Can I File My Own Patent Application?

Nineteenth-century French playwright Charles-Guillaume Etienne wrote, “On n’est jamais servi si bien que par soi-même,” which roughly translates to, “If you want something done right, do it yourself.” The U.S. Patent and Trademark Office (USPTO) allows inventors to prepare their own patent application. So, why not file your own patent application and save $5,000 to $20,000 in legal fees?

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Just because you can, it doesn’t mean you should. Drafting your own application poses numerous risks. Patent prosecution (the process of shepherding the application through the USPTO) is complex, requires extensive research, and uses a fastidious style of writing. Additionally, before filing an application you must ensure that:

  1. The invention meets the requirements of patentability, including being novel, nonobvious, and be a patentable subject matter. Each requirement has its own legal test.
  2. There are no patents, publications or other potentially problematic inventions in the public domain that pre-date your invention or might result in infringement by you of someone else’s invention. You can try to do a search yourself, but while it is easy to search online for similar products, there are over 9 million U.S. patents, millions of published applications, and even more publicly accessible publications and products, making it difficult to conduct a comprehensive search unless you have the requisite skills and knowledge. You don’t want to spend thousands of dollars and dozens of hours on a patent application, only to learn the invention is already in the public domain, and that you could have avoided all this by spending $500 on a patentability search. It is often worth the investment to determine whether your invention is likely patentable.
  3. You are aware of and within timing restrictions for filing. In the U.S., you must file your patent application within 12 months from the time your invention was first sold or publicly used. With the patent law changing from a first-to-invent to a first-to-file system, it is unwise to sell your invention before filing a patent application.
  4. You have gathered and prepared all materials, including technical drawings, descriptions, claims, and the abstract.

This last requirement is particularly tricky. Failing to use precise language in your patent application can cause numerous problems. Your word choices are critical; differences between minor words like “comprising” versus “consisting,” or between “and” versus “or” can be significant.

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Also, the drawings must be technical, with each part numbered and each numbered item described in the “specification.” Likewise, your application must state the problem that your invention solves in detail with well-defined claims.

If your application fails to adequately disclose your invention, it could be useless, leaving you back at square one of the process. If you had been selling your invention in the meantime, the 12-month window in which to file could have closed for you, leaving you unable to re-file your patent.

Even if you successfully navigate the process and receive a patent, failure to consult with counsel during the process can still present problems later. If you want to sue competitors for infringement, you may suddenly find that the claims are too narrow to capture your competitor’s product. For example, you may have included in the claims a requirement of a “rounded” top and your competitor uses an oval one. A patent lawyer might have suggested that instead of confining yourself to “round,” that you claim “substantially round” or not confine yourself to a shape at all if it is not a crucial feature of the invention. On the opposite end of the spectrum, your patent may be so broad that your competitor may be able to find prior art that you and the Examiner missed that can be used to invalidate your patent. A patent lawyer is experienced at navigating the divide between “too narrow” and “too broad” and can discern the appropriate scope for your claims to provide maximum protection for your invention while preventing future problems.

While you can file your own patent application to try to save money, you may end up losing money and your invention by trying to navigate the complex patent process. We recommend you at least consult a patent lawyer before attempting to file your own patent.

If you need help with your patent or other intellectual property, please send us a message. We have lawyers licensed in Arizona, Connecticut, and New York, and we can handle federal intellectual property matters in any U.S. state and assist with international matters. We can discuss your patent ideas and the expected fees based on your specific situation. For even more information, be sure to connect with us on Facebook.

Post written by patent attorney Wendy Akbar and edited by social media attorney Ruth Carter.

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