Can I file my own patent application?
Of all of the frequently asked questions, this is one of the most difficult to answer. The legal answer is, of course, yes. Thomas Jefferson filed his own patent application, as have many inventors over the last two centuries. The Patent Office was designed to be approachable and helpful to the individual inventor, especially in regard to provisional applications.
Provisional patent applications do not have a requirement for either formality or patent claims, and since provisional patent applications are never examined by the Patent Office, as long as certain rules are followed with respect to complete disclosure and disclosure of the best mode of the invention, provisional patent applications are good candidates for self-filing.
Nonprovisional patent applications, however, are incredibly complicated. They are not so complicated to write, and it is not so complicated to explain the invention, but over 200 years of legal changes in the Patent Office, and court interpretations of legal doctrine, and the often high stakes involved in patent litigation have created complication. Almost every single word in a patent application and claim becomes challengeable in court, in the event that the patent is asserted against an infringer.
It is understandable that not all inventors will be able to seek assistance on their inventions and having patent applications professionally prepared. Although it may be possible to file your own provisional patent application, it is my advice that at least some help should be sought in preparing, filing and prosecuting a non-provisional United States application. Quite frankly, if you cannot afford some legal assistance with preparing, filing and prosecuting your United States patent application, seeking patent protection is likely not a worthwhile endeavor. Without legal assistance, there is a very good likelihood that your patent will not survive the examination at the Patent Office; even if it does survive, the average inventor’s patent will be so narrowly limited in scope that the patent will be of little commercial value.
One point to note here is that the Patent Office trains its patent examiners to be very helpful to pro se inventors, but despite their friendliness and enthusiasm for assisting pro se inventors (and it has been my experience that they are very helpful towards inventors who try to prosecute their own patent applications), the general mindset of the average patent examiner is to allow claims only with the narrowest possible scope. This mindset develops over interacting with patent attorneys who represent inventors seeking the broadest possible patent scope on their patent claims. It is the job of the patent examiner to protect the integrity of the system by carefully examining and narrowing the scope to the least possible allowable claim, so that the value of the issuing examined patent will be insured. Asking patent examiners to help you write a patent claim is akin to getting your used car appraised at the car dealership prior to advertising it for sale in the paper. The patent examiner is going to be much more conservative, much more so than the advice you would likely get from a professional patent attorney or patent agent.
If you permit me a little bit of literary license in order to tell you about case I dealt with some years ago, I’d like to tell you a story about my client named Bill. Bill is an entrepreneur who lives in Darien, Connecticut; Darien, as you may know, is not just an Amtrak stop between New York City and Boston. Bill was referred to me by an attorney friend of mine in New York, and Bill had written and filed a patent application about 1996. The application covered an invention that he had conceived of involving the use of floppy disks in computer printers. His idea was that images on floppy disks should be directly printed by a computer printer by inserting the floppy disk into the printer and having the printer print them.
Unfortunately, the claim pretty nearly covered all the suggestions made by the numerous interactions with the Patent Office Examiner and consisted of two full columns in the issued patent. The claim was so narrow in scope at this point that after reading the detailed elements of the claim, it would have been nearly impossible for someone to intentionally been an infringer of this patent. After the patent issued in 2002, this client contacted me and asked me to approach a large printing company to inquire about the possibility of licensing this patent from him. Although the invention was very valuable and there was virtually no relevant prior art prior to my client’s filing of the patent application, the narrowness and complexity of the single patent claim would make the patent almost useless to anybody who owned it. In essence, the patent was fairly worthless as issued.
Now fortunately, there were a couple of things that favored this pro se inventor. First of all, the detailed description was, in fact, extremely detailed. My inventor liked to write, and he put a lot of effort and creative energy into the patent specification itself. The main embodiment contained a media reader on the printer; there were also many alternative embodiments that were included in the specification. Second, since the inventor came to me shortly after the issuance of the original patent, it was possible for us to go back to the Patent Office and ask for a broadening reissue of the patent application. A broadening reissue is a procedure with the Patent Office in which the inventor requests reexamination based on a broader claim scope that was not the subject of the prior examination which led to the issuance of the patent. Although a narrowing reissue may occur anytime during the life of a patent, a broadening reissue must take place within two years of the patent’s issuance. So despite the fact that the claim was almost uselessly narrow upon issuance, we were able to utilize the detailed description of the original filing and request that the Patent Office reopen examination and consider broader patent claims based on embodiments that were not originally the subject matter of earlier claims.
The moral of the story is that my client would have faired better had he found a way to get some legal assistance at an earlier stage than the patent process. There is no doubt that the patent would have issued much more quickly, would have had much broader claims, and would have been much more immediately valuable as licensable intellectual property to a printer manufacturer. Since he failed to do so, many thousands of dollars needed to be spent on prosecuting the reissue application, and much more was lost in monthly revenues that would have been available, had a time-consuming reissue examination of the patent not been necessary.
Contact John Ferrell at JFerrell@carrferrell.com if he can further assist you.
About the Author
John Ferrell is a founding partner of Carr & Ferrell LLP, one of Silicon Valley's foremost technology law firms, and specializes in patent and intellectual property law matters. He is the Chair of the firm's Intellectual Property Practice Group.