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Q What is the first step in protecting my invention?
A Write down an invention disclosure containing, at
a minimum, a detailed explanation of your invention
that identifies the problem it solves and highlights
the aspect of the solution believed to be novel. Include
examples, drawings, diagrams and other illustrations,
and date and sign your disclosure. After you've got
it all down on paper, you can send your disclosure to
the U.S. Patent Office to be filed under the Invention
Disclosure Program (see www.uspto.gov).
The PTO will keep your disclosure for two years and
then destroy it, unless it was referenced in a patent
application filed within those two years. Alternatively,
you can ask two people to read your disclosure, date
and sign it, and keep it in a safe place. Remember that
the invention disclosure merely establishes the date
of invention for what is disclosed, and only what is
disclosed. It does not afford you any protection, nor
does it excuse you from diligently working towards actual
reduction to practice of your invention and/or timely
filing a patent application (i.e., constructive reduction
to practice).
Q Should I file a provisional patent application
myself before asking a patent attorney to file a non-provisional
patent application?
A Provisional patent applications have their pros and
cons. A provisional application does not have to comply
with the strict format rules of the PTO and it does
not have to have any claims - two factors that make
it seemingly easy to file pro se (i.e., by oneself,
without the help of a patent agent or attorney). Herein,
however, lies its danger. Inventors frequently do not
realize that a provisional application must comply with
§112 USC 35 requiring that the application be "enabling".
If your provisional application does not sufficiently
disclose how to make and practice your invention to
satisfy the requirements of this section, your application
will not suffice to support a later utility patent application.
Another point to bear in mind is that the provisional
application must provide support for the claims that
will appear in the later utility ("regular")
patent application. That is to say, all of the elements
or limitations of these claims must be described in
the provisional application if the utility application
is to obtain the benefit of the filing date of the provisional
application.
Q Can I write a patent application myself?
A Yes you can, but you shouldn't. While there are some
excellent books, such as David Pressman's Patent It
Yourself, that can teach you the basics and guide you
through the process, experience shows that pro se patents
are often unnecessarily narrow and of limited or questionable
value. If you are serious about commercializing and
enforcing your patent, it is likely to be carefully
scrutinized by counsel for competitors or potential
licensees, and may well end-up in court where it is
going to be attacked on all possible grounds. To survive
this level of scrutiny, it had better be written by
an experienced patent practitioner who is not only familiar
with patent prosecution but, to some extent, with patent
litigation as well. Remember the old adage: He who represents
himself has a fool for a client.
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