Patent It Yourself

Your Legal Companion

• You Don’t Have to Use a Patent Attorney
• A Layperson Can Do a Quality Job
• Using an Attorney
• Should You Do It Yourself
• New Material in the Fifteenth Edition
• How to Use Patent It Yourself

1. Introduction to Patents and Other Intellectual Property

• What Is a Patent and Who Can Apply for It
• The Three Types of Patents
• The Novelty and Unobviousness Requirement
• How Long Do Patent Rights Last
• Patent Filing Deadlines
• Patent Fees
• The Scope of the Patent
• How Patent Rights Can Be Lost
• What Rights a Patent Grants and the Prior-Art Reference Value of a Patent
• What Can’t Be Patented
• Some Common Patent Misconceptions
• How Intellectual Property Law Provides “Offensive Rights” (and Not Protection) to Inventors
• Alternative and Supplementary Offensive Rights
• Intellectual Property—The Big Picture
• Trademarks
• Copyright
• Trade Secrets
• Unfair Competition
• Acquisition of Offensive Rights in Intellectual Property—Summary Chart
• Summary of Legal Remedies for Misappropriation of Various Types of Intellectual Property
• Invention Exploitation Flowchart
• Summary

2. The Science and Magic of Inventing

• What I Mean by “Invention”
• Inventing by Problem Recognition and Solution
• Inventing by Magic (Accident and Flash of Genius)
• Making Ramifications and Improvements of Your Invention
• Solving Creativity Problems
• Contact Other Inventors
• Beware of the Novice Inventor’s “PGL Syndrome”
• Don’t Bury Your Invention
• Summary

3. Documentation and the PPA

• Introduction
• Documentation Is Vital to the Invention Process
• Documentation Is Vital to Prove Inventorship
• Trade Secret Considerations
• Record Conception and the Building and Testing of Your Invention
• How to Record Your Invention
• Another Way to Record Conception or Building and Testing— The Invention Disclosure
• The Provisional Patent Application— A Substitute for Building and Testing, With Some Disadvantages
• Don’t Sit on Your Invention After Documenting It
• Don’t Use a “Post Office Patent” to Document Your Invention
• Summary

4. Will Your Invention Sell

• Why Evaluate Your Invention for Salability
• Start Small but Ultimately Do It Completely
• You Can’t Be 100% Sure of Any Invention’s Commercial Prospects
• Take Time to Do a Commercial Feasibility Evaluation
• Check Your Marketability Conclusions Using the Techniques of Consultation and Research
• Now’s the Time to Build and Test It (If Possible)
• The Next Step
• Summary

5. Is It Patentable

• Patentability Compared to Commercial Viability
• Legal Requirements for a Utility Patent
• Requirement #1: The Statutory Classes
• Requirement #2: Utility
• Requirement #3: Novelty
• Requirement #4: Unobviousness
• The Patentability Flowchart
• Don’t Make Assumptions About the Law
• Summary

6. Search and You May Find

• Why Make a Patentability Search
• When Not to Search
• The Two Ways to Make a Patentability Search
• The Quality of a Patent Search Can Vary
• How to Hire a Patent Professional
• How to Prepare Your Searcher
• Analyzing the Search Report
• Computer Searching
• Do-It-Yourself Searching
• The Scope of Patent Coverage
• Patent and Trademark Depository Libraries
• Problems Searching Software and Business Inventions
• Searches on the Internet
• MicroPatent Patent Searches on the Internet
• NPL (Non-Patent Literature) Searches
• Summary

7. What Should I Do Next

• Drop It If You Don’t See Commercial Potential (Chart Route 10-12-14-X)
• Try to Sell Invention to Manufacturer Without “Regular” Patent Application (Chart Route 10-12-14-16-18-B)
• File an Application and Sell It to or License a Manufacturer If You See Commercial Potential and Patentability (Chart Route 14-16-18-20-22-A)
• If You Have Commercial Potential Without Patentability, License or Sell Your Invention to a Manufacturer Without Filing (Chart Route 16-24-26-28-30-B)
• Make and Sell Your Invention Yourself Without a Utility Patent Application (Chart Route 16-30-C)
• Manufacture and Distribute Your Invention Yourself, Keeping It as a Trade Secret (Chart Route 20-32-34-D)
• File Patent Application and Manufacture and Distribute Your Invention Yourself (Trade-Secretable Invention) (Chart Route 20-32-34-36-E)
• File Patent Application and Manufacture and Distribute Invention Yourself (Non-Trade-Secretable Invention) (Chart Route 20-32-38-36-E)
• Test Market Before Filing (Chart Route 20-32-38-40-F)
• Summary

8. How to Draft the Specification and Initial Drawings

• Lay Inventors Can Do It!
• What’s Contained in a Patent Application
• What Happens When Your Application Is Received by the PTO
• Do Preliminary Work Before Preparing Your Patent Application
• Flowchart
• Write Your Patent Specification to Comply With the Full Disclosure Rules
• Software, Computer-Related Inventions, and Business Methods
• First Prepare Sketches and Name Parts
• Drafting the Specification
• Review Your Specification and Abstract Carefully
• Checklist for Your Patent Application Draft
• Specification of Sample Patent Application
• Summary

9. Now for the Legalese—The Claims

• What Are Claims
• The Law Regarding Claims
• Some Sample Claims
• Common Misconceptions Regarding Claims
• One Claim Should Be as Broad as Possible
• The Effect of Prior Art on Your Claim
• Technical Requirements of Claims
• Drafting Your Main (Independent) Claim
• Other Techniques in Claim Writing
• Drafting Dependent Claims
• Drafting Additional Sets of Claims
• Checklist for Drafting Claims
• Summary

10. Finaling and Mailing Your Application

• The Drawing Choices
• PTO Rules for Drawings
• Doing Your Own Drawings
• Consider Using a Professional Patent Draftsperson
• Finaling Your Specification—For Paper Filing
• Finaling Your Specification for EFS-WebFiling
• File the Information Disclosure Statement Within Three Months
• Assignments
• Petitions to Make Special
• Filing a Design Patent Application
• Summary

11. How to Market Your Invention

• Perseverance and Patience Are Essential
• Overview of Alternative Ways to Profit From Your Invention
• Be Ready to Demonstrate a Working Model of Your Invention to Potential Customers
• Finding Prospective Manufacturers/Distributors
• The “NIH” Syndrome
• The Waiver and Precautions in Signing It
• The Best Way to Present Your Invention to a Manufacturer
• Presenting Your Invention by Correspondence
• Making an Agreement to Sell Your Invention
• Manufacturing and/or Distributing the Invention Yourself
• Summary

12. Going Abroad

• Introduction 320
• The Paris Convention and the One-Year Foreign Filing Rule
• Other Priority Treaties Similar to the Paris Convention
• European Patent Office/Europäisches Patentamt/Office Européen des Brevets (EPO)
• The Patent Cooperation Treaty (PCT)
• Non-Convention Countries
• Never Wait Until the End of Any Filing Period
• The Early Foreign Filing License or Mandatory Six-Month Delay
• Don’t File Abroad Unless Your Invention Has Very Good Prospects in Another Country
• The Patent Laws of Other Countries Are Different
• The Ways to File Abroad
• Rescind Any Nonpublication Request
• Resources to Assist in Foreign Filing
• Summary

13. Getting the PTO to Deliver

• What Happens After Your Patent Application Is Filed
• General Considerations During Patent Prosecution
• A Sample Office Action
• What to Do When You Receive an Office Action
• Format for Amending the Specification and Claims
• Drafting the Remarks
• Drawing Amendments
• Typing and Filing the Amendment
• If Your Application Is Allowable
• If Your First Amendment Doesn’t Result in Allowance
• Interferences
• Statutory Invention Registration (SIR)
• If Your Application Claims More Than One Invention
• The Public May Cite Additional Prior Art Against Your Published Patent Application
• NASA Declarations
• Design Patent Application Prosecution
• What to Do If You Miss or Want to Extend a PTO Deadline
• Summary

14. Your Application Can Have Children

• Available Supplemental Cases
• Continuation Applications
• Request for Continued Examination (RCE)
• Divisional Applications
• Continuation-in-Part and Independent Applications
• Reissue Applications
• Statutory Invention Registration (SIR) and Defensive Publications
• Substitute Applications
• Double Patenting and Terminal Disclaimers
• Summary

15. After Your Patent Issues: Use, Maintenance, and Infringement

• Issue Notification
• Press Release
• Check Your Patent for Errors
• Patent Number Marking
• Advertising Your Patent for Sale
• What Rights Does Your Patent Give You
• Be Wary of Offers to Provide Information About Your Patent
• Maintenance Fees
• Legal Options If You Discover an Infringement of Your Patent
• What to Do About Patent Infringement
• Product Clearance (Can I Legally Copy or Make That )
• Citing Prior Art Against Patent Applications and Patents
• The Court of Appeals for the Federal Circuit (CAFC)
• Using the Reexamination Process to Reduce the Expense of Patent Infringement Suits
• Jury Trials
• Arbitration
• How Patent Rights Can Be Forfeited
• Your Patent Is Subject to Interference for One Year
• Tax Deductions and Income
• Patent Litigation Financing
• Summary

16. Ownership, Assignment, and Licensing of Inventions

• The Property Nature of Patents
• Who Can Apply for a Patent
• Joint Owners’ Agreement
• Special Issues Faced by the Employed Inventor
• Assignment of Invention and Patent Rights
• Record Your Assignment With the PTO
• Licensing of Inventions—An Overview
• Universal License Agreement
• How Much Should You Get for Your Invention
• Summary
• Desiderata for PTO

Appendixes

1. Abbreviations Used in Patent It Yourself

2. Resources: Government Publications, Patent Websites, and Books of Use and Interest

• Government Publications
• Patent Websites
• Books of Use and Interest
• Books Relating to Self-Improvement

3. Glossaries