FILING YOUR PATENT APPLICATION

A. Filing a Patent Application Yourself

You are entitled to file a patent application on your own without a patent attorney acting on your behalf. The U.S. Patent & Trademark Office (USPTO) encourages inventors to seek a patent attorney because most inventors are not sufficiently familiar with patent law and procedure to do themselves justice. However, the USPTO recognizes that because a number of inventors do choose to prepare and file their own patent applications, some special attention should be given to them. For example, the patent rules allow independent inventors to request the USPTO Examiner to aid them to write allowable claims.

Because the great benefit of the provisional patent application is its simplicity (low cost, minimal formal requirements, no claims and no examination), independent inventors should seriously consider filing a provisional patent application rather than a document disclosure in those instances where the inventor has an understanding of what to do and how to do it.

B. Working with a Patent Attorney

Patent attorneys are individuals who have both technical expertise (a college degree in engineering or science) and legal expertise (having passed both the state and U.S. Patent & Trademark Office (USPTO) bar examinations). Patent Agents have technical expertise and must pass the USPTO bar examination, but they are not attorneys registered to practice law. Patent attorneys and patent agents are both empowered by the USPTO to file and prosecute patent applciations [see Links]. Most people think that the role of the patent attorney (or patent agent) is restricted to writing patent applications; that is, someone who can write-up an invention in the "legaleeze" of the USPTO. But, patent attorneys serve a far more expansive roll in the invention process. Remember, a patent attorney has a technical background and there is no reason in the world why you can't have him consult with you on the technical aspects of your invention (besides the legal aspects). Some patent attorneys say they don't like to do this because if they do then the invention isn't the inventor's invention any more, or if they do then all the inventor is getting is a super high priced engineer. But, the truth is that engineering consultation is part-and-parcel of the over all patent application process, especially where the technology described in prior art patents must be considered by the inventor when finalizing his/her inventive concept before applying for a patent. Therefore, it is important to find a patent attorney with whom you can comfortably talk to about the structure and function of your invention besides the legal aspects of protecting it.

It is a good idea to see a patent attorney as soon as your idea has reached the point that you can describe it in both structural and functional terms. This doesn't mean that every cog and lever has to be precisely drawn in scale on engineering drafting paper. Hardly. What this means is that you can reasonably well describe the concept in terms of how it's put together and how it works. It is very rare indeed for the drawings in a patent application to show anything resembling a finished commercial version of a product. So, don't be intimidated that a patent attorney is going to throw you out because your idea is crudely drawn and described in "chicken scratch".

In terms of fees many patent attorneys prefer to charge on an hourly basis. However, in this billing scheme you can't tell what your final charge will be because when your billed in this manner the patent attorney will charge you for everything (ie., every call, every letter, every conference, etc.) and as a result your final cost could be sky-high. Further, just because a patent attorney charges $95.00 an hour doesn't mean you'll save money over an attorney charging $250.00 an hour because the number of hours is a variable. In most cases, an attorney should be asked to study an inventor's disclosure and then render a firm quotation for the entire job. This saves detailed accounting for every call, letter, meeting, etc., and, more importantly, gives the inventor the piece of mind to know that any question he/she has will be gladly discussed without any charge.

C. Filing a Regular Utility Patent Application

1. Format:

The "specification" is the "written part" of the patent application, and it contains the following parts:

Title of the Invention;

Background of the Invention;

Summary of the Invention;

Brief Description of the Drawings;

Detailed Description of the Preferred Embodiment;

at least one claim that defines the invention in formal, precise language; and

Abstract of the Disclosure.

Where necessary to explain the invention, a drawing must be included. The drawing includes at least one formalized figure showing the invention both structurally and functionally. Anything claimed which can be shown by a drawing, must be shown in the drawings.

2. Submission:

The use of express mail to addressee service of the Postal Service provides the benefit that the date the postal clerk writes on the tracking label will be considered by the U.S. Patent & Trademark Office as the filing date of the patent application. Address the label to: Assistant Commissioner for Patents, Washington, D.C. 20231. The patent application is submitted with:

1. A cover sheet;

2. A fees calculation sheet;

3. A return post card;

4. A Declaration that states: that the Applicant is the true inventor; that the Applicant has read over the other parts of the application; that the Applicant acknowledges a duty to disclose to the Patent Office anything material to the patentability of the application; that the Applicant makes claim to a prior filed application (if any); the name, address and citizenship of the Applicant; and that the Applicant is appointing an attorney (if any).

5. A claim for small entity status (where appropriate);

6. The filing fee; and

7. An information disclosure statement, including copies of any prior art references which may be considered material to the patentability of the invention.

D. Filing a Provisional Utility Patent Application

1. Format:

The "specification" is the "written part" of the patent application, and it contains the following parts:

Title of the Invention;

Background of the Invention;

Summary of the Invention;

Brief Description of the Drawings;

Detailed Description of the Preferred Embodiment; and

Abstract of the Disclosure.

Where necessary to explain the invention, a drawing must be included. The drawing includes at least one formalized figure showing the invention both structurally and functionally.

A cover sheet is mandatory.

2. Submission:

1. A return post card;

2. A claim for small entity status (where appropriate); and

3. The filing fee.

E. Filing a Design Patent Application

1. Format:

The "specification" is the "written part" of the patent application, and it contains the following parts:

Title of the Invention; and

Brief description of the Drawings.

A drawing must be included. The drawing includes at least one formalized figure showing the ornamental appearance of the invention.

A single claim is required.

2. Submission:

1. A cover sheet;

2. A return post card;

3. A Declaration that states: that the Applicant is the true inventor; that the Applicant has read over the other parts of the application; that the Applicant acknowledges a duty to disclose to the Patent Office anything material to the patentability of the application; that the Applicant makes claim to a prior filed application (if any); the name, address and citizenship of the Applicant; and that the Applicant is appointing an attorney (if any).

4. A claim for small entity status (where appropriate);

5. The filing fee; and

6. An information disclosure statement, including copies of any prior art references which may be considered material to the patentability of the invention.