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Financial issues and the proliferation of data accessible on the Web lead some purchasers down the pathway of do-it-yourself IP, whether or not going at it alone or looking for help from invention submission corporations or different on-line authorized options. This text addresses how you can counsel purchasers in regards to the perils and pitfalls of do-it-yourself IP, significantly specializing in patents, and supplies ideas for getting purchasers on the proper path earlier than/after they try and do it themselves.
Except you haven’t any entry to media (tv, print, radio, Web), you could have most likely heard or seen not less than one commercial about companies, resembling Invent Assist or LegalZoom, that purport to allow the common individual to generate their very own authorized paperwork at a low price. In some cases, these companies could promote their use to help inventors in making an attempt to acquire patent safety. Whereas these companies or different on-line info may present an inventor with a supposedly lower-cost option to entry the patent system, utilizing these companies when patenting might be filled with pitfalls for the unwary. Whereas there are quite a few potential pitfalls in making an attempt to acquire/preserve patent safety with out partaking an lawyer, this text will tackle a number of of the commonest together with misconceptions about provisional patent purposes, how having an improperly written patent utility might be worse than no patent utility in any respect, mixing advertising/commercialization with patent safety. These pitfalls can vary in severity from overly narrowing patent protection to shedding out on patent safety altogether.
A. Misconceptions About Provisional Patent Purposes
Some inventors try to make use of on-line companies or go at it themselves significantly when submitting provisional patent purposes. There are numerous the explanation why inventors could accomplish that. The first consideration is commonly price – the price to be paid to the U.S. Patent and Trademark Workplace to file a provisional patent utility by itself is low (underneath $150 for a small entity) and paying a patent lawyer/agent to arrange a provisional utility can generally be substantial relying on the complexity of the invention. Additional, as a result of the essential necessities to get a submitting date for a provisional patent utility should not that formal or significantly onerous (i.e., no claims have to be drafted and no formal drawings must be ready), this may occasionally incentivize an inventor to take this primary step on his/her personal or with the low-cost help of a web-based service. There are a number of pitfalls which will outcome when partaking within the do-it-yourself provisional patent utility course of.
1. Inaccurate Perception That Provisional Patent Utility Is a Patent
One pitfall of submitting a provisional patent utility with out the help of a patent lawyer/agent considerations the inaccurate perception that submitting a provisional patent utility equals having patent safety. For instance, at one time, not less than one in every of these on-line companies promoted that an inventor may acquire a “Provisional Patent.” Nonetheless, there is no such thing as a such factor as a “Provisional Patent,” solely a provisional patent utility.
When a provisional patent utility is filed, it basically saves the applicant a spot within the precedence line on the U.S. Patent and Trademark Workplace. The applicant then has as much as one yr after submitting to transform the provisional utility to a non-provisional utility and nonetheless be capable of doubtlessly profit from the precedence of the provisional utility submitting date. If the provisional utility shouldn’t be transformed to a non-provisional utility, it expires and no patent will ever challenge. Sadly, unwary candidates could use attempt to file a provisional patent utility on their very own or use one in every of these companies to file a “Provisional Patent” and suppose they’ve a patent to implement or that protects them merely by submitting. However all they’ve is an utility that has not been examined for patentability and that’s solely good for a restricted time (as much as 1 yr). This results in one other pitfall – failure to understand the necessity to convert the provisional utility to a non-provisional utility inside 1 yr after submitting.
2. Failure to Recognize the Must Convert Provisional Utility Inside 1 Yr to Get Advantage of Submitting Date
Once more, a provisional patent utility is barely good for a restricted period of time (as much as 1 yr). If the provisional utility shouldn’t be transformed to a non-provisional utility, the provisional utility will die on the vine. The invention will not have “patent pending” standing, and the inventor can have little recourse to have the ability to revive the appliance and try to achieve safety.
When an inventor makes an attempt to file a provisional utility on his/her personal or via the help of a web-based service, the inventor is unlikely to obtain reminders in regards to the 1-year deadline to transform the provisional utility to a non-provisional utility. Even when the inventor is reminded of the deadline, he/she could not admire what must be achieved in an effort to correctly convert a provisional utility. In distinction, if the inventor engages a patent lawyer/agent to prosecute the provisional utility (or not less than help within the conversion course of), the patent lawyer/agent will docket the suitable deadlines and usually present reminders upfront of the deadline. The patent lawyer/agent additionally will present the inventor with recommendation as to what could must be achieved to correctly convert the provisional utility, extra particularly how you can draft the claims, how you can meet formal drawing necessities, and the results of including important disclosure not beforehand contained within the provisional utility. Accordingly, the inventor will pay attention to what must be achieved and the deadlines for doing so.
If a patent lawyer/agent is approached to help with conversion of a do-it-yourself provisional patent utility, it’s essential to ask questions on when the appliance was filed and perceive the extent of element (or lack thereof) contained within the utility. It will assist the lawyer/agent to make sure that any non-provisional utility is filed on time and stands one of the best likelihood of with the ability to profit from the precedence submitting date related to the provisional utility. This ties in with one other pitfall that may come up with respect to provisional and non-provisional patent purposes – the hazard of getting an improperly written patent utility.
B. Improperly Written Patent Utility Can Be Nearly as Unhealthy as Having No Utility At All
One other pitfall of utilizing these companies to file a patent utility, or submitting a patent utility professional se, is that an improperly written patent utility might be nearly as dangerous as by no means having filed an utility within the first place. Whereas there are numerous components that may contribute to a patent utility being thought-about “improperly written,” failure to explain the invention in ample element, failure to say the invention correctly, and over-describing prior artwork are only a few.
1. Failure to Describe Invention in Enough Element
If a provisional utility doesn’t describe the invention and how you can make/use the invention in ample element, and extra particulars are added to the non-provisional utility that extra absolutely describe the invention, it’s potential that the non-provisional utility could not get the good thing about the provisional utility precedence submitting date. This is usually a important pitfall as a result of the primary advantage of submitting a provisional utility is getting a submitting date for precedence functions. If the inventor loses the good thing about that early submitting date, then the inventor would possibly as properly not have filed a provisional utility in any respect.
This will also be an issue with a do-it-yourself non-provisional patent utility. If the invention is barely described at a really excessive stage within the patent utility, the complete scope of the invention is probably not contained within the utility. Accordingly, when the U.S. Patent and Trademark Workplace examines the appliance, the main points that may in any other case assist to tell apart the invention from the prior artwork is probably not contained within the utility, and no new matter might be added with out submitting a completely new utility. Thus, lack of ample element could possibly be deadly to the potential success of the patent utility. And even when not deadly, the applicant could should file a further utility in an effort to embody the main points related to patentability, and this may occasionally lead to shedding the good thing about the non-provisional utility submitting date in addition to the precedence submitting date of any provisional utility.
2. Failure to Declare Invention Correctly
One other space the place pitfalls come up considerations the claims contained in a non-provisional utility. Patent claims legally outline what’s, and isn’t, the invention (i.e., the metes and bounds of the invention). The U.S. Patent and Trademark Workplace will look at the claims of the patent utility to outline the scope of safety for an invention. It may be unwise for an applicant to draft its personal claims when not skilled to take action. Additional, whereas some candidates might be able to draft claims and procure a patent, they might not all the time draft claims that lead to a legitimate patent and with a worthwhile scope of safety. That outcome could also be worse than having no patent in any respect.
Candidates must be inspired to have interaction a patent lawyer/agent if solely simply to arrange the claims related to a non-provisional patent utility and later negotiate the declare scope with the patent examiner. Patent attorneys/brokers are skilled to draft claims they usually perceive the practices and procedures of the U.S. Patent and Trademark Workplace. Having a great set of claims in an issued patent is what could make the issued patent beneficial, as infringement is decided based mostly on whether or not all limitations of the patent claims are met, not simply what’s disclosed within the patent utility. If the claims are too slim, then the claims could also be straightforward for a possible infringer to design round. Conversely, if the claims that challenge are too broad, it might be potential for an accused infringer to hunt to invalidate the claims both via the courts or via procedures accessible within the U.S. Patent and Trademark Workplace (i.e., reexamination, post-grant evaluate (PGR) and inter partes evaluate (IPR)).
3. Over-Describing Prior Artwork
Regardless whether or not somebody is submitting a provisional or a non-provisional patent utility, a typical tendency for do-it-yourself patent candidates is to explain the prior artwork in loads of element, significantly together with constructive descriptive feedback in regards to the prior artwork. All these feedback can typically backfire when the U.S. Patent and Trademark Workplace later examines the non-provisional utility as a result of the applicant’s personal admissions in regards to the prior artwork could present the examiner with the help that he/she must reject the claims, even with out the examiner performing a separate search.
A greater method is to maintain the prior artwork (or background) part of the patent utility to a minimal, whereas disclosing any related references via an Data Disclosure Assertion. A patent utility ought to merely point out what’s missing within the prior artwork and body the dialogue within the context of what the invention provides or improves upon when in comparison with the prior artwork. This may increasingly make it much less probably that an examiner will challenge a rejection, significantly an obviousness rejection, utilizing statements from an inventor’s personal patent utility.
C. Advertising/Commercializing Invention
Usually purchasers don’t look to their attorneys for help in advertising/commercializing an invention as they will typically get higher recommendation on these types of subjects from advertising or enterprise professionals. Nonetheless, the hazard is when purchasers go to a web-based service for help on these subjects, whereas additionally presumably using the net service to judge the potential for patent safety. Each areas might be fraught with issues, each when it comes to the effectiveness of the safety (if any) in addition to the fee.
InventHelp is the commonest on-line service purporting to supply companies to help inventors to market and commercialize their innovations. This service additionally supplies means for inventors to have their innovations evaluated and presumably file for patent safety. Nonetheless, purchasers must be conscious that the prices related to use of the sort of service (typically upwards of $10,000) and the shortage of significant outcomes (presumably no patent safety and nobody within the invention regardless of the funding) could counsel in opposition to use of such companies. In truth, the Higher Enterprise Bureau (BBB) has acquired numerous complaints about InventHelp over time. Many of those complaints and the makes an attempt to resolve the complaints can be found on-line, and reviewing a few of these complaints could help attorneys/patent brokers in higher counseling purchasers of the perils and pitfalls of using such a service.
D. Conclusion
When a shopper is contemplating whether or not to have interaction in do-it-yourself patent safety, an analogy could also be made to a business from a while in the past the place a person is sitting on the desk with a butter knife and the surgeon on the cellphone is telling him how you can carry out the surgical procedure. The person asks: “Should not you be doing this?” A smart query for positive! Getting ready a patent utility by yourself is quite a bit like doing surgical procedure on your self. You’re going to make errors, it’s not a good suggestion and solely in essentially the most excessive of circumstances ought to it’s tried.
Additional, whereas companies resembling LegalZoom or InventHelp could have been created with noble intentions – permitting the general public important paperwork with out substantial inconvenience or excessive charges – utilizing such companies to pursue patent safety might be fraught with threat. However the largest pitfall is that an inventor loses his/her potential for patent safety through the use of these companies, which can be a lack of cash far higher than the price of partaking a patent lawyer to help within the course of.
