FirstPatentTM – Information You Need to Succeed in the Patent WorldMany inventors go to a patent attorney without educating themselves about the patent process or their options. FirstPatentTM is offered by Neustel Law Offices, LTD to provide the information needed to make intelligent decisions – and avoid making costly mistakes.
It is important to first understand that a U.S. patent protects the patent owner from others (1) making, (2) using, (3) offering for sale, (4) selling and/or (5) importing into the United States a technology that falls within the scope of the patent claims. Patent “claims” are like a land description in that they describe the meets and bounds of the rights granted to the patent owner.
Narrow patent protection is easy to avoid infringing upon similar to a small piece of land (e.g. 100 square feet) is easy to avoid trespassing upon. Broad patent protection is often times not easy to avoid infringing upon similar to a large piece of land (100 square miles) is not easy to avoid trespassing upon. While most patent owners would like to get extremely broad patent protection, there are a number of reasons why this typically does not happen (e.g. prior art). We tell clients that it is often times best to get the “green valley” patent protection where you protect the preferred embodiments of your technology that competitors want to copy – a competitor may be able to compete with an inferior embodiment but that is less attractive for them obviously.
There are two main types of patent applications filed and there are many misconceptions between the two. Many inventors have heard about U.S. provisional patent applications which provide “patent pending” for one-year from the filing date and then automatically expire after one-year. Both types of patent applications typically include (1) a detailed written description of the invention and (2) drawings illustrating the invention. You will want to make sure that all embodiments of your invention are fully disclosed in the patent application also.
If you file a U.S. provisional application first, you will need to file a U.S. non-provisional patent application before the provisional application expires in one-year if you want to claim priority to the filing date of the provisional patent application. However, you can only claim priority to the filing date of the provisional patent application if you have fully disclosed everything in the provisional application.
For example, if your invention has Elements A, B, C and D, but your provisional application only fully discloses Elements A, B and D, the failure to fully disclose Element C may result in the inability to claim priority to the provisional application. It is therefore extremely important to fully disclose your invention in the provisional application which usually requires a U.S. patent attorney to prepare the provisional application.
Self-drafted provisional applications are fine for inventors who can’t afford a patent attorney, but are less attractive if you have the budget to hire a patent attorney and particularly less attractive if you have a valuable technology. There are software tools to help you self-draft if you fully appreciate the risks involved and Michael Neustel (owner of Neustel Law Offices, LTD) is the creator of PatentWizard (www.PatentWizard.com) which assists inventors in preparing/filing a self-drafted provisional application. Make sure you educate yourself prior to using a tool or any customizable legal form.
If you decide to self-drafted, it is strongly recommended that you have professional patent drawings prepared by a competent draftsperson familiar with U.S. patent drawing requirements because patent drawings can be used to help fully disclose an invention. In the example above, maybe your written disclosure is weak regarding Element C but the patent drawings fully disclose Element C to one of ordinary skill in the art, you may have saved your ability to keep the earlier filing date of the provisional application.