Hiring a patent attorney to write your patent application is one way of going about it. For those who prefer to save thousands of dollars in attorney fees there's another option. You can do most of the work yourself, from A to Z.

Starting Out

Knowledge, writing skills, and determination. The combination of these 3 elements leads to a strong patent application. And a strong patent application can lead to receiving a strong patent. The first issue that you should face before you start writing lies in the question: What is my invention? or, What have I actually invented? This can be a deceptively simple self-query. You can assist yourself in this area by imagining exactly what you would say, without hesitation, in reply to someone who asks you point blank, What Is It? If you're clear on the answer you'll be able to clearly express the gist of your brainchild in ten words or less. Without pausing, stuttering, or groping for words. If you, the inventor, are unable to accurately say what it is that you've invented, it will be impossible to effectively specify it or draft patent claims for it. Let's say, for example, you come up with a table that can be electronically adjusted in four directions and along various heights and angles. Someone asks you what it is, so you become its spokesman. Your aim is to (1) Tell them what it is, (2) Tell what it does, and (3) Tell how it does what it does. In ten words, you might say that you've invented 'An adjustable table that uses electronically operated joints for adjustment' or, 'An adjustable table that uses electronic joints for adjustment'. You've done it! But what if you should need to tell what your invention is in THREE words or less? This would be suitable for your invention's title, although it could be longer. You could take the first bus out, so to speak, and call it an 'Adjustable Table'. But so is every common wood table with a leaf in the middle. To give it more proper credit, yours would better be called an 'Electronically Adjustable Table', or by some similar short phrase which includes its unique element(s) or mode of operation.

Words For The Wise

An engineer in Texas submitted a technical solution to his superiors. The solution was accepted and eventually filed with the United States Patent And Trademark Office. Around the same time, an engineer in California who had been seeking a solution to the above technical problem, along with his staff of technicians, also filed a solution to the problem with the USPTO. Neither was aware of what the other had done. An extended slap-for-slap lawsuit episode resulted. In this case, the story ends happily for both parties. The dueling engineers were Jack Kilby and Robert Noyce, co-founders of the microchip, who finally agreed to cross license their joint intellectual property.

This example, among many others, highlights the value of starting a patent search as early as possible in the case of every prospective inventor. According to the most current USPTO statistics (not the stats mentioned in the 'Intro To The Patent System' video seen in Part 2 of this hub), the USPTO receives well over 400,000 patent applications yearly, all of which claim "new" inventions. Is it really very likely that NOT ONE of those entries comes close to your own brand new brainchild? The fact being that even Einstein was not the first scientist to consider and publish the basic concept of relativity, it would be more likely that a "new" invention idea has in existence at least one or two significant first cousins or half-blooded brothers, if not one outright frustrating twin. The words here for the wise inventor include SEARCH, SEARCH, SEARCH. Before you fall too deeply in love with your new brainchild, you should search high and low for its nearest kin. The search can be done online @ http://www.uspto.gov; or "USPTO" can be typed into a Google or Yahoo Search bar, and you're on your way. Just follow the prompts as you go. If you live affordably close, you can travel to the USPTO in Alexandria, Virginia and search through relevant patent material free of charge. Public libraries have reference material and Gazette journals which can be browsed for older and more recent patents across all fields. It would be a good idea to photocopy as much of this relevant material as you can in order to be able to read and study it at your leisure.

Because you're applying for yourself, you're in the category of what's called a "small entity" applicant. Your invention is a design idea if it's only about the appearance of an item; if your invention is about using something in a different way it's a utility invention idea. The electronic table idea above is in the utility category, although a design patent for it could be applied for as well. Some inventors are willing to pay the $270 for a USPTO utility patent search, or $50 for a USPTO design patent search. This is a personal decision, but an intensive personal search (whether combined with a USPTO search or not) can produce valuable results if it's well-informed and well-directed. If you would like to have your invention idea professionally evaluated, Wal-Mart sponsors a reasonably priced evaluation program you can look into @ http://www.innovation-institute.com. Other evaluation offers can be accessed by typing "Invention Evaluation Programs" into your Google or Yahoo Search Bar.

Your early search is called a prior art search; it's an attempt to view the category of your invention as comprehensively as possible to determine if or not your invention has already been invented. A great deal of time, expense, energy and disappointment can be spared those who wisely include the search for prior art in their invention program. Your search can help you improve your own invention by revealing the success or failure of similar inventions. It can also provide you a view of the likenesses and differences between your invention and those you review. Searching out and studying related patents can help you understand how patent applications should be written. There is a need to study similar inventions closely. What may seem like a spoiler twin invention may in fact be something widely different from your invention or related but not disqualifying for you. By way of example, it turned out that Noyce and his assistants had pioneered monolithic (whole piece/one unit) microchip technology while Kilby had invented a hybrid microchip technology; the two inventions were very close relatives that legitimately solved a problem by using separate technical strategies.

START WRITING

If your invention is still standing after a thorough search program is completed, you can begin drafting your patent application. Be informed that a Provisional Patent Application allows you a year before you must file a Non-Provisional Patent Application; it's a way to put your bid in before another inventor files on your idea, providing you with an earlier filing date. You can find more on Provisional Patent Applications@ the uspto.gov sites listed below. If you choose this option, avoid taking the 12 month grace period for granted; you should start preparing your application early on within that time period to keep from rushing to meet the deadline and losing your initial filing date. Patent applications begin with a Specification. The Specification consists of the details of your invention. This part of your application requires that you (1) describe your invention and (2), draw your invention. On separate paper, you must also write claims for your invention. After you've written the title of your invention, you'll provide a statement on what your invention is about, such as "This invention is related to....", or "The present invention is generally related to...." Using the above example of the electronically operated table, you could write: "This invention relates to electronically controlled furniture, and specifically to electronically controlled tables". From here you write your researched comments on the subject of electronically controlled tables. You can cite specific patent examples that show the practices common in the field, and you should point out the disadvantages of those practices or techniques. This is called the Background of your invention. It need not be lengthy. It is well to write this Background in layman's terms. There's no need to aim at impressing a patent examiner by using unnecessarily technical or complex language anywhere in your patent application. The object throughout should be clarity and simplicity. For instance, you can use a number of headings within your Specification to guide an examiner along. Include all you need to include, yet avoid being excessive. Patent examiners are time driven. If fewer words will do, there's no value in adding more.

Next you want to highlight the objective of your invention and it's advantages. Avoid two traps here: citing false advantages, and going on forever about actual or perceived advantages. There's no sin in re-stating prior art failings in this section. Holding to simplicity and brevity is still a good thing, though. Furthermore, there's an Abstract and a Summary section to the application which provide opportunity for listing the strong features of your invention. The Summary is in fact your next section of information to be composed. It can be briefer than your Background, since the objective of your Summary is to sum up the essential features of your invention. With our electronic table we might summarize as follows: "In order to accomplish the objective cited above, the present invention provides a table with an electronically adjustable leg. The tabletop and its leg are adjustable throughout a range of variable heights and angles by means of a pivot joint and vertically adjustable concentric tubing. The table leg joint and concentric tubing are mobilized and controlled by a variable electric current".

A description of the drawings of your invention should be introduced next in your application under the title "Drawings", or "Brief Description Of Drawings". Your drawing descriptions will be numbered, beginning with "Fig. 1", in consecutive order. Using our electronic table invention, you could write: "Fig.1 shows a profile view of a table leg joint. Fig. 2 is a plan view of a table leg platform", and so on. In your final draft each "Fig." is typed directly beneath where "Fig. 1" is typed, lined up with it at the left margin and double-spaced down from the last line of each "Fig." description.

The next section of your patent application contains your "Detailed Description" of your invention. This is an extremely important section. Only your Claims will be more critically important to the outcome of your patent application. The most crucial support for your claims will be based on this part of your Specification, and one must support the other. So your Detailed Description of your invention must CLEARLY AND COMPLETELY state and describe the physical elements of your invention. It must also thoroughly describe exactly how your invention operates. If you're filing a Non-Provisional Application you will not get a second chance to add key elements of your invention in that application, because PTO rule 118 says no new matter is allowable for an application that's pending examination. And if your Provisional Application prior to that one fails to include a key element of your invention, that too could be a problem later on, with negative legal ramifications. The figures in your drawings give you a starting point for your Detailed Description. For example, "Fig. 1 shows a profile view of a table leg joint. Table leg pivot joint 1 is shown with pivot joint areas 2 and 2A". If there's anything else to the joint or the table leg (such as the platform under the leg for table stability) you cite those elements too, by name and number/letter as above. Do this with each part of your figures until you've described all the structural features of your invention. Be careful that your part names, numbers and letters don't get mixed up, changed, or interchanged along the way. Your description should be presented as the preferred representation of your invention. You can refer to it in various places throughout your application as "the preferred embodiment", "the presently preferred embodiment", or write "In the present embodiment" when you're introducing some feature of the invention. This phrasing shows that you're not limiting yourself to only one version of your invention.

You will next need to thoroughly describe how your invention operates. The parts must be seen as working elements of the whole. Your description must make it possible for anyone with basic capabilities and knowledge in the field of your invention to make and to use it. Try hard to think of other significant embodiments of your invention; a different material or mode of operation for example. If you do, they should be included and you should do the same descriptive work with them. Otherwise, your invention can later be improved upon by competitors with no legal recourse available to you. Which takes us back to the microchip. In his Specification, Jack Kilby lightly mentioned the possibility of a monolithic microchip solution. Yet he failed to describe or delineate its structure--to specify it--in his application, and did'nt draft a single claim which applied to that technology. Robert Noyce, his nearest competition, effectively specified AND claimed the planar, monolithic microchip solution in his patent application. Kilby filed an interference lawsuit. Though Kilby was on record as having filed his patent application before Noyce filed his, Noyce could not be denied his part of the invention, and became the co-founder of the microchip technology upon which all current technology in that field is based.