WSID #10: How to file for patent protection

This article is part of the “What Should I Do (WSID)?” series where I discuss various scenarios involving intellectual property and business. Topic suggestions are always welcome.

“I want to file a patent application to protect my innovation — What should I do?”

Which fence is right for you?

So you want to seek patent protection for your innovation to keep others from copying your idea—it’s a bit like building a fence, really.

Hopefully, you’ve read my previous blog posts so that you’ve considered the question of To Patent or Not To Patent and you know your IP Endgame. If you have not read those articles, I’d urge you to do so before you read on. Go ahead, take the few minutes to read those quick articles, then come back here, if you still want to talk patents.

Welcome back. Let’s now talk about the Three Essential Steps to take to get a patent application filed.

  1. Get your documentation in order
    Before you even think about talking with an IP professional, you should make sure you have the necessary documents in hand. Of course, in this day and age of “First to File,” you do not need to spend months gathering all of the below documentation. If you think your invention is a high value, high impact innovation, by all means gather as many of the below documentation as you can in a reasonable amount of time and skip to STEP 2.Some files to gather in a readily accessible place are:

    Invention records
    1. Records of invention forms, if any
    2. Lab notebooks
    3. Software rev records
    4. Meeting notes
    5. Sketches, CAD files, etc.
    6. Internal presentation files
    7. Email exchanges regarding the invention
    8. Product design records or technology development plans related to the invention, if any

    Reference documents
    1. Known relevant publications by you or others
    2. Marketing brochures and publications by close competitors, if known
    3. Known relevant patent filings by you or others (you do NOT need to do a patent search—that’s a topic for a future blog post)
    4. Professional patent search results, if any

    Potential encumbrances
    1. Employment agreements
    2. Contractor/consulting agreements related to the invention
    3. License/assignment agreements, if any
    4. Founders/IP agreements, if any

    Invention records are of course important because they will become the basis of the patent application you and/or your IP professional will prepare. More detail you can provide, the better.

    Reference documents are surprisingly tricky because you will need to balance the amount of digging you’ll do to find the documents with the fulfillment of your duty of disclosure, if you will be filing in the US. While a prior art search is not a requirement before filing a patent application, it may be advantageous to know whether there are publications similar to your invention before expending patent costs.

    The inventor is assumed to be the expert on his/her own invention and its surrounding art, so IP professionals would generally rely on the inventor to bring specific references to their attention. A quick keyword search on your own computer hard drive may be all it takes to find some relevant articles in your own files. You may need to discuss this issue with your IP professional, once you engage one.

  2. Consider the filing jurisdiction
    Now we’re getting into more of the strategy aspects of patent filings. As I’d mentioned in my IP Endgame post, what you intend to do with the patent greatly influences how and where you proceed with your patent application.If you are planning to manufacture and sell your invention in a single country or a few countries only, then you may choose to only file your patent application in those specific jurisdictions in order to protect your business in those countries. If you are hedging your bets on where you’ll eventually be doing business, then you may opt to file under the Patent Cooperation Treaty or even one of the smaller groups of countries like EPO in Europe or ARIPO in Africa. Do keep in mind that there are countries that are not part of the PCT (here’s a list of non-PCT countries).

    Additionally, if you first file in the US, then the USPTO requires you to wait for the grant of a Foreign Filing License before you are allowed to file your patent application outside of the US. Similarly, certain countries have specific requirements for patent filings by their citizens—For example, China requires domestic inventions to be first filed with the SIPO. It can get tricky if you have inventors with different citizenships and/or collaborating internationally. Here’s a nice summary of Considerations for International Inventions.

    Jurisdiction is one decision that can have profound effects on your future business strategy, so be sure to discuss this issue with your IP professional.

  3. Prepare and file your patent applicationFile it yourself
    Although I’d mentioned above that there are issues you may want to consult with an IP professional, an inventor can file his/her own patent application in many jurisdictions, without being represented by a law firm. For example, in the US, the USPTO provides specific resources for pro se inventors who want to file their own applications directly with the USPTO.

    While there are many books and resources for preparing and prosecuting your own patent applications, be cognizant of the fact that patent drafting and prosecution are complex matters with many legal requirements to keep in mind. For example, a patent is an asset, just like real estate. If you’ve never built a house before, would you seek the help of an experienced and insured general contractor with knowledge of the latest housing code requirements and expert technicians in their Rolodex, or start building the house yourself? Which method do you think you would be able to obtain the highest quality outcome? While you might save a few bucks by doing much of the work yourself, wouldn’t you seek the advice of someone who has built houses before?

    Specifically regarding patent filings, I’ve dealt with patents written and prosecuted by well-meaning pro se inventors where preventable legal mistakes made during the patent prosecution greatly reduce the final value of the patent portfolio. If you do still choose to file and prosecute your patent application yourself, then be aware of the potential issues. Errors made during patent prosecution may or may not be correctable, even if you engage an IP professional later in the process.

    Hire a patent professional
    Engaging an IP professional means that you are contracting with a person that is knowledgeable about the patenting process to negotiate with the patent office on your behalf. Ideally, the IP professional should have experience with technology similar to your innovation, as well as with entities like your own, whether you are a lone inventor or a larger corporate entity. You might entrust the entire patent prosecution process to the IP professional, or you might take a more active role in developing the application and then formulating the arguments during the negotiation with the patent examiner. Be sure you discuss your expectations upfront.

    While all registered patent attorneys and patent agents are bound by ethics rules of professional conduct, your experience in working with the particular person will vary greatly depending on factors such as the size of the law firm, technical expertise of the practitioner, firm philosophies, and others. Recommendations from others in similar situations as you may be helpful in making your selection. I write a separate blog post specifically focused on how to select an IP professional.

    Hybrid method
    You might choose a hybrid method that is a combination of engaging the help of a patent professional, while still filing the application as a pro se inventor. For instance, you might be able to find an IP professional who is willing to review your draft filing for any obvious errors within a limited amount of time, then still file the resulting application yourself. You may encounter some hesitancy from the patent attorney or agent, as he/she may not want to contribute to work product over which he/she will not have subsequent control due to liability concerns.

    Another possibility would be for you to do a majority of the application drafting, then have the patent attorney or agent file the application through their firm. Some attorneys will still insist on spending a lot of time revising the application to his/her standards, so be sure to be clear with your expectations at the outset.

    In either of the above two approaches, much of the cost savings will arise only if you have done your homework in educating yourself about the mechanics of patent applications and the legal requirements involved in the filings. You may spend hours preparing the initial draft, only to have the IP professional spend hours bringing the application to compliance with patent rules. Also, keep in mind what you are trying to get out of patenting your innovation. There will be differences in how you craft the specification and the claims, depending on the desired use of the final patent.

As I’d mentioned earlier, a patent is an asset. You can increase the value of the asset by being mindful about the care and skill with which the asset is created. The asset may also be made more valuable for you with a clear understanding of how it synergistically works with your other assets, whether they be technology products, business model, or even other patents. The filing mechanics you’ve decided to pursue should be in sync with your business and personal goals.

Hopefully in a few years, you will get a Notice of Allowance for your patent application. At that point, be sure to check out my blog posts regarding what to do after an NOA (Notice of Allowance Strategy and Notice of Allowance Mechanics).

About the Author and Disclaimer: Yoriko Morita has worked with innovators in a variety of contexts, in a law firm working for inventors, as in-house IP director, and as a licensing professional. She currently helps clients with such IP-related questions, as well as developing integrated business/technology/patent strategies, through her company, Patents Integrated. The contents of this article are intended to be informational only, not legal advice. The reading of this article does not establish an agent-client privilege between you and Patents Integrated, and Patents Integrated is not responsible for any damages arising from your use of the information in this article under any circumstance. Your use of the information in this article is at your own risk, and you should seek the advice of a licensed legal professional regarding your own specific situation.

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