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Should You Patent an Invention Yourself?

By Edited Nov 7, 2016 2 6

Many people have the dream of inventing a great product, obtaining a patent, and making a lot of money. For the individual inventor (someone working on their own without the backing of a large corporation), the costs of obtaining a patent can be prohibitive. Fortunately, the U.S. Patent and Trademark Office provides a break on filing fees for "small entities". An individual inventor qualifies as a small entity, and thus pays a lesser amount in filing fees than a giant corporation does.

Filing fees are only a piece of the equation, though. One of the bigger costs of obtaining a patent are attorneys' fees. You are not required by law to use a patent attorney to file a patent application. This leads to the obvious question of whether it is realistic to try to patent an invention yourself, without a patent attorney.

There are numerous guides, books, websites, and other materials to assist you through the process to patent an invention by describing your invention, filling out the necessary forms, and other details, so I won't describe that here. Rather, I am offering some of my own thoughts based on my own experiences of obtaining patents, and leave it to you to decide whether you want to pursue obtaining a patent on your own.

I think it is necessary to fully disclose my background and experience level in order to let you decide how to weigh my thoughts against your own situation. So, a bit about me. I am NOT an attorney. Nor do I have any desire to be an attorney. I don't stand to gain anything from your decision either way of whether or not you choose to use a patent attorney or not when you file your own patent application. I am a regular guy like you who likes to invent and has sought patent protection for some of those inventions. I have applied for four patents, plus a provisional patent (more about that later). I have received three patents out of those four applications. I invent both at my work, and at home on my own. As a home inventor, with my financial resources, it is not feasible for me to go out and purchase the services of the best patent lawyers money can buy. When I seek patent protection on my inventions where I work, we use patent attorneys.

I think I am a bright guy, and that I can follow directions well. Consequently, I have looked in considerable detail at the process of applying to patent an invention myself. The process is rather straightforward. There are forms to fill out, and required bits of information that you must provide. You must provide information about "prior art" that is relevant to your application (that is, you need to reference other patents and other products that have any bearing on your invention). You provide drawings and diagrams. The patent office requires that you follow certain guidelines in how you do these things, but, hey, both you and I are good at following directions, right? So – I was pretty convinced that I was ready to patent one of my own inventions at home by myself. Then, I came up with an idea that my employer thought would be patentable, and lucrative to patent. So, I began the process at work with a very prestigious patent attorney. THAT was truly an eye opening experience.

The process started with an interview where the attorney had me describe the invention. All along the way, the attorney was carefully crafting language to present in the patent application. He was also very forthcoming when I asked him why we want to describe things using those words as opposed to these words and so on. His responses were VERY compelling. Going the other direction, though, there were things he wrote that I questioned and suggested a different wording for, and in some cases he said, "no" because of this or that reason. They were valid. On the other hand, he did say some of my suggestions strengthened the application. It was clear that he had been through this many times before, he was expert in the area of the invention, and he had a great track record of obtaining patents.

So, we submitted what I believed was a very compelling patent application. It was clear to me that it was far superior to what I would have done had I done it own my own. But, then came the next part of my education – Office Actions. An office action is where the patent office responds to your application, and to which you can respond back, This was where I realized, point blank, that I was out of my league if I would have done it on my own. The attorney knew exactly what the office was getting at, and how to best respond to the office action. In the case of my first office action, it was that the examiner was asserting that we were neglecting an important piece of prior art, and that that art would disallow my patent. We had looked at that prior art and had even mentioned it in our application, and described how my invention was different than that prior art. The examiner disagreed. Consequently, series of correspondence transpired between the examiner and the attorney over whether that prior art disqualified my application. I am convinced that had I been on my own, without the experience and expertise of the attorney, I would have lost that battle. The attorney even convinced the examiner that the examiner didn't understand the distinction, so we got a different examiner. I know my own limitations, and I realize that I wouldn't have been able to pull that off on my own.

I mentioned that I successfully procured three patents from four applications. So, what went wrong with the fourth application? Office actions, that's what went wrong. It was the same back and forth with an examiner. Each office action costs in fees and in attorneys' costs (if you are using an attorney). Although both I, and the attorney believed that the examiner was wrong, and that we could ultimately prevail and receive a patent, my employer, wisely, decided to end the outward flow of money on that application. The potential return from that patent wasn't sufficient to warrant the amount of money being spent on the patent. This was also a great lesson for me to learn (with someone else's money).

So, is my verdict that you can't patent an invention yourself? Absolutely not. Would I try to patent one of my own inventions on my own? That depends. I was in the process of beginning a patent application of one of my own inventions right before I started through the process at my work. I had even filed a provisional patent application on my idea. (A provisional patent application is a simple, low cost way to protect your idea before you go through the process of filing a full patent application. They are useful if you need protection in a hurry, like, for example, if you need to show your invention at a trade show and don't have time to go through the full patent application. The provisional patent isn't examined. It is primarily to buy you time so that you can disclose your invention, and to have time to determine whether it is financially wise to proceed with a full patent application. If you don't file a full application before the expiration of the provisional patent, it is dismissed.

I decided during the provisional period that it was not worth the investment to proceed with a full patent application. So, that application expired.

During the provisional period is when I started working with the attorney via my job. I decided that for me , if I had an invention that I thought would be truly lucrative, that I would do whatever it took to get strong assistance from an expert attorney. I DO believe that I could probably get a patent on my own, but there is another factor to the whole process that needs consideration. That is, it is important not just to GET a patent, but to get the RIGHT patent. The attorneys I worked with understood those very nuanced decisions between crafting the application in a way that was so narrow that someone else could "invent around the patent", or, conversely, so broad that it would not be enforceable even if granted.

Again, every circumstance is different, and your skill sets may be very different than mine, but for me, I learned through my experience that I would be in a much better place if I rely on expert advice and experience than to try to do it on my own.

In the grand scheme of things, I have very little patent experience, but I would have liked to have chatted with someone who had been through the process, had considered doing it on their own, gone through the legwork and research to learn what needed to be done, but had also successfully filed with, or without professional assistance.

Hopefully this article has given you some things to think about and consider when making the decision of whether to patent an invention on your own or not. If you DO decide to use an attorney, it is critically important to pick the right attorney, and that is a whole different conversation.

Good luck with your invention and the patent process!

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Comments

Aug 26, 2010 9:20am
divaonline
Completely fascinating article, well worth the long read. Getting the RIGHT patent may be the most critical point. If someone can write around your patent, then you may have wasted a lot of time, money, and effort. Your experience is valuable to others. Thank you for sharing it.
Oct 27, 2010 10:50pm
aguy
Hi Divaonline,

Thanks for your comment.

It is good to know that someone is reading these articles.

I am guessing you are an inventor yourself.

Let me know if you decide to patent something and how it goes.

All my best,

-Aguy
Mar 13, 2012 12:14am
Misskate
I was researching about this a few months back and it was a big headache that i ended up just giving up. Interesting read.
Mar 29, 2012 7:26pm
aguy
Yes - it is a lot to think about. Sounds like you must be an inventor! Good luck with your ideas.
May 5, 2012 10:46pm
southerngirl09
I have also considered filing for a patent on my own. But after reading through the procedure, I put that idea on the shelf. The provisional patent sounds like a good way to protect your idea while trying to sell it to a manufacturer. I appreciate the information.
May 11, 2012 1:16am
aguy
It's awesome to learn you are an inventor.

Thanks for stopping by!
May 11, 2012 1:16am
aguy
This comment has been deleted.
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