This is a portion of an interview with patent attorney David Pressman, the author of the world’s best-selling guide, “Patent it Yourself,” as well as the co-author of other Nolo books, including, “Patent Pending in 24 Hours,” “The Inventor’s Notebook,” “How to Make Patent Drawings,” and “Nolo’s Patent’s for Beginners.” For more information on the patent application filing process, review these articles.
NOLO: Since Thomas Alva Edison’s day the patent system has become more complicated and more complex, yet you still maintain that a diligent inventor can prepare his or her own patent application. Tell us why you believe that inventors can prepare their own applications.
DAVID PRESSMAN: Yes, because the inventing process is still the same, and it’s actually much harder than the patent application filing and preparation process when you look at all the work involved. To get a patent you actually have to do some new things which inventors are not familiar with, but basically a patent application is just a detailed explanation of how to make and use the invention in conjunction with drawings, and then there’s a few forms and rules you have to follow, but I lay them all out in a checklist, and I think anybody who is smart enough to invent, to create something new, should be easily able to follow the instructions. You do have to be able to write a detailed description of your invention in conjunction with drawings, and frankly, not everybody can do that, but if you can do that, I think the rest is duck soup.
NOLO: There are many things that an inventor needs to do when preparing a patent application, and you discuss them in detail in Patent it Yourself. But if you had to discuss one indispensable thing to do before filing a patent application, what would it be?
DAVID PRESSMAN: There’s two things you have to do to avoid a lot of needless work with your invention, and that is to make a search before you file, and to evaluate it for commercial potential before you file, because if it’s old, and there is a reference showing the same thing, all your work will be wasted, and also if it has one or more serious drawbacks and you didn’t think about these, then your work will also be wasted.
NOLO: There’s often one person who stands between an inventor and a patent, and that’s a patent examiner at the USPTO. You once worked as a patent examiner… what are patent examiners looking for when they examine a patent application?
DAVID PRESSMAN: Yes, I was a patent examiner for two years, and I can tell you the first thing an examiner needs to do is to understand the invention, and make sure that the application tells how to make and use the invention, and if the application passes that hurdle, the examiner needs to be sure that the claims are clearly written and directed to the invention that’s described in the patent specification, and lastly, when those formalities are over with, the examiner has to get into the meat of the matter, and make sure that the invention claimed is novel and unobvious, and to do that, the inventor makes a search of all the prior art, and pulls out everything that is close, and then compares the claims with this prior art to make sure or to determine if the claims recite something novel and unobvious over the prior art.