Jeff,

It has been 3 years plus since I filed for my utility patent. Man, I wish I knew then what I know now. Through product iterations I have learned many new aspects of my invention…related to material, shape, and component positioning. I still think my original application has significant merit. It has been a difficult process with USPTO…and getting costly.

Are you aware of any means to refile an application…kinda like a do-over?
tx

I’m thinking of asking forgiveness rather than permission.

Dean, you can file a “Continuation-in-part” (CIP) off of your non-provisional patent application. Ask your attorney about it. There are pros and cons of filing a CIP versus a new patent application that your attorney can explain.

John,
Tx for the CIP info…can you reference any approved pats via CIP I can view on USPTO web…that also have original published app in the USPTO web database. This way i could get a feal for before & after.

tx, Dean

I have to disagree. I think the PPA is very valuable, and is demonstrated by the EE show. What we often think is a finished product, is NOT a finished product. Only after it’s really gone through the manufacturing/desing/marketing is it a finished product and THAT is what needs to be protected by a patent.
I’m definitely of the Stephen Key/Roger Brown school that you want a licensee to adopt, redesign, rework and develop the product, and then THEY pay for the patent. Stephen Key has one product that has over 9 US and Int’l patents that he owns, and he didn’t pay for any of them.

The PPA locks in your date and provides you some protection while you find a licensee to work with. If you can’t convince a co. in a year to license your product, maybe it’s not really commercial and it won’t sell. If you still believe you can go ahead and file the patent, probably with some modifications made through discussing with companies.
That’s my 2c.

Dean, check out 7,398,837 selected at random. It has examples of continuations, CIP and “incorporation by reference.” But it is not necessarily a good example of what to do in any given situation. There are many considerations to discuss with a good attorney.

John

John, will do. tx, Dean

Dean, I know that you cannot change the date of your claims. Once you establish them they are set for that date.

Mike, As long as you can establish your claims then I’d go with the non-ppa the first time, unless you are confident that you are only going to do a years market test and are willing to drop your invention.

Another consideration,

In a way, a PPA gives you an extra year of protection. A utility patent lasts 20 from the date of filing, not the date of invention. If you start with a PPA for the first year, you get partial protection for that year. Then, file for another 20 years.
I am not a patent attourney and this is not legal advice, just something to discuss with your attourney.

A CIP will expire when the patent expires. This is the reason a CIP may not be great when you can file a new patent and get a fresh 20 years.

A CIP is much cheaper, that is the advantage.

I had 3 provisionals, two disclosure documents and two utility patents.

I found with me filing a provisional just made me lackadaisical about pushing my invention. It was like putting a year on hold for me. I should have filed a full patent app because I would have got right to it, but that is just me.

It cost me a year because I referred back to my provisional as my priority date. You don’t have to go back to your provisional date, but if you don’t, and someone has the same invention and filed a patent app while you only had a provisional, they win, your patent is gone, ain’t happening. You may try to prove first to invent but a patent app and claims specifically describe the invention in the complete protectable way and not too general like a provisional might be. I wrote my own provisionals, contained no claims as not mandatory.

Other instances…SURE…file a provisional. You can now state patent pending and you can disclose to companies. A provisional is fine, as long as you keep moving forward as if you spent thousands on a patent app.

My personal opinion.

ron Komorowski
Inventor of Handi-Straps
www.handi-straps.com

i agree ron. Except your patents claims are the set date of your provisional as long as you incluce them in you provisional. Still you should go with the non-provisional first.

Those are good points, Chad. But one key thing that changes the conversation is where you’re coming from. How many inventions/ideas do you have? If you’ve got one or two and that’s where you’re going…..I might agree with the route you and Jeff are talking.
If, on the other hand, you’ve got 30,40,50 or more ideas and many of them are of equivalent quality/potential in your eyes there is no way to go your route and realistically have even a small chance to get them done- assuming you still work a day job and want to have some sort of life.
Roger Brown and Stephen Key both have signed a licensing agreement within two weeks of conceiving an idea in their head. For this route a PPA makes much more sense to me. Roger has said that he doesn’t even do PPA’s, as he’d be looking at over 20k for his inventory of ideas! Roger has licensed at least 7 products, Stephen has licenses over 13-14 and they both have multiple patents they didn’t pay for.

Listen…while I have the greatest respect for Roger like everyone else here, and I have sought a personal lesson from him, Roger’s method will not work for everyone.

Roger must be an amazing salesman and be able to display clearly a fine, experienced background and he must be going to smaller companies which I like too.

Johnson & Johnson won’t talk to you until a patent issues!!!! There are many others with that policy too. Generally, without a patent app you are just a guy with an idea…everyone has them.

I don’t think anyone here should try to be Roger for a while.

If you can’t afford a patent, talk to me, my guy charges $3500, office action included and he lives for patents, loves it. He has done so much for me and we have seen him “school” patent attorneys and he is just a patent agent but that will be changing soon so he can litigate patents. He is in law school at 65yrs old.

As far as writing your own, on one patent I started with a patent attorney smack in the middle of NYC next to the Empire State Building. Thought he must be good. He made a mess. I called the USPTO and the supervisor said why don’t you write the patent yourself? I explained it was too big, don’t want to mess up. He said, you can do it…we’ll help you.

The patent office helps independent inventors write their own patents. They are not allowed to write the claims but it seems they find a way to strongly suggest or guide you where you need to be.

The patent office and my patent attorney encourage me to write my own patents. They say it is easy. My patent attorney typically bills me about a 1000 dollars a year up to 3 or 4 thousand so that makes filing a bit easier for me.

And with the PPA vs. the non PPA on your first file. You may want to consider how many people do not license their product in less than 1 year. Thats why i say no-ppa and don’t even mess with it. Besides you still get your protection for about the same price that first year anyways.

I wrote my 1st patent application my self. I did not submit it because I realized that, even though the invention operated as intended, it just would not sell. So, it became my “practice run” at writing my own patent application. The book, “Patent it Yourself” by David Pressman, published by Nolo Press was very, very helpful and insightful.

I 1st perfected my prototype. This is a very important step. Having a refined prototype prevents one from re-writing & re-writing their application. If you make a change to the prototype, you will have to change the drawings, list of drawings, parts list, abstract, description, claims, etc… to reflect your changes.

I completed the Non-PPA 1st, then wrote the PPA based on the Non-PPA. Once you complete your Non-PPA you will already have your PPA. And when it comes time to file your Non-PPA you have guaranteed yourself the benefit of the PPA’s filing date, given that you have not made any changes that would alter the scope of your invention. Hense refined working prototype. The idea was to submit the PPA then approach the appropriate manufacturers/companies. Tell them that I have completed the non-PPA and will submit just before the PPA expires. Doing so extends the 18 month publication date into the Gazette by one year. This allows even more time for a licensed manufacturer to get “one step ahead” of the competition.

I think one of the most important things that I agonized over was the Claims. I reduced it to practice to the point of making my invention a “Method”. A method claim is the broadest type of claim a patent can have. With that, you can say that your invention can be “made of but not limited to glass, metal, carbon fiber or wood”, As long as it performs the function stated by the method claim. It can be any shape, size, and color as long as you point this out in your description and provide examples of such differences in you embodiments/drawings and enhance your independent and dependent claims to reflect such alternates.

Chad,

You think it’s “impossible” for an inventor to have 50 patentable ideas, eh? That is just an absurd statement, sorry.

One question I have, it’s pretty common knowledge that only about 3% of patented products make more money than they cost…..so why is everyone so concerned about getting a patent? I’d rather license a product and get paid and never have a patent than have an awesome patent and not make a dime on it.

Mike, have you seen the data on right versus
rich. Having a patent does not make you right.
Having a great invention makes you rich.

I have a high school diploma and I run my own business — but I must share that I in no way would venture to say that I could have written my provisional application, let alone the nonprovisional, adequately. I’m definitely getting my money’s worth by paying an attorney to do so.

The scope of the claims in my provisional are very broad, as broad as we can get them to allow for any changes I might need to make in my one-year period. My attorney has even thought of an application I in no way really believe it can be used, but she thinks it best we leave it open as an option – okay, and I definitely wouldn’t have included that. lol.

Put it this way, I had to look up a ton of words just to make sure they meant what I really thought they meant. I never knew that furniture literally meant “equipment that is necessary, useful, or desirable” and I’m not making “furniture.” I would have limited myself terribly had I put in there what I thought I should put in there. I would have never used words like “aperture” or “distal” in it either. I have enumerated items on the drawing starting from 10 going to something like 152 – I would have never thought of breaking it into that many parts. I had to set aside a few hours, make a copy for me to mark up, and read while pointing to the pictures and making notes to make sure I could understand what was even being said, and that it was even correct. It has been explained to me that the claims in my provisional hold my spot as being first even if someone else tries to file a nonprovisional before I do on the exact same product (unless their provisional beats mine out).

My decision to go this route involved many factors, my personality, what I’m comfortable with, perceived risk to me, and the fact that it would “only” cost me less than 1/3 of what I fork over for a new car every 10 years. I spent weeks picking my item apart, asking myself how someone could improve it, etc., and that factors into it as well. I also ran my own online search and came up with nothing, but that didn’t mean I did it the right way either. Despite that, I paid to have a patentability search run for me, and my reasoning for that was that I would rather be out $1000+ than going for a full patent that may be denied. That came back patentable and with a plethura of prior art that in no way resembles my product. After that came back and I was playing on the USPTO again, I tried a search again, and came up with a new category that didn’t come back with my patentability search packet either. lol.

I would bet that I would be much better/efficient at performing tasks involved with my next patent much more than I would have on my first, but I dont know as of yet whether or not I would believe I could go it alone on the second either.

I admire those of you for which it works out and those of you with the confidence to go it alone. That’s just not me.

Hi Chris, it was nice talking to you on the phone conference the other night. I believe
whatever you feel comfortable with, that’s what
you should go with. That was a lovely letter
you posted, honest and to your point..

Toni, I don’t know what data Jared is referring to in the right vs. rich question, but I do know that psychology consistently shows the same point. Especially when it comes to money, for ex. a person who bought a stock and then watched it go down is usually radically more resistant to admitting they were wrong and selling at a loss to prevent further loss. They will hold onto the loser stock in hopes of being proven right when it comes back. Literally it turns into a case of it being more important to their view of themselves to be “right” about the stock than to not lose money. That is well documented, and I’ve seen that numerous times firsthand.

Well Mike, I guess I am a horse of a different
color. If my stock goes down more that 10% my
broker sells my stock. I rather have money than
be broke and right.

As far as Chad Mitchell is concerned,
The Prose Inventor who runs the Space Coast
Inventors Group in Melbourne, Fla. to which I belong, and is listed in the Inventors
Digest has 385 of his own inventions in his
invention books.

I myself have more than 50 – so unless you have
data – data- data- I do not think that you can
state that having 50 inventions is impossible.
You would be incorrect.

Great points by everyone here. I personally went ahead and wrote and submitted my own provisional patent and as of July 14, 2008, I can now legally say my invention is “Patent Pending”. I was going to go ahead and go for the non-provisional patent, but I’m not too sure if my invention is going to be a success, so I was told by a friend of mine who is a patent attorney to try the provisional patent and “test” the market first. I’m currently searching for manufactures and writing Marketing Letters. If all goes well like I hope then I will definitely go ahead with the non-provisional patent.

For those who are looking to save money, I recommend checking out www.patentdvd.com. It is there where I was taught how to write my own provisional patent for FREE. The only thing I paid was the $105 USPTO filling fee. The website also has a “paid” course on how to write your own non-provisional patent. The course is taught by Mr. Andrew Knight, and his knowledge and expertise is very valuable.

(I’m not trying to sound like I’m SPAMMING or posting JUNK, just passing along some info that can help newbie inventors like myself save some money on patent attorney fees)

Chad, I said I had over 50 inventions and my
friend has over 385 – I was disagreeing with you
on the amount of inventions that you think is
impossible for people to have.
End of discussion – this is mute……..

Chad, you don’t know me well enough to say I am
hateful. You should ask your friend Chic about
me.
I was just agreeing with what Mike Gibson was
saying about people having 30,40,or 50 inventions.

I do not wish to continue this conversation with
you if you think I am hate filled chatter.

Hi Toni . Wish I had joined in earlier than Question #7 I think it was. lol.

The one thing that worried me about writing my own provisional most was that one of the cons of doing so for “some” people is that they didn’t do it broadly enough, and this supposedly makes additional claims to the later utility more difficult when it comes utility time, if not impossible. I was told it is easier to take away than it is to add at that point. This is why my provisional is being written as closely to a utility as possible. Narrow claims could also leave an opening allowing an improvement that could have been covered by your provisional wide open for someone else to make allowing the other person to patent THAT particular aspect before you discovered you even wanted to make that change. If they get it on that particular addition/change before you, then you cannot, or it won’t even be an option for you. I know this depends upon the patentable portion of your product as well though. I took a step back and asked myself how I would “steal” the idea or try to get away with making it. Someone will probably be able to make my product without the patentable portion(s) on it, but the very potentially patentable specific aspect of mine makes my product universal, and hopefully appear to offer more bang for the buck to the consumer.

Chris, how many claims did you put in your provisional?

Toni, I’d have to run downstairs and locate it to be certain, but I’m thinking maybe around 11 for some reason right now. I submitted my questions to the attorney, whom I love by the way, after reviewing the first draft a couple of weeks ago, so I’m not sure if the next version will have more claims or not. The whole thing is 14 pages long with 10 pictures – around 24 pages in all I think. (forgive me for not running down there to get it – I should be working right now as it is, and we are in the middle of building my new office furniture for my new office down there — I have everything everywhere right now).

Chris, that’s really good to have all those
claims in your provisional. The claims are
the intellectual property.

My non-provisional has 20 claims, my attorney
said the same as yours, it’s better to put in
more that to leave some out. Not all of them
will pass anyway.

Not in those words – lawyer words.
Are you opening a new office in your house?

Chad, you need to figure out which argument you’re making and stick to it. Or admit that your “impossible” statement was ridiculous and exaggerated, which it is.

You’re the only one talking about design patents.

Your “impossible” statement was proven false by yourself…..unless you’re trying to say that there will never again in the history of the world be someone like Edison, which is also ridiculous. You didn’t say that it was “impossible” for someone to come up with 50 patentable ideas that will also be hugely profitable, so don’t try to change it into a conversation about commercial success.

You made a ridiculous point, Toni and I both called it, and you’ve changed it into a couple rambling defenses that have nothing to do with your original erroneous assertion.

I’ve had plenty of this conversation, thanks.

Dude, you don’t know anything about me. How about let’s make these forums worth something positive?

Chad,
You’re incorrect about Edison. He held 1093 patents. Here’s a list of every single one of them: http://inventors.about.com/library/inventors/bledisonpatents.htm

Not all patents are listed in the USPTO database, especially when it comes to older ones. Here’s a link to a list of patents that aren’t included in the database: http://patft.uspto.gov/help/umiss.txt

He and his patents are also responsible for 1/8th of the entire World’s wealth at the moment. I learned that one from the Edison Innovation Foundation but I’m afraid I don’t have a link for the source.

Chad,
I can tell from your picture that you are a REALLY CONFIDENT guy

Toni, it’s not a new office entirely. I’ve been making due and making sacrifices by avoiding the expense of having a proper and adequate in-home office, due to the expense. Mom comes last syndrome. I’ve had enough of making due now though so I’ve given up my computer desk, 3 file cabinets – two 2-drawer and one 4-drawer, another desk, wrapped around me in a U shape for a wonderful new “real” and matching setup. lol. We are redoing the basement also so that my office has its own room with a door as well, rather than a portion. I’ve been working at home for around 10 years now and have always had “office space” here.

Three blonds walked into a bar… you would have thought that one of them would have seen it. Badump-bum.

I think it was a good post but we all have toooo many different opinions. I will be skipping the provisional application for now on. Even if i file myself. thank you all

I think that for someone who doesn’t have a lot of money, wants to save his money for marketing his idea, has a lot of time on his hand, wants to save a lot of money, and/or a combination thereof, he should file a PPA instead of a NPA immediately, especially if he doesn’t have a working prototype yet. He should treat it like a business plan, constantly rewriting or filing for a new PPA everytime he comes up with a new improvement on his invention. With globalization he should keep in mind that there are thousands of people out there who wants to steal his idea. With a NPA, that idea is published and seen by cheats after 18 months irregardless if the inventor is ready with his product or not. These vultures will then pick that application apart and work around the claims to come up with and improvement. But PPAs are different. They’re not going to get published ever, unless you want to file a NPA claiming priority on it. So it is one less worry for the inventor, about being robbed of his idea. But the beauty of the PPA, I thinkd, is when someone else tries to develop and sell a product similar to his invention, then the PPA submitter can submit a NPA with claims that would cause the other person to infringe on his PPA patent, granted of course that the PPA description covers the other person’s product. This is what is known as the "Doctrine of Equivalents’.

For me, I have already submitted 8 PPAs before submitting my first NPA. Even now I still submit PPAs on the original invention after a year of trying to get a prototype to work correctly. If I had gone the NPA route or hired a lawyer I would have been out at least 4 grand (self-done) or 24 grand (lawyer-done) and still not have a product I could make money on. Not only is hiring a lawyer expensive, it can also be a crapshoot. If you have lots of money then make sure you take your idea to a big law firm (more expensive) not a small one. Big law firms have experienced lawyers who can assist the newbies (which they usually assign to new clients) do the patent app. These newbies are maybe well-versed with the basic patent rules, but they may not have any expertise in the field of your invention and therefore it takes them longer to finish your app, which can usually add to the costs.

Jeff Brooks-Bole’s approach is also a very good one. Besides the “Patent it Yourself” book, I would recommend another very good, although somewhat expensive, book, “Patent Claim Construction” by Robert C. Kahrl. The claim is the heart of the utility patent. An improperly written claim will deem your NPA useless and a waste of money. However, keep in mind that the claims must be supported by a detailed description, so it is very important that the description, whether for a PPA or a NPA, be as detailed as possible. In the case of the PPA, it is best that the description will be as superfluous as one can possibly make it. You can always discard the ones you don’t need once you file your NPA. It is not the same the other way around. Although you are allowed to add any new matter when filing a NPA claiming PPA priority, the new matter however will not have the protection of the PPA priority date.

Four years ago there was no USPTO website, today it is chock full of patent info which can be used as examples for composing a patent app. I usually choose the ones written by lawyers. All one has to do is cut and paste the descriptions and images of the ones that closely relate to the invention I want to patent. With the web and Google, it is so easy to plagiarize some of their written descriptions and just make a few changes here and there.

When I search for an invention I usually start with terms found in the Claims section. That way I can have a pretty good notion if I would be infringing on somebody’s patent.

Is a patent good 20 years from the FILING date or from the ISSUE date?

Never mind I googled, its the filing date. Which makes no sense to me, so the USPTO could be crazy busy and my attorney bogged down, but the filing date starts the clock ticking… silly, I vote for the issue date. I also vote that no one can make a product until their patent is granted and I also vote that a patent gives you the right to make and sell your invention. The new USPTO revolution by me.

The USPTO does make extensions/adjustments which result from delays at their end. Specifically, the terms of certain patents may be subject to extension or adjustment under 35 U.S.C. 154(b). Such extension or adjustment results from certain specified types of delays which may occur while an application is pending before the Office.