As discussed in a prior post, services, such as Invent Help or LegalZoom, may provide an inventor with a supposedly lower-cost way to access the patent system, using these services when patenting can be full of pitfalls for the unwary. Another pitfall of using these services to file a patent application, or filing a patent application pro se, is that an improperly written patent application can be almost as bad as never having filed an application in the first place. While there are many factors that can contribute to a patent application being considered “improperly written,” failure to describe the invention in sufficient detail, failure to claim the invention properly, and over-describing prior art are just a few.

Failure to Describe Invention in Sufficient Detail

If a provisional application does not describe the invention and how to make/use the invention in sufficient detail, and more details are added to the non-provisional application that more fully describe the invention, it is possible that the non-provisional application may not get the benefit of the provisional application priority filing date. This can be a significant pitfall because the main benefit of filing a provisional application is getting a filing date for priority purposes. If the inventor loses the benefit of that early filing date, then the inventor might as well not have filed a provisional application at all.

This can also be a problem with a do-it-yourself non-provisional patent application. If the invention is only described at a very high level in the patent application, the full scope of the invention may not be contained in the application. Accordingly, when the U.S. Patent and Trademark Office examines the application, the details that might otherwise help to distinguish the invention from the prior art may not be contained in the application, and no new matter can be added without filing an entirely new application. Thus, lack of sufficient detail could be fatal to the potential success of the patent application. And even if not fatal, the applicant may have to file an additional application in order to include the details relevant to patentability, and this may result in losing the benefit of the non-provisional application filing date as well as the priority filing date of any provisional application.

Failure to Claim Invention Properly

Another area where pitfalls arise concerns the claims contained in a non-provisional application. Patent claims legally define what is, and is not, the invention (i.e., the metes and bounds of the invention). The U.S. Patent and Trademark Office will examine the claims of the patent application to define the scope of protection for an invention. It can be unwise for an applicant to draft its own claims when not trained to do so. Further, while some applicants may be able to draft claims and obtain a patent, they may not always draft claims that result in a valid patent and with a worthwhile scope of protection. That result may be worse than having no patent at all.

Applicants should be encouraged to engage a patent attorney/agent if only just to prepare the claims associated with a non-provisional patent application and later negotiate the claim scope with the patent examiner. Patent attorneys/agents are trained to draft claims and they understand the practices and procedures of the U.S. Patent and Trademark Office. Having a good set of claims in an issued patent is what can make the issued patent valuable, as infringement is determined based on whether all limitations of the patent claims are met, not just what is disclosed in the patent application. If the claims are too narrow, then the claims may be easy for a potential infringer to design around. Conversely, if the claims that issue are too broad, it may be possible for an accused infringer to seek to invalidate the claims either through the courts or through procedures available in the U.S. Patent and Trademark Office (i.e., reexamination, post-grant review (PGR) and inter partes review (IPR)).

Over-Describing Prior Art

Regardless whether someone is filing a provisional or a non-provisional patent application, a common tendency for do-it-yourself patent applicants is to describe the prior art in a lot of detail, particularly including positive descriptive comments about the prior art. These types of comments can often backfire when the U.S. Patent and Trademark Office later examines the non-provisional application because the applicant’s own admissions about the prior art may provide the examiner with the support that he/she needs to reject the claims, even without the examiner performing a separate search.

A better approach is to keep the prior art (or background) section of the patent application to a minimum, while disclosing any relevant references through an Information Disclosure Statement. A patent application should merely indicate what is lacking in the prior art and frame the discussion in the context of what the invention adds or improves upon when compared to the prior art. This may make it less likely that an examiner will issue a rejection, particularly an obviousness rejection, using statements from an inventor’s own patent application.

Conclusion

When considering whether to engage in do-it-yourself patent protection, an analogy may be made to a commercial from some time ago where a man is sitting at the table with a butter knife and the surgeon on the phone is telling him how to perform the surgery. The man asks: “Shouldn’t you be doing this?” A wise question for sure! Preparing a patent application on your own is a lot like doing surgery on yourself. You are going to make mistakes, it is not a good idea and only in the most extreme of circumstances should it be attempted.

About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

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