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How to Get a Patent

When asked the process for getting a patent for one’s self, I feel a little like a surgeon being asked how to take out one’s own appendix. “Hey, I have handled a knife every day of my life since the age of five, I think I can take out my own appendix.” Can you do it? Sure. Is there information online that can walk you through the entire process? You bet. The problem with both appendixes and patents is that you will not know if there was a problem until after it is too late.

A patent application involves several parts: the drawings, the specification (description) and the claims. I believe with a little training, most lay people could come up with something approximating drawings and a specification. Although there are issues like “best mode” and “enablement” that you have to address, these types of issues are explained extensively all over the Internet. Now the drawings and specification may still end up substantially limiting the scope of the patent, or invalidating the patent altogether. I am just saying that the best layperson, reading everything they could on the topic, could probably do as well as the world’s worst patent attorney on the drawings and specifications.

The real trick is the claims. A claim is a single sentence which defines the metes and bounds of your patent. It includes the combination of elements no one has ever combined before. If you include too little, the claim will be rejected as obvious or as anticipating an already existing invention. If you include too much, your patent will be unnecessarily narrow and easier for the competition to circumvent. Claims are where the patent attorney’s particular artistry, skills and experience come into play. Be aware, not all patent attorneys have the same skill sets. No two patent attorneys will draft the exact same patent. How broad and defensible your patent turns out to be depends a lot on the expertise of the patent attorney you select.

But back to doing things yourself. The United States Patent and Trademark Office (USPTO) offers a helpful website discussing how to get a patent. Assume you want a utility patent; the website guides you through all of the parts of the patent, including the “formal papers” that you have to submit along with your patent application. Here is what the USPTO has to say about claims:

Claim or Claims

The claim or claims must particularly point out and distinctly claim the subject matter which you regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims.

A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section must begin on a separate physical sheet or electronic page. If there are several claims, they shall be numbered consecutively in Arabic numerals.

One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Any dependent claim that refers to more than one other claim (“a multiple dependent claim”) shall refer to such other claims in the alternative only. Each claim should be a single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim should be separated by a line indentation.

The fee required to be submitted with a nonprovisional utility patent application is, in part, determined by the number of claims, independent claims, and dependent claims.

Got it? Yeah, me neither. But it is not the USPTO’s fault. Patent attorneys have to spend years learning how to draft claims under the guidance of a skilled senior patent attorney. They study books and take classes, sometimes for many years before they are ready to take the patent bar and become a patent attorney. Even then, the pass rate for the patent bar has not risen much above 50%.

There is a reason why patent attorneys can practice nearly any type of law, but no attorney, other than an attorney who has passed the patent bar, can draft your patent application for you. There is a reason even the Patent Office strongly recommends you do not attempt to draft a patent application on your own. Apparently dying of gangrene takes a little luster off the thrill of removing your own appendix. Patents are the same. You might pump a little more money into it and survive a little longer, but as with a autoappendectomy, methinks you shan’t try it a second time.

Brett Trout

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