Is it possible for an inventor to prepare and file his or her own patent application and save thousands of dollars? Because I am a seasoned patent attorney, it is easy for me to write patent applications and shephard them through the patent office. But I also have an experienced team behind me to take care of all the mundane and complicated details, like putting the application in the proper format and electronically filing the application.
I wanted to see what it was like for someone to go through the process themselves, without using a patent firm. Hopefully, this could help American’s begin to invent. So I am trying an experiment. I came up with my own invention and decided that I would explain how I am preparing it, then experience what it is like to file the application from my own home.
You can follow my posts as I prepare and file my own application and comment on them if you would like. If you have an inkling to file your own patent application, hopefully this will provide you some guidance.
To show how an inexpensive application can be lodged with the patent office, I came up with my own invention. I came up with an idea for “Facial Exercise Equipment and Methods”. I got this from watching a video my wife bought on how to exercise your face to get rid of your wrinkles. It will never make money, but it’s a fun way to show how to patent your own idea. After I file the application, I will post a copy on this site and update its progress through the patent office.
Step 1. Decide whether to file as a provisional or a non-provisional.
You can file your application either as a provisional application or a non-provisional application. Provisional applications are not examined but just hold your filing date for a year. They are nice because you don’t need any special formatting or signed documents while still obtaining patent pending status. For example, with a non-provisional the paragraphs need to be numbered and you need professional drawings. You will also need a signed declaration and what is called an Application Data Sheet. With a provisional, you can hand sketch your drawings and format the document however you want. Before the year is up, however, you need to file the provisional application as a non-provisional and claim priority from the provisional. The provisional is automatically abandoned after a year, so if you do not convert and claim priority, you will lose your priority date. Also, with both provisional and non-provisional applications you must describe your idea well enough so that someone else who reads your application can make it.
For my “Facial Exercise Equipment and Methods” example, I filed mine as a provisional because I was too cheap to pay for formal drawings and pay the large filing fee. Also, I am going to make some changes during the next year that I will want to add before I convert. The downside, of course, is that I add a year’s worth of time before my application gets examined. Still, I have a patent pending with a minimal amount of work. And, it is written in the proper format so that in a year, all I will need to do is have formal drawings prepared and fill out the formal filing papers.
2. Cover page.
This is optional, but a nice place to keep track of all the information the patent office will want. I put whether it is a provisional or non-provisional, the title, inventor name, address and citizenship and that I am a small entity (fewer than 500 employees) so my fees get lopped in half.
3. Cross references section.
If your application is a non-provisional application and claims priority from a provisional application, you must refer to the provisional application by the application number and filing date, and make a formal claim of priority. This is critical. Also, remember that the non-provisional application must be filed within one year of the provisional.
Everything in this section can and will be used against you in a court of law. So keep your mouth shut. Keep it to a single paragraph and don’t admit anything. Here is my verbiage:
People have long tried to combat the effects of aging, especially in trying to hide lines and wrinkles in the face. The use of Botox is one common way to alter a person’s appearance, but the use of such products will inevitably lead to litigation as the medical profession learns of the harmful effects of injecting foreign substances into human tissue.
(Note that I didn’t mention the new craze to perform exercises on facial muscles using fingers. I can give that to the examiner in an Information Disclosure Statement).
This is just a summary of your claims put into normal English. Do this section after you draft your claims.
6. Brief Description of the Drawings.
The patent office has a rule stating that every element you claim must be shown in a drawing. For physical devices, a good set of CAD drawings works great because you can show things much easier than you can explain them. For a system and processes, block diagrams and flow charts will work fine. The hard part is that the patent office has a strict set of rules for the drawing format. Unless you have simple diagrams or flow charts, you will need a patent draftsman. These are easy to find with a quick Internet search. Just get several quotes and use the best one.
The good news is that provisional applications do not need formatted drawings (or even claims) so you don’t need to worry about this for a year. See my example for how to hand sketch your own.
7. Detailed Description of the Invention.
This section has two parts. The first is a brain dump where you describe your invention at a high level, then describe every way you think you could possibly build it. Don’t worry if it is not in a drawing or you haven’t built it. This is merely a brain dump to prevent anyone else from trying to improve on your idea and getting their own patent, and to use this disclosure in later applications if you need to catch an infringer who is skirting your claims. Also, be sure to explain all of the advantages your invention provides.
The second part is where you describe each embodiment that you show in a drawing. As you do this, refer to each element or component with a separate call out number. Leave spare numbers in case you accidentally forget some. Each time you refer to the same part, also include the reference number.
This is the hardest part and where patent attorneys make their money. Your patent is only as good as the claims. First, you get three independent and 17 dependent claims with the filing fee of a non-provisional. Extra claims cost more. I would try to limit the number to twenty. You can always add others later. Also, you will need to line number your claims if filing as a non-provisional.
Here are some basic guidelines. An independent claim stands alone while a dependent claim depends from an independent claim. The first line of the claim tells whether you are claiming a device, a system or a method. For my first claim I am claiming a facial exercise device. End the first line with the word “comprising.” This is a legal term and is very important.
Now, add a new paragraph for each element of the device and include as few elements as possible to be different than the prior art. Remember, an infringer must have EVERY limitation in your claim, so the more elements in the claim, the easier it is to design around your claim. Finally, the first time you introduce an element, use the article”a”. For all subsequent uses, use the article “the”. My first claim has only three elements. I will use my dependent claims to flesh out what I mean by each element.
1. A facial exercise device, comprising:
a first fastening arrangement that is configured to be attached to a first portion of a person’s head, wherein the first fastening arrangement has at least one fastening point;
a second fastening arrangement that is configured to be attached to a second portion of the person’s head, wherein the second fastening arrangement has at least one fastening point;
at least one dimensionally changeable member that is configured to be attached to the attachment points of the first and second attachment arrangements so as to provide resistance to the attempted expansion and/or contraction of a facial muscle located between the two fastening points.
For example, my dimensionally changeable member can resist tension or compression. So, I added two dependent claims to state this. A further claim can state that the tension member is an elastic band.
3. A device as in claim 1, wherein the dimensionally changeable member comprises a tension member.
4. A device as in claim 3, wherein the tension member comprises an elastic band.
5. A device as in claim 1, wherein the dimensionally changeable member comprises a compression member.
I also want a method claim to capture the use of the exercise equipment. These are usually easier to get but harder to enforce since you don’t want to end up suing the end user.
6. A method for performing facial exercises, comprising:
attaching a first fastening arrangement to a first portion of a person’s head, wherein the first fastening arrangement has at least one fastening point;
attaching a second fastening arrangement to a second portion of the person’s head, wherein the second fastening arrangement has at least one fastening point;
attaching at least one dimensionally changeable member to the attachment points of the first and second attachment arrangements so as to provide resistance to the attempted expansion and/or contraction of a facial muscle located between the two fastening points.
Just copy the first paragraph of your summary section. Keep it less than 250 words.
You can file by regular mail or electronically, but electronically is preferred. In fact, the PTO just added a substantial fee if you file by paper. The PTO web site has instructions, which are not that easy to follow. Later, I will provide a brief summary of the steps to electronically file your provisional.
Here is a copy of my filed application.
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Comments provided are offered for informational purposes only and should not be construed as legal advice and do not create an attorney-client relationship. You should consult with an attorney for individual advice regarding your individual situation.
The postings on this site are my own and do not necessarily represent Kilpatrick Townsend & Stockson LLp’s position, strategies or opinions.