Counseling Clients About the Perils and Pitfalls of Do-It-Yourself IP – Patents10 min read
Economic considerations and the proliferation of information available on the Internet lead some clients down the pathway of do-it-yourself IP, whether going at it alone or seeking assistance from invention submission companies or other online legal solutions. This article addresses how to counsel clients about the perils and pitfalls of do-it-yourself IP, particularly focusing on patents, and provides tips for getting clients on the right path before/after they attempt to do it themselves.
Unless you have no access to media (television, print, radio, Internet), you have probably heard or seen at least one advertisement about services, such as Invent Help or LegalZoom, that purport to enable the average person to generate their own legal documents at a low cost. In some instances, these services may promote their use to assist inventors in attempting to obtain patent protection. While these services or other online information could provide an inventor with a supposedly lower-cost way to access the patent system, using these services when patenting can be full of pitfalls for the unwary. While there are numerous potential pitfalls in attempting to obtain/maintain patent protection without engaging an attorney, this article will address several of the most common including misconceptions about provisional patent applications, how having an improperly written patent application can be worse than no patent application at all, mixing marketing/commercialization with patent protection. These pitfalls can range in severity from overly narrowing patent coverage to losing out on patent protection altogether.
A. Misconceptions About Provisional Patent Applications
Some inventors attempt to use online services or go at it themselves particularly when filing provisional patent applications. There are various reasons why inventors may do so. The primary consideration is often cost – the fee to be paid to the U.S. Patent and Trademark Office to file a provisional patent application on its own is low (under $150 for a small entity) and paying a patent attorney/agent to prepare a provisional application can sometimes be substantial depending on the complexity of the invention. Further, because the basic requirements to get a filing date for a provisional patent application are not that formal or particularly onerous (i.e., no claims must be drafted and no formal drawings need to be prepared), this may incentivize an inventor to take this first step on his/her own or with the low-cost assistance of an online service. There are several pitfalls that may result when engaging in the do-it-yourself provisional patent application process.
1. Erroneous Belief That Provisional Patent Application Is a Patent
One pitfall of filing a provisional patent application without the assistance of a patent attorney/agent concerns the erroneous belief that filing a provisional patent application equals having patent protection. For example, at one time, at least one of these online services promoted that an inventor could obtain a “Provisional Patent.” However, there is no such thing as a “Provisional Patent,” only a provisional patent application.
When a provisional patent application is filed, it essentially saves the applicant a place in the priority line at the U.S. Patent and Trademark Office. The applicant then has up to one year after filing to convert the provisional application to a non-provisional application and still be able to potentially benefit from the priority of the provisional application filing date. If the provisional application is not converted to a non-provisional application, it expires and no patent will ever issue. Unfortunately, unwary applicants may use try to file a provisional patent application on their own or use one of these services to file a “Provisional Patent” and think they have a patent to enforce or that protects them merely by filing. But all they have is an application that has not been examined for patentability and that is only good for a limited time (up to 1 year). This leads to another pitfall – failure to appreciate the need to convert the provisional application to a non-provisional application within 1 year after filing.
2. Failure to Appreciate the Need to Convert Provisional Application Within 1 Year to Get Benefit of Filing Date
Again, a provisional patent application is only good for a limited amount of time (up to 1 year). If the provisional application is not converted to a non-provisional application, the provisional application will die on the vine. The invention will no longer have “patent pending” status, and the inventor will have little recourse to be able to revive the application and attempt to gain protection.
When an inventor attempts to file a provisional application on his/her own or through the assistance of an online service, the inventor is unlikely to receive reminders about the 1-year deadline to convert the provisional application to a non-provisional application. Even if the inventor is reminded of the deadline, he/she may not appreciate what needs to be done in order to properly convert a provisional application. In contrast, if the inventor engages a patent attorney/agent to prosecute the provisional application (or at least assist in the conversion process), the patent attorney/agent will docket the appropriate deadlines and generally provide reminders in advance of the deadline. The patent attorney/agent also will provide the inventor with advice as to what may need to be done to properly convert the provisional application, more specifically how to draft the claims, how to meet formal drawing requirements, and the effects of adding significant disclosure not previously contained in the provisional application. Accordingly, the inventor will be aware of what needs to be done and the deadlines for doing so.
If a patent attorney/agent is approached to assist with conversion of a do-it-yourself provisional patent application, it is critical to ask questions about when the application was filed and understand the level of detail (or lack thereof) contained in the application. This will help the attorney/agent to ensure that any non-provisional application is filed on time and stands the best chance of being able to benefit from the priority filing date associated with the provisional application. This ties in with another pitfall that can arise with respect to provisional and non-provisional patent applications – the danger of having an improperly written patent application.
B. Improperly Written Patent Application Can Be Almost as Bad as Having No Application At All
Another pitfall of using these services to file a patent application, or filing a patent application pro se, is that an improperly written patent application can be almost as bad as never having filed an application in the first place. While there are many factors that can contribute to a patent application being considered “improperly written,” failure to describe the invention in sufficient detail, failure to claim the invention properly, and over-describing prior art are just a few.
1. Failure to Describe Invention in Sufficient Detail
If a provisional application does not describe the invention and how to make/use the invention in sufficient detail, and more details are added to the non-provisional application that more fully describe the invention, it is possible that the non-provisional application may not get the benefit of the provisional application priority filing date. This can be a significant pitfall because the main benefit of filing a provisional application is getting a filing date for priority purposes. If the inventor loses the benefit of that early filing date, then the inventor might as well not have filed a provisional application at all.
This can also be a problem with a do-it-yourself non-provisional patent application. If the invention is only described at a very high level in the patent application, the full scope of the invention may not be contained in the application. Accordingly, when the U.S. Patent and Trademark Office examines the application, the details that might otherwise help to distinguish the invention from the prior art may not be contained in the application, and no new matter can be added without filing an entirely new application. Thus, lack of sufficient detail could be fatal to the potential success of the patent application. And even if not fatal, the applicant may have to file an additional application in order to include the details relevant to patentability, and this may result in losing the benefit of the non-provisional application filing date as well as the priority filing date of any provisional application.
2. Failure to Claim Invention Properly
Another area where pitfalls arise concerns the claims contained in a non-provisional application. Patent claims legally define what is, and is not, the invention (i.e., the metes and bounds of the invention). The U.S. Patent and Trademark Office will examine the claims of the patent application to define the scope of protection for an invention. It can be unwise for an applicant to draft its own claims when not trained to do so. Further, while some applicants may be able to draft claims and obtain a patent, they may not always draft claims that result in a valid patent and with a worthwhile scope of protection. That result may be worse than having no patent at all.
Applicants should be encouraged to engage a patent attorney/agent if only just to prepare the claims associated with a non-provisional patent application and later negotiate the claim scope with the patent examiner. Patent attorneys/agents are trained to draft claims and they understand the practices and procedures of the U.S. Patent and Trademark Office. Having a good set of claims in an issued patent is what can make the issued patent valuable, as infringement is determined based on whether all limitations of the patent claims are met, not just what is disclosed in the patent application. If the claims are too narrow, then the claims may be easy for a potential infringer to design around. Conversely, if the claims that issue are too broad, it may be possible for an accused infringer to seek to invalidate the claims either through the courts or through procedures available in the U.S. Patent and Trademark Office (i.e., reexamination, post-grant review (PGR) and inter partes review (IPR)).
3. Over-Describing Prior Art
Regardless whether someone is filing a provisional or a non-provisional patent application, a common tendency for do-it-yourself patent applicants is to describe the prior art in a lot of detail, particularly including positive descriptive comments about the prior art. These types of comments can often backfire when the U.S. Patent and Trademark Office later examines the non-provisional application because the applicant’s own admissions about the prior art may provide the examiner with the support that he/she needs to reject the claims, even without the examiner performing a separate search.
A better approach is to keep the prior art (or background) section of the patent application to a minimum, while disclosing any relevant references through an Information Disclosure Statement. A patent application should merely indicate what is lacking in the prior art and frame the discussion in the context of what the invention adds or improves upon when compared to the prior art. This may make it less likely that an examiner will issue a rejection, particularly an obviousness rejection, using statements from an inventor’s own patent application.
C. Marketing/Commercializing Invention
Often clients do not look to their attorneys for assistance in marketing/commercializing an invention as they can often get better advice on those sorts of topics from marketing or business professionals. However, the danger is when clients go to an online service for assistance on these topics, while also possibly utilizing the online service to evaluate the potential for patent protection. Both areas can be fraught with problems, both in terms of the effectiveness of the protection (if any) as well as the cost.
InventHelp is the most common online service purporting to offer services to assist inventors to market and commercialize their inventions. This service also provides means for inventors to have their inventions evaluated and possibly file for patent protection. However, clients should be aware that the costs associated with use of this type of service (often upwards of $10,000) and the lack of meaningful results (possibly no patent protection and no one interested in the invention despite the investment) may counsel against use of such services. In fact, the Better Business Bureau (BBB) has received countless complaints about InventHelp over the years. Many of these complaints and the attempts to resolve the complaints are available online, and reviewing some of these complaints may assist attorneys/patent agents in better counseling clients of the perils and pitfalls of utilizing such a service.
When a client is considering whether to engage in do-it-yourself patent protection, an analogy may be made to a commercial from some time ago where a man is sitting at the table with a butter knife and the surgeon on the phone is telling him how to perform the surgery. The man asks: “Shouldn’t you be doing this?” A wise question for sure! Preparing a patent application on your own is a lot like doing surgery on yourself. You are going to make mistakes, it is not a good idea and only in the most extreme of circumstances should it be attempted.
Further, while services such as LegalZoom or InventHelp may have been created with noble intentions – allowing the public essential documents without substantial inconvenience or high fees – using such services to pursue patent protection can be fraught with risk. But the largest pitfall is that an inventor loses his/her potential for patent protection by using these services, which may be a loss of money far greater than the cost of engaging a patent attorney to assist in the process.