers will have to work with you because they don’t want to use two types of products in their organization.

Third, the customers will always know that you are the original…

1. Where your competitor manufacture

In some cases you can block your main competitor by patenting your idea in the country that he manufacture there. It is obvious that in case that the patent is so good he could open a new factory for manufacturing there but in some cases your patent is good but it isn’t so good that your competitor will change his factory place for it. for example if you have good idea for improving trains you can file your patent in the few countries which actually manufacture trains. It is much less than the countries which use trains.

1. Where people use it

Some patents relevant not only for your market place but more for specific uses in specific countries. For example I have a patent for rescue divers in distress so I decided to file the patent in popular diving destinations countries like Philippines, Thailand and Australia. I know that it isn’t so easy to move the corals…

1. Where you can protect it

There are countries in the world that they judgement system is always pro locals or corrupted. In those countries even if you will have local patent (which the country always encouraged because it is income to the country) the court will not help you. in those countries it is useless to have patent – all the patents idea is to be protected by law and if it isn’t relevant just don’t do it.

1. Where it easy to get one

Sometimes especially if you have US patent there are countries which will give you patent pretty easily. You could consider to file your patent there if you think that you will get patent fast without significance investment.

US patent

Today US is the biggest market in the world in term of purchase power. Most of the biggest companies in the world based in US and having US patent will protect your rights in this big market.

In addition , the USPTO considered to be the most professional patents office in the world and if you have US patent many other countries will automatically give you a patent.

From all the above reasons many people focusing in getting US patent and leaving the rest of the world. I can’t argue with it and it is only another point why to file only in US.

How to file internationally

I met friend of mine after I didn’t see her few years and I asked her what is her job so she told me that she is working in patent attorney office in the international accounting department. So I asked her what kind of job is it if all what she has to do is to get invoices from oversee patent attorneys than double the price and send invoice to clients. She hashed me and told me that even though it is true she isn’t signed on confidentiality that the clients will not know about it.

There isn’t almost any office which can present you in front of patents office in a countries that patent attorney is required. In many other countries only their citizens don’t have to use local attorney and in other countries you have to be local attorney for working with the local patents office.

The result is that almost all the patent attorneys which promise you that they will protect patent internationally actually proxy the work to a third party that in many cases they never met and they found him in the internet.

You can do it yourself and save at least 50% of the money!

It isn’t so difficult to find patent attorneys abroad and by working directly with them you will be able to save a lot of money. In addition you will be able to do a market search and to choose the one which will give you good offer, you will be surprised to find how easy it will be for you.

In addition, you will have much more control on the process by working directly with the local offices because you will be able to get answers from the origin and not from third party.

Working with or without an attorney

Writing good claims should be made by professionals!

If you don’t know how to write claims I highly recommend you to work with an expert which will do it for you. if you will get a patent for bad claims it will not help you and in most of the cases you will never get a patent for bad written claims.

After I told you that I believe that the inventor should control the process and definitely not the attorney.

There are few steps in your way for getting your patent and once you will know them you will know better how to control the process.

Correspondence address

During patent life time the patents office sends the inventor many letters. Some of them are letters that you have to act and answer the patents examiner and some of them are only for updating.

As a patent assignee you can change the correspondence address to your address and by doing it you will save a lot money.

The first reason for the money saving is because if your patent attorney will get the letters for you he control the process and he makes you pay him more than necessary. There are two main ways that the patent attorneys do it.

The first method is by charging you for sending you a letter which you don’t actually need to respond of but they still will charge you for their work.

The second method, and this is one of the most ugliest thing that patent attorneys do, is because they wait with the forwarding to you till you have to pay extra money for response the patents office because they could charge you more when you have to pay the patents office and because they want you to work in time pressure for working only with them and not moving to other attorney.

I know that it is serious blame but if I wasn’t know about it from myself and from friends I was never believe it.

Answering to any office action from the USPTO for example doesn’t cost anything in the first 3 months. After 3 months you start to pay $100 if you answer during the fourth month and it increased in the fifth and sixth month. Patents attorneys prefer to wait to the fourth month before they start to deal with the office action, they don’t want to give you the 6 month period for considering what to do. (my tip, even if you decide to continue to work with patent attorney you should agree with him that he send you the office action in the day that he gets it, in addition you can check every month or a so in the USPTO PAIR system if they sent you something).

By changing the correspondence address to your address you will not save only the cost for non-action letters that you will get but also you will get the correspondence faster and you will be able to ask from few patent attorneys a price proposal for answering the examiner.

Independent inventor – in the examiners eyes

When I spoke with few patents examiners they told me that there is a semi-official direction to try help independent inventors. Sometimes the examiners want to help us and because they understand that you don’t professional they will try to explain you what to do and in many cases they will accept what they told you to do.

From the other hand there are examiners and mainly supervisors (each examiner works under supervisor) which afraid to give patents to independent inventors because they afraid from giving “unprofessional patents”.

I really don’t know what your patent attorney will think but what I do is combination. I work alone and I use attorney for specific tasks.

Prior art search

As I explain there is conflict of interest to do the prior art search with the same examiner that supposed to file the patent for you.

I believe that should be two levels for prior art search. The first level should be made by the inventor and it should be done on Google patents. The inventor should search with all the possible and relevant keywords in order to find all the relevant patents in the field. After finding one relevant patent you can find similar patents by clicking on patents which cited this patent and patents which have been cited in the patent. You will find quickly that it send you too many relevant patents.

Once you did this search you will know much better if actually there isn’t something similar to your invention. It is very important to be honest with yourself because if you will find something that it will not so easy for you to explain the different between your invention and this patent (or patent application) the examiner will definitely will do it for you – don’t waste your money.

Writing

Writing a patent should be done by expert. I don’t say that only patents attorneys can do it but as I said many times it is better not to file a patent than to file unprofessional patent. The problem with the patent attorneys is that because they charge per hour and usually you as the customer try to save money you don’t explain them enough time about your invention and this is the main reason for getting rejections.

In order to write a professional patent the writer has to deeply understand the matter and the background. Since most of the patent attorneys will write a patent in any subject that the customer will ask sometime they will use unprofessional words or they will miss the core point in your invention because they don’t know very good what already exist in today market or they will not understand what exactly the problem that your invention solve. In those cases the patent writing will not be good. I know a patent that filed in 2013 and the examiner rejected because he found almost exact claim from 1894 !!! considering that today technology is better than in 1894 and that the inventor really came up with something that doesn’t exist in the market lead us to the understanding that the patent attorney really failed.

Patent attorneys writing inspection

It is very important that you or someone from your side will be able to read and inspect the writing. Even if your patent attorney write the patent for you if you will not be able to read it you will find if he did good job or not only when it is too late for fixing.

In addition, there are patent attorneys (and it happened also to me) that doing bed job for getting rejections from the examiners because they want to charge you more for writing back. Usually the inventor doesn’t know if the examiner letter is like any standard letter which happens during the patent examination process or because your attorney tricked you.

Such aware mistakes could be

-          sending pictures instead of black-white drawing.

-          Not numbering the pages.

-          Forgetting the abstract

-          Wrong claims numbering

-          Wrong referring in the description to the drawing

And any idea which the patent attorney knows and you not.

Before filing your first patent go to the USPTO website and read carefully their instructions, you will be able to find yourself at least the simple tricks.

Filing

In most of the countries it is very easy to file your patent if you are local citizen. In US it is very easy to file even if you don’t US citizen.

It became more and more popular today to file patents online and filing online isn’t more complicated than to buy flight ticket.

If your attorney wants to charge you too much for the filing you can do it easy buy yourself.

There are countries when you has to have local correspondence address but you don’t have to be local citizen for filing the patent by yourself. The internet will help you to get local post box service and to reduce your costs dramatically.

Non-final office action

This is the most critical letter that you write back to the examiner since you sent him the patent itself. In this level you can change the claims and get the grant. In order to do so you can do few things and I believe that it is very important to do them.

1. It will be good idea to call the examiner and ask him what are the main points that disturb him. Calling the examiner isn’t an official interview but usually learning from the examiner what are the 2-3 main points that if you will change them he will consider to give you the patent it is good idea.
2. After the unofficial call you can ask for official interview. The official interview is always with conference call with the examiner and the supervisor and in this call you can try to explain your position and to understand if the problem is maybe not in the examiner level but in the supervisor level. In the official interview you can use three options:

-          Calling yourself, if you don’t have experience with interviews I don’t think that it will help you more than the unofficial call.

-          Calling together with attorney,  I think that having an attorney in the conference is very important and this is one of the point that the attorney really needed. The attorney will speak their language and he could get the exact points that the examiner would like to change. The attorney will charge you not only for the call time but also for learning the patent but I believe that it worth it.

-          Sending the examiner to interview meeting, one of the pluses if you manage your patent is that you can contact an attorney which have a office few minutes’ walk from the patents office and he can walk their easily. Sending a person to meet the examiner in his office do a big impress on the examiner and the supervisor because it seems very serious and if the attorney located in their area it will not cost you too much, just ask few attorneys to send you price proposal for it.

After the interview you have to answer the non final rejection based on what you have been told be the examiner and if you did it well and you have good invention you have high chance to get the grant letter.

From my experience the attorney which did the interview for you should white the response to the office action so what I do is to agree with the attorney about fixed price for doing the interview and writing the response after it.

Final office action

Theoretically you can response to the office action and getting a patent also after the final office action but from what I saw if you want to get the patent the interview is even more important in this level and I believe that good interview is the only way for getting the patent.

Further steps

Even after final office action you can do RCE and continue the examination process. I think that if you decide to go to RCE and you invest money on RCE process it will be good idea to answer the RCE responses with patent attorney.

Provisional patent

There is an option for filing provisional patent which cost less to file but it don’t give you much more than it and in many situation it gives you even much less.

The provisional patent let you to file a patent and save your priority date to your first filing day. The provisional could be “less professional” because it could be completely replaced by your utility patent and it never published.

The problem starts of when people think that it could be so unprofessional in a way that it doesn’t includes the key points in the utility patent and it is completely mistake. If your provisional doesn’t includes part of your utility you will not get a priority date for this part of the patent but only to the part that it was clear that includes in your provisional.

The provisional don’t give you more time, if you didn’t file a utility in 12 month the provisional isn’t relevant anymore and if you filed the utility within the 12 month you still have to file the pct application also in the same time period.

I think that the provisional is good only for the following two scenarios:

1. You have high level writing and describing skills and you want a grace before paying to professional writer for testing if your invention actually works or if there is potential customer – investor for developing your idea.
2. You think that someone is working on the same invention like you and you want to get time advantage on him so you can file the first version of your professionally written patent as provisional.

In all the other scenarios I really don’t know why people use this option if they know that they have anyway to pay to professional writer and today micro-entity like most of the individual inventors have very low filing price.

Writing points

As I explained there are few parts to every patent and each part have different writing points.

What to include in the abstract

The abstract is the most irrelevant part in your patent. You will probably not get resection on it because it is mainly for the publishing and less for the examiner.

What to include in the description

The description is very important part in your patent and there are few important things that you should write there in order to make your patent better:

1. Prior art citation

Citing prior art against you and explaining why you overcome it will save you problem in the examiner response. Usually if you wrote it well the examiner will not bring it against you and citing between five to ten most relevant prior art will be appreciated by the examiner.

1. Words bank

After the non-final office action you will start to change and narrow your claims. In this time you can’t add external words or external examples. In this level you can use any word from the description in bring it to the claims but if it isn’t appear in your claims you will not be able to use it. this is one of the most important thing that you should do when you are going to write the patent – describe all the possible implementations and applications that you think that maybe will be relevant to your claims. The examiner will probably bring prior art against you and if you will be able to change the claims using the description words you will have higher chance to get a patent.

1. Block competitors

Your description isn’t protect you – only your claims but your description blocks your competitors from getting similar patent. When the examiner do a prior art search he doesn’t search in prior patents’ claims but mainly in the description. If you will write broad description which cover also future possibilities for using your patent or even future applications that today doesn’t seems reasonable your competitor will not be able to get a patent for it. the examiner will not examine it, he will refer only to the claims so it isn’t reduce your chance for getting the patent.

In the other hand you should consider that you will want to file it separately in the future as independent patent and if it appears in your patent you will not be able to do so.

1. Terms explanation

Any patent includes standard words and the way that you think about them it isn’t the way that the examiner thinks about them. If you use general words or terms you believe that it includes all their interpretations and options also but the examiner will probably think different.

For example if you have a patent for computers memory you will probably want to include all the other computerized devices like smartphones tablets and cameras but if you will not explain it in your patent you will not get it.

This is the main reason for explaining any term or other word which influence your patent. For example if you have a patent for engine which will probably will improve cars and you refer all the examples to car but in order to be really protected you should add the following sentence:

” It is expected that during the life of a patent maturing from this application many relevant cars or engine powered vehicles or other engine driven application will be developed and the scope of the term of the invention is intended to include all such new technologies a priori.”

In addition you will want the following paragraph:

The term “car” and his conjugates mean “car”, “track”, “train”, “ship”, “airplane”, “motorcycle”, “space shuttle”, “cars toys”, “bicycle” or any engine power device.

It is very important to explain words like “statistically” or “permanent” because different people can explain them in different way.

1. Embodiments

If you can use your invention in more than one scenario in is very important to mention all of them in your patent. It will help you in all what i described above.

1. Working example

One of the criteria’s for getting a patent is that it is applicable with today’s technology. If your invention isn’t trivial for implementation but you already did it and it works it will be very useful for explaining how you did it. the examiner will understand immodestly that it applicable and it will save you problems in the non-final response.

What to includes in the drawings

Any patent should present in the drawings how the idea works in drawings and not only in text. The drawings have to be clear and to be associated with text in the description which explains each part of the drawing and how it is refers to the invention.

The drawings has to be black/white colored and they have to be as simple as possible. It is very important that every time that you refer to a part in your drawing you will use the same numbering method. For example if you have a valve in your patent and in figure A you call this valve 110 so in figure b you will call it also 110 or even better 210 and so on. It will make your life easier and so also the examiner life.

It is very important to do a flaw chart if you have method patent.

What to includes in the claims

The claims are the most important part of you patent. If the claims will not be good written your patent will worth nothing.

There are two type of claims independence and dependence.

The independent claims are the most sensitive part of you patent. The independence claims explains your exact invention and each word could change your all protection. In case that it is impossible to understand one embodiment of your invention from your independent claims (associated with depended claims) you will not be protected for it. in case that your claim will be too broad you will not get a patent. So it is very important to invest all the needed time in writing the most accurate claims.

In order to be sure that your claims writer (it could be an attorney or advisor) know exactly what to includes in the claims you will have to go through the following process (it is very important because if you don’t speak “patentish” which it isn’t English but English for patents you will not have the tools to review it):

1. Explain the writer in very detailed explanation the following things:
   1. Which problem are you going to solve
   2. What there is today in the market
   3. Why the current solutions isn’t enough for solving this problem
   4. What new in your technological approach compared to today’s technologies
   5. What is the key point in your solution that if it will be taken from your invention your invention will not have any uniqueness
   6. Describe all the ways that your invention could be used. Try to think about other problems even in other industries that your invention could be used for.

You will find that it takes a lot of time to explain it your writer. At this point you don’t want to be in pay-per-hour agreement….

After you teach him (and you should tell him from the beginning that are you going it) ask him the following question with ? in their end. You will find that if it was a test he was probably failed.

Explain again what he didn’t cached and let him write the claims.

After he writing the claims try to read them and see if at least for yourself it answers the questions.

The independent claims should be broad and the depended claims should explain the words or the situations in the independence claims.

Because the independence claims should be not specific you have to be aware that the writer don’t write numbers in those claims. The exact number should be only in the dependence claims. Instead of using number use general explanation like if your invention needs 2 seconds for doing something instead of using “which takes 2 seconds” use “which take predetermined time” and then use in the dependence claims “wherein time could be between 0.1 to 100 seconds”, you don’t want that someone will do the same like your patent but with 2.1 seconds… if you will use exact time in your independence claims that is exactly what that could happened.

The dependence claims mission is for explaining all the options and embodiments of the independence claims.

It is very important to write all the claims also in the description for future use.

What to includes in the abstract

The abstract don’t have much patent value it is mainly for short description for people who don’t want to read the full patent and still want to know what is this patent about. Don’t invest too much time on it.

Device or method / one  patent or few patents

Almost any invention affect two things in the field:

1. Device  – the actual physical device that people using for solve a problem
2. Method – the way that people acting when the have to solve the problem

Both of this invention could be patented, and it is highly recommended to file both of them because if you will have both of them it will be more difficult to copy you. in addition there are examiners which prefer to grant method and not device and vice versa.

The way for filing both of them could be in twp different patents or in one patent. Here comes the second question if I can use the same invention in a bit different way for different problem should I file another patent or it is better to file one patent?

I have simple answer which will save you money: always file one patent! Even if your patent will includes two or three different patents with very week connection you should file one patent from the following reasons:

1. It saves money! Each patent cost money for filing and for maintenance and sometimes you have to pay maintained before you even get a patent. If all your invention will be in one application you will have to pay just for one…
2. It doesn’t affect your patent protection. If the examiner thinks that you have more than one patent in your patent application he/she will ask you to select one patent for examination. At this time you will probably know much better about which part of the patent is more relevant to the short term and then you will do much wiser selection.
3. After your selection and till you will have granted patent you can file the same patent and to keep the original priority date for the “other patent” in your patent. It is relevant also if your patent examiner ask you to choose between device and methods as well. You will still have all the patent’s rights but with less rush and known protection.
4. In some cases you will decide not to continue with the patent because you will see that there isn’t real need in the market for your invention. In this case only one patent will go to the garbage.

As you can see there isn’t real reason to file more than one patent at the beginning except of your patent attorney many reasons… you should remember why your patent attorney decided to be in this job, it isn’t pro bono job.

Working on hour base vs. task base

Usually patent attorneys prefer to work on hour based charge. You have no control on their actual working hours and if you will look at the agreement you will find that it always for their side, for example they will calculate you the time that they worked as 30 min. minimum even if they just sent you a fax.

From the other side the attorneys really don’t know how many time they will have to invest in your patent so they don’t want to take the risk for giving you low quotation and then to invest many hours.

The working model should be mix of those two attitudes. I believe (and I am working with many international attorneys in this method) that all the tasks after filing should be treated as task based work. Every time that I have a need for sending response to not matter what examiner letter the attorney send me a quotation and then I decide if I want to pay it or not. You can negotiate the price, you can look for another quotation but anyway you are in a world of currency, you know that you will not have surprises.

The question starts before the filling, and there isn’t simple answer.

First, as I wrote before, I believe that the prior art search should not be made by the man who is going to write the patent. So this task could be quoted separately and easily. If someone knows how to do a good search it doesn’t take too much time.

Second, I believe that the start of the process, meaning the time that you have to explain the invention to the examiner till the “test” that you do him should be paid on hours based because there are quit a complicated which takes many hours to explain them well.

This point also light the fact that there are many attorneys which willing to file any patent in any subject. It is a big mistake to do a patent with someone that never filed granted patent in your domain. Considering the fact that you want him to pass your test successfully he should have good background and understanding in order to deal with your invention. If you have invention to new medicine it could be huge mistake to file your patent with attorney with no experience but not only in medicine but also with every other subject. I believe that each attorney should know in which patent’s types he should work and stay with them. It is exactly like if business lawyer will say that he is also doing litigation and family laws. The attorneys must be divided to professionalism.

After you explained the patent you should get detailed offer for fix price for the next level which is writing claims than writing the rest of the patent including drawings and filing.

This offer “after explanation writing” should be prepared also before the explanation (but not to includes the explanation) in order that you will be able to do a comparison between attorneys before starting the explanation.

Summary

I believe that today’s client-attorney isn’t functioning well because of lack of information from the client side and because it is known that the attorney can’t guarantee success. This relationship has to be changed in order to make the whole process more customer friendly and if the clients will have more knowledge and data about the process he will be more equal to the attorney and will be able to have better position in any decision making or negotiation.

My biggest goal is to let more individuals with great ideas and less money to be able to file patents and to protect their ideas.