I filed my own provisional patent, an exciting learning experience…lol The researching of other similar patents almost wore out my hard drive.

Then, 11 months later I hired a professional patent atourney so as to have less problems down the road. I was honored when I read her copy, she quoted me a couple times,,, :)

I received emails in response to this post – one of them asked me not to submit/ file a patent before I discussed it with him further – because after seeing my idea – he said, his invention was too similar to one of his that was ready to be shipped. To that person – I would like to say, “I won’t file a patent on this invention.” I believe you and I will not pursue it any further.

To the rest of the emails that offered their assistance – Thank you! Your advice and offers were greatly appreciated – However, I must decline.

To the first – I really do admire, respect and want to be like you in your convictions – You are very talented. I wish you continued success!

Thanks again all – Sincerely!

Absolutely agree Frank.

One other good reason for using a lawyer. There are many legal terms that a layman wouldn’t understand how those words can change a meaning legally.

As Frank says though with all those YOUs…make sure you write down everything any anything pertaining to what your invention does and “could” do….so hopefully someone has a pretty hard time getting around your patent. I used to have a guy in my family who’s sole job was to figure out ways to get around patents.

Happy Thanksgiving everyone. Good pic Frank.

Jeff, I think it may be more due to the fact that I am considering the INVENTION itself…. like in your example, if someone
did come up with a heating pad for my 5-legged office chair in the 12 months, I indeed would not be able to Claim that
variation, but, THEY will not be able to use their heating pad in MY invention unless they pay me a royalty!

The Invention and as many alterations as you know at the time should be in the Specification of the PPA… anything
later is part of the INVENTION itself and useless without it.

I agree, if one can afford it, hiring a lawyer do do the PPA is recommended, but YOU are the final authority on
YOUR invention… YOU know more about it than anyone… YOU are going to be the one who explains it and any
variation to the lawyer.

No legal advice here

It all sounds very complicated…I’m seriously considering going halves with someone who has the funds and experience to get this done. Let me know if anyone with a success record is interested – please send me an e-mail if you are. (NDA of course would need to be signed). Yes, I could go through EN – but, this idea is one of those that speed is of the essence – otherwise, I would.

Thanks again everyone – this seems to be way out of my scope of know how.

Andrea, has anyone told you your avatar pic looks like Rosie O’Donnell! Nice!

Your answer to the Patent question seems like the best one for someone submitting an idea here at EN. I am fairly sure that EN will Protect the idea as well, being that if it does get picked up for production, EN has a Interest in it as well and will do everything they can to keep the product protected..of course, no one can stop a Pirate from stealing it once it is out in the public eye!

Should someone even bother with a patent at first unless a manufacturer shows a real interest in your product? Why waste your money if the idea isn’t really that good? Isn’t an IP just as good to start with? I am sure if someone(China) wanted to rip us off, nothing will stop them once the product makes it to market or even at a trade show! Pirates are everywhere! But, if it is a good idea, what are the steps to give your idea some protection?

Frank I think your confused as to what I said. I’m saying that she should have it professionally done by someone who knows what their doing, because if she doesn’t claim something in the original PPA and someone else does in that year…she can’t claim that in the NPA.

In your example, if someone in that years time between the PPA and when you file your NPA someone else comes up with an office chair that has a heating pad…you CAN’T claim that in your NPA.

If someone else can explain my point better, please go for it. We’re actually agreeing Frank, but your missing my point.

this is not legal advice

Think of it like this, Jeff….
I file a PPA for a five-legged office chair with wheels and a backrest.
During the next 12 months I design one without wheels,
…one with armrest,
…one without a backrest,
…one with a massge unit inside a low backrest,
…one with a " " " " " " inside a HIGH backrest,
…one with a heating pad,
…and one with a swivel seat.

In the Specification of the NPA I describe the accessories, and I write Claims for them.

The five-legged office chair is the INVENTION, and the common denominator between the PPA and NPA.
I didn’t note any of the alterations in the PPA (because I hadn’t came up with them when I wrote it), but
I am authorized to in the NPA (adding new Claims) as long as they are fully described in the NPA’s Specification.

Another cute little item to remember; explain ALL alterations/variations in the NPA’s Specification… some you may not be
able to get an Allowed Claim for, but because they’re in the Specification, they are being “Taught”, thus become
“Prior Art”, thus preventing anyone else from getting a patent on them!! <;-)

Thank you Papajim! :) Happy Thanksgiving…God bless.

Frank hit it on the head when he noted that claims can be added, modified, or dropped during the examination process. You can add or modify claims if they’re related to what’s in the specification and you’re not allowed to add anything to the specification once it’s submitted. So as long as a new claim relates to what’s disclosed in the PPA or the non-PPA specification it’s fair game to add the new claim or modify an ‘old’ claim to possibly make them broader in scope, or unfortunately narrower in scope if it’s necessary to conform to the Examiner’s rejections/objections. However, if you write a new claim that’s not disclosed in the PPA and only in the non-PPA specification, the Examiner may have a problem granting the early filing date of the PPA. So yes, the writing of the PPA is crucial because you have to take into consideration the possibility that new claims (or modified ones) may have to be written during prosecution of the non-PPA. It’s best to be prepared for the worst!

Thanks Frank and Jeff. :)

I guess I said that wrong. What I meant is only what you claim in the PPA is protected in the NPA. Anything new you claim isn’t protected in the PPA if it wasn’t there. So my point was that it’s important to use someone who knows what their doing, because if you don’t put in the right claims with the right legalize, you could lose your chance at the filing date protection of the PPA. This is from the USPTO’s site explaining my point….“The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.”
(http://www.uspto.gov/patents/resources/general_...)
I agree about the searching…you can’t do enough of it.

Jeff wrote: “but you can’t add something to the final that’s not in the PPA.”

Where in the USPTO’s directives does it state that?
As long as any additional features “relate” to the invention and the contents of the NPA’s related claims are
covered in the Specification, it is allowed.

Infact, I added two uses/designs to the NPA that was not in the PPA, and because of prior art
conflicts discovered by the Examiner, it was the new uses/designs that turned out to be patentable.
(I had two professional searches done and spent at least six months searching myself, then
the Examiner pops up with four that conflicted… one almost exactly… had it not been for the
additions, that would have ended it)

Michael – I guess I lucked out and got a good Examiner because he seemed to go above and beyond
in his efforts to help me, to include wording one of the Claims himself (another perk of doing it pro-se)

Andrea put it best… “it’s a personal journey”
Wow, THAT’S the truth if there ever was one!!

Yes, I have done a quite a few gov. patent searches, Google, by name, type, product, main features, companies that might carry it, etc… Can’t find it anywhere.

Thanks again Margaret, Michael, Andrea

Lisa, if you need a good lawyer, let me know, mine is great, sometimes slow, but has helped me file many…he can also do a deep dive into IP, but that will cost you…the one thing to remember is that NO ONE not even an attorney can tell you if your product will “receive a patent” so if you are working to in file a PPA what is your reason?? Just to have it? To shop the idea? To eventually put in a NPA?? You do not need one if you are posting your ideas to EN but that 12 month of “feeling protected” while you do something with it may be worth your while…it’s a personal journey and only one you can decide on why you need it!! :)

Hmm…seems that the link I provided doesn’t want to work.

Anyways, easy enough to Google.

Lisa,

When you say you’ve looked, are you doing a patent search?

Thank you Michael and Jeff. I’ve looked and looked – but, you’re right – will look again to be sure there is absolutely no way it’s out there…hope not.

Frank I wasn’t giving any legal advice. I said she should have someone else do it. As for the part about the claims, you might not have to actually write out the claims in a PPA…but you can’t add something to the final that’s not in the PPA. As for a commercial patent search…I paid for one that came out good, only to find the exact patent at a later date. Might be a good idea to search yourself first, before spending the money.

This is not legal advice

Great information Frank! and Margaret!

Lisa, as far as books on the subject of writing your own patent, I think that this is one, if not the best;

http://www.nolo.com/products/patent-it-yourself-PAT.html

I used my old tattered copy to file a utility patent and actually enjoyed the process…especially the claims. The claims are the most important part of a patent and I wanted to make sure they said exactly what “I” wanted them to say.

The patent office was fine with everything I did (including the drawings). The only thing that I had trouble with was my examiner spoke such poor English, that our conversations concerning prior art became a confusing issue. The same month that he agreed to allow my patent, he was let go and my patent file was given to another examiner who opposed my final appeal based on prior art that had not even been presented before.
BTW, The “new” prior art was a pair of gardening sheers and my application was for a wrench…what a mess…
A year later, I had a local friend file for a patent on his own and his examiner helped him re-write the parts that he thought would help him get around prior art. A lot of it comes down to who your examiner is.

Just remember Frank’s three points at the bottom of his post and I couldn’t agree more about having a professional search done.

Good luck Lisa!

Wow! Thanks Margaret and everyone for all the info. It is all greatly appreciated! Happy Thanksgiving everyone and God Bless. :)

Lisa,

I filed a PPA with the help of an attorney last year. For $500 he guided me through the process and filed it electronically. I wrote the bulk of it and provided drawings, then he took everything and translated it in to legalese, formatted it properly, and wrote the claims. He did a very thorough job of guiding me through everything and the process took a couple of months. The book Patent it Yourself was a great reference too. I did not have the budget to have him file the NPA this year, so I basically took the PPA and did what it took to make it an NPA. I would have preferred to use the attorney, but I just didn’t have the budget. I filed it myself using the Missing Parts Pilot Program so the bulk of the fees would be deferred for a year. That required making some additions to the PPA, and completing some additional forms. The Inventor’s Assistance program at the USPTO was super helpful sorting through all of that. They told me which forms and fees I needed and answered all of my questions. Whether I did a good enough job for my patent to be worth a hill of beans remains to be seen. But I had to make a strategic decision to file it as my PPA was expiring. It was either do nothing or do it myself. If you have any questions, feel free to send me an email. I’d be happy to share what I learned.

Thank you Frank.

Here’s the corrected links:
35 U.S.C. §111(b)

Page to become intimate with

Thank you Frank. I appreciate the advise.

Understand that I am not offering legal advice; I filed my Provisional via LegalZoom.com, but filed and prosecuted the Non-Provisional pro-se, and the Ultility Patent was subsequently Issued. EN member “Ralph” and a few others I think, have also filed themselves.

Jeff,

One of the things you’re going to discover about the forums is, never, EVER proceed on advice concerning the Patent Office/Patents unless you verify said information on the official USPTO site/documents, thus, I’m afraid you’re mistaken about “Claims” on a Provisional Application;
“Provisional Patent Applications, under ”http://www.uspto.gov/web/offices/pac/mpep/docum... U.S.C. §111(b), does not require a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It (a PPA) ONLY provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied in connection with the description of the invention.“
Go to ”http://www.uspto.gov/patents/resources/types/pr... SITE and become intimate with the information it contains!
Be VERY careful when someone says; “I had lunch with a patent attorney and he said…” or “A friend knows someone in the patent office and he said…”: Get your information DIRECTLY from the USPTO regardless because there IS a specific rhythm and rhyme to it all, and if that is not followed TO THE LETTER, one’s money will be wasted on a junk document.

Lisa & Kacha…. Yes, there is a lot of forms and you can do it yourself BUT, unless you know exactly what you are doing I wouldn’t attempt it. Many who have some type of services/CD’s to sell will tell you the descriptions in the Provisional have to be EXACTLY like those in the Non-Provisional, but that is not true; infact, the PPA is never examined on its merits, so as long as it generally describes your invention (someone could compare the PPA and NPA and tell they were about the same thing) you will be good to go.

The first thing you SHOULD do is determine as best you can if your product is marketable.
Secondly, determine if your product would have MASS or NICHE appeal and its Shelf Life. (many items sell good for a short period of time; like a toy for instance or a novelty item, in which case, the “shelf life” would be over before the patent ever had a chance to issue…. if the product is “EVERGREEN” however, it will continue being a good seller year after year)
Thirdly, if the product meets the above criteria, I highly advise having a professional Patent Search conducted…. this could save you much time, money, and disappointment down the road.

I used LegalZoom to file my PPA for $324…. they send you a questionnaire to complete about your invention and use that to construct the PPA. They file it for you and send a copy of the document for your records, then after a few days you’ll get a notice from the USPTO that the application has been recieved; it will include a number and authorization to use “Patent Pending”.

You are very welcome! I hope it goes well for you, enjoy the journey!

Thank you so much Penster! :)

There is a great deal of information on this in the forums, the little search button above is great. Here is a thread with a lot of information.

http://www.edisonnation.com/forums/patents/topi...

Good luck to you!

Thank you Jeff for the info.

No, this is for a specific company looking for a specific idea/ invention. I came up with something but, I don’t just want to submit it without some kind of protection. I’ve looked and looked and there isn’t anything out there like it anywhere. Kind of a spooky feeling and I’m very nervous about it.

If you don’t know how to write claims, you should hire someone to do this. Someone mentioned going through legalzoom.com a while back, but I’m not familiar with them. Your patent’s only as good as your claims and you have to use the claims you use on a PPA that you do on your final patent. Also, EN doesn’t require a patent or a PPA, so you do have the option to just submitting it and they would handle getting it if they chose your submissions. Also, if they didn’t…you still could get a PPA at a later date as your not publicly disclosing your submission.

Yes, me too. I would love to file patent myself as well.
Is there any step by step guide to follow?
I tired to do some research but I found it was very confusing.

Thanks