Patent Attorney David Pressman
15TH EDITION
“The best roll-up-your-sleeve guide for filers who
don’t want to pay a ransom.”
INC.
Patent It
• Conduct a patent search
• File your patent application
• Profit from your invention
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Yourself
THE WORLD’S
BESTSELLING
PATENT BOOK
N O LO
®
Your Step-by-Step Guide to Filing
at the U.S. Patent Office
e Story
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e Trusted Name
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Patent It
Yourself
Your Step-by-Step Guide to
Filing at the U.S. Patent Office
I so greatly admire and envy. My readers have given me much valuable feedback and
suggestions, and I am grateful to them as well.
I also thank the sta at Nolo, including Richard Stim, Steve Elias, Patti Gima,
Stephanie Harolde, and Ralph Warner for their ideas, contributions, and support, and,
especially, Terri Hearsh for substantially improving the look and feel of the book.
Finally, I thank my wife Roberta for her unagging support and contributions.
Table of Contents
Your Legal Companion
A. You Don’t Have to Use a Patent Attorney 2
B. A Layperson Can Do a Quality Job 2
C. Using an Attorney 2
D. Should You Do It Yourself? 3
E. New Material in the Fifteenth Edition 5
F. How to Use Patent It Yourself 5
1
Introduction to Patents and Other Intellectual Property
A. What Is a Patent and Who Can Apply for It? 9
B. e ree Types of Patents 9
C. e Novelty and Unobviousness Requirement 10
D. How Long Do Patent Rights Last? 13
E. Patent Filing Deadlines 13
F. Patent Fees 13
G. e Scope of the Patent 14
H. How Patent Rights Can Be Lost 14
I. What Rights a Patent Grants and the Prior-Art Reference
Value of a Patent 14
J. What Can’t Be Patented 15
K. Some Common Patent Misconceptions 16
L. How Intellectual Property Law Provides “Offensive Rights”
F. How to Record Your Invention 49
G. Another Way to Record Conception or Building and Testing—
e Invention Disclosure 54
H. e Provisional Patent Application—
A Substitute for Building and Testing, With Some Disadvantages 56
I. Don’t Sit on Your Invention After Documenting It 77
J. Don’t Use a “Post Office Patent” to Document Your Invention 77
K. Summary 77
4
Will Your Invention Sell?
A. Why Evaluate Your Invention for Salability? 80
B. Start Small but Ultimately Do It Completely 81
C. You Can’t Be 100% Sure of Any Invention’s Commercial Prospects 81
D. Take Time to Do a Commercial Feasibility Evaluation 81
E. Check Your Marketability Conclusions Using the Techniques of
Consultation and Research 87
F. Now’s the Time to Build and Test It (If Possible) 89
G. e Next Step 90
H. Summary 91
5
Is It Patentable?
A. Patentability Compared to Commercial Viability 95
B. Legal Requirements for a Utility Patent 95
C. Requirement #1: e Statutory Classes 96
D. Requirement #2: Utility 100
E. Requirement #3: Novelty 102
F. Requirement #4: Unobviousness 107
G. e Patentability Flowchart 117
H. Don’t Make Assumptions About the Law 118
I. Summary 118
Patent Application (Chart Route 16-30-C) 175
F. Manufacture and Distribute Your Invention Yourself,
Keeping It as a Trade Secret (Chart Route 20-32-34-D) 175
G. File Patent Application and Manufacture and Distribute Your Invention
Yourself (Trade-Secretable Invention) (Chart Route 20-32-34-36-E) 176
H. File Patent Application and Manufacture and Distribute Invention
Yourself (Non-Trade-Secretable Invention) (Chart Route 20-32-38-36-E) 176
I. Test Market Before Filing (Chart Route 20-32-38-40-F) 177
J. Summary 178
8
How to Draft the Specification and Initial Drawings
A. Lay Inventors Can Do It! 181
B. What’s Contained in a Patent Application 181
C. What Happens When Your Application Is Received by the PTO 183
D. Do Preliminary Work Before Preparing Your Patent Application 183
E. Flowchart 185
F. Write Your Patent Specification to Comply With the Full Disclosure Rules 185
G. Software, Computer-Related Inventions, and Business Methods 188
H. First Prepare Sketches and Name Parts 189
I. Drafting the Specification 193
J. Review Your Specification and Abstract Carefully 205
K. Checklist for Your Patent Application Draft 206
L. Specification of Sample Patent Application 206
M. Summary 206
9
Now for the Legalese—e Claims
A. What Are Claims? 225
B. e Law Regarding Claims 226
C. Some Sample Claims 227
D. Common Misconceptions Regarding Claims 231
F. e Waiver and Precautions in Signing It 311
G. e Best Way to Present Your Invention to a Manufacturer 312
H. Presenting Your Invention by Correspondence 313
I. Making an Agreement to Sell Your Invention 314
J. Manufacturing and/or Distributing the Invention Yourself 314
K. Summary 317
12
Going Abroad
A. Introduction 320
B. e Paris Convention and the One-Year Foreign Filing Rule 321
C. Other Priority Treaties Similar to the Paris Convention 321
D. European Patent Office/Europäisches Patentamt/Office
Européen des Brevets (EPO) 321
E. e Patent Cooperation Treaty (PCT) 322
F. Non-Convention Countries 322
G. Never Wait Until the End of Any Filing Period 325
H. e Early Foreign Filing License or Mandatory Six-Month Delay 325
I. Don’t File Abroad Unless Your Invention Has Very Good
Prospects in Another Country 325
J. e Patent Laws of Other Countries Are Different 326
K. e Ways to File Abroad 326
L. Rescind Any Nonpublication Request 332
M. Resources to Assist in Foreign Filing 332
N. Summary 333
13
Getting the PTO to Deliver
A. What Happens After Your Patent Application Is Filed 338
B. General Considerations During Patent Prosecution 341
C. A Sample Office Action 351
D. What to Do When You Receive an Office Action 357
A. Issue Notification 413
B. Press Release 413
C. Check Your Patent for Errors 413
D. Patent Number Marking 414
E. Advertising Your Patent for Sale 415
F. What Rights Does Your Patent Give You? 415
G. Be Wary of Offers to Provide Information About Your Patent 417
H. Maintenance Fees 418
I. Legal Options If You Discover an Infringement of Your Patent 420
J. What to Do About Patent Infringement 421
K. Product Clearance (Can I Legally Copy or Make at?) 426
L. Citing Prior Art Against Patent Applications and Patents 429
M. e Court of Appeals for the Federal Circuit (CAFC) 430
N. Using the Reexamination Process to Reduce the Expense
of Patent Infringement Suits 431
O. Jury Trials 431
P. Arbitration 432
Q. How Patent Rights Can Be Forfeited 432
R. Your Patent Is Subject to Interference for One Year 433
S. Tax Deductions and Income 433
T. Patent Litigation Financing 433
U. Summary 434
16
Ownership, Assignment, and Licensing of Inventions
A. e Property Nature of Patents 436
B. Who Can Apply for a Patent? 436
C. Joint Owners’ Agreement 437
D. Special Issues Faced by the Employed Inventor 438
E. Assignment of Invention and Patent Rights 440
F. Record Your Assignment With the PTO 441
Invention Disclosure
Provisional Patent Application Cover Letter
Application Data Sheet—PTO SB/14
Positive and Negative Factors Evaluation
Positive and Negative Factors Summary
Consultant’s Work Agreement
Searcher’s Worksheet
Drawing Reference Numerals Worksheet
Declaration for Utility or Design Patent Application
Patent Application Declaration (Supplemental Sheet)
Utility Patent Application Transmittal
Fee Transmittal
Credit Card Payment Form
Information Disclosure Statement Cover Letter
Information Disclosure Statement by Applicant
Nonpublication Request
Request Under MPEP 707.07(j)
Petition to Make Special
Design Patent Application
Design Patent Application Transmittal
Request for Expedited Examination of a Design Application
Amendment
Submission of Corrected Drawings
Supplemental Declaration
Petition for Extension of Time
Pre-Appeal Brief Request for Review
Request for Continued Examination (RCE) Transmittal
Request for Certificate of Correction
Certificate of Correction
Maintenance Fee Reminder Sheet
for getting patent protection abroad and concrete
suggestions for nding the necessary resources to help
you do this
• an overview of the alternative and supplementary
forms of protection available for inventions, such
as trade secrets, copyrights, trademarks, and unfair
competition law, and
• detailed information and advice on how to
commercially evaluate, market, and license your
invention.
One purpose of this book is to save you money.
According to the American Intellectual Property
Association, the average cost of preparing a minimally
complex patent application is approximately $8,500;
preparing a relatively complex application—for example, an
application for a chemical, biotech, mechanics, electronics,
or data processing invention—costs between $11,500 and
$15,500. You may not be able to aord these fees, and even
if you can, it still pays to do it yourself. By following the
instructions set out in this book, you’ll not only save on
attorney fees, but you’ll be personally involved in every step
of the patenting process. Aer all, you know your invention
better than anyone else, and assuming you’re willing
and able to wade through a number of patent rules and
technicalities, you’re the best person to patent it.
I think of the book as a great equalizer, since it provides
the know-how to enable the garage-shop or basement do-
it-yourselfer to get as good a patent as a large corporation.
It provides the legal tools necessary for inventors (whether
large or small) to provide rst-class legal protection for
checklists we have provided throughout this book.
C. Using an Attorney
Even if you do choose to work with an attorney, or have
one available to you through the process, you’ll nd that
this book allows you to take an active role in the process,
do a better job of monitoring your attorney (no trivial
consideration), and greatly adds to your understanding
of the ways in which the law is willing to protect your
invention. No matter how competent an attorney is, the
client who understands what’s going on will always obtain
better service. Indeed, many corporate legal departments
use this book to educate their inventors and support
personnel to deal with patent attorneys and to protect their
inventions more eectively.
I have seen a number of inventors who were victimized
by their attorney (or agent) by allowing the attorney to le
an application or continue prosecution at great expense
even though the invention had a serious commercial
drawback or was mostly anticipated by prior art. Had they
considered the comments in this book, taken more interest,
and followed what the attorney and/or the PTO was doing,
they would have known that it would have been unwise to
continue. By terminating at an earlier stage, they could have
saved hundreds, or even thousands of dollars.
YOUR LEGAL COMPANION|3
D. Should You Do It Yourself?
e big question is, of course, even though many if not most
inventors can le and handle their own patent application,
should you do so on your own or hire an expert? Aer
all, you probably hire people to do all sorts of things for
making the do-it-yourself versus hire-an-attorney decision.
e best answer for some inventors may be to do some of
both. Using this approach, diligent inventors will do much
of the patent work themselves, only consulting with an
attorney at an hourly rate if snags develop, or to check the
patent application before submission.
Proposed Legislation at May Affect Your Patent
As this edition goes to press, important changes have been
proposed in the patent rules and laws. If implemented, these
changes will likely reduce the strength of patents. Some
powerful entities, mainly computer,software, and financial
servicecompanies, are in favor of these changes. Other
powerful entities, mainly drug companies, independent
inventors, Nobel laureates, and some legislators, want to keep
patents strong and thus are opposed to these changes. e
winner will be determined to a large extent by the influence
of each side over our legislators. Here is a status report as of
this edition (February 2011).
New Rule Changes Halted: e PTO issued new rules
regarding (a) the number of applications that may be
permitted in a chain of continuing applications, and (b)
the number of claims that may be filed. A number of
organizations have sued the PTO, contending that these
changes go beyond the PTO’s powers. A trial court tentatively
agreed and has issued a temporary injunction, ordering
the PTO not to implement the new rules until the issues
are resolved after a full trial. However, the appellate court
reversed part of the trial court’s decision, holding that the
PTO may limit the number of applications in a chain. Check
my blogsite at
We realize that Patent It Yourself is a big book, and we hope
you will read it from cover to cover to get a full picture of the
field of patents and inventions. However if you don’t have
the time, this Quick-Start Guide will tell you where to look to
accomplish a specific task.
Task What to Read or Do
You’ve invented something and you want to
protect it.
Follow the RESAM procedure (Chapter 1):
Record the invention properly or file a Provisional Patent Application
(Chapter 3).
Evaluate commercial potential to see if it will sell (Chapter 4).
Search it for patentability to see if you will be able to get a patent
(Chapters 5 and 6).
Apply for a patent (Chapters 8 through 10).
Market it to a suitable company (Chapter 11).
You have a patent and want to license or sell it. Read Chapter 11 on Marketing.
You have a patent that may be infringed. Read Chapter 15 to learn how to determine whether it’s infringed and how
to go after the infringer.
You have a patent and want to maintain it. Read Chapter 15 on Maintenance Fees.
You have a patent and want to sell or license it. Reach Chapter 16 on Assignments and Licensing.
You want to learn about all forms of intellectual
property.
Read Chapters 1 and 7.
You want to determine whether your invention
will sell.
Read Chapter 4 on Evaluating Commerciality.
You want to see if your invention is patentable. Read Chapters 5 and 6 on Patentability and Searching.
You want to get a monopoly on your invention
abroad.
• patent trolls and submarine patents
• new design patent infringement standards as
established in the Egyptian Goddess, Inc. v. Swisa, Inc.
case.
F. How to Use Patent It Yourself
e book is organized primarily for chronological use,
starting with an overview of the entire intellectual property
eld (which includes patents, trademarks, copyright, and
trade secret law). en it sequentially covers the steps most
inventors will take to monopolize and prot from their
inventions. I strongly recommend that you rst read the
book all the way through, skimming lightly over the many
chapters that actually tell you how to do things.
In this way you’ll rst get an overview of the patent forest
before you return and deal with the individual steps (trees)
necessary to fully protect your invention.
roughout the book I refer to a number of forms and
in many instances reproduce them in the text. A tear-out
or copyable version of each is also located in Appendix7
for your use, and all PTO forms can be downloaded from
the PTO website. If you don’t have Internet access, I recom-
mend that you make photocopies of PTO forms so you’ll have
ample spares for dras and extra copies for your records.
Also throughout the book I refer to various statutes
and governmental administrative rules, mostly in the
patent area. I use standard forms of legal citation; these are
interpreted as follows:
• 35 USC 102 = Title 35 of the U.S. Code, Section 102
• 37 CFR 1.111 = Title 37 of the (U.S.) Code of Federal
Regulations, Section 1.111.
nolo.com.
Welcome to the world of intellectual property! Good luck
and successful inventing!
l
A. What Is a Patent and Who Can Apply for It? 9
B. e ree Types of Patents 9
C. e Novelty and Unobviousness Requirement 10
D. How Long Do Patent Rights Last? 13
E. Patent Filing Deadlines 13
F. Patent Fees 13
G. e Scope of the Patent 14
H. How Patent Rights Can Be Lost 14
I. What Rights a Patent Grants and the Prior-Art Reference Value of a Patent 14
J. What Can’t Be Patented 15
K. Some Common Patent Misconceptions 16
L. How Intellectual Property Law Provides “Offensive Rights”
(and Not Protection) to Inventors 16
M. Alternative and Supplementary Offensive Rights 17
N. Intellectual Property—e Big Picture 17
O. Trademarks 18
1. Trademarks Defined 18
2. Monopoly Rights of a Trademark Owner 19
3. Relationship of Trademark Law to Patent Law 19
4. Overview of How Offensive Rights to Trademarks Are Acquired 19
5. What Doesn’t Qualify as a Trademark (for the Purpose of
Developing Offensive Rights) 21
P. Copyright 21
1. What Is Copyright? 22
2. Copyright Compared With Utility Patent 22
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