Professor Demchick's Blackboard

Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.

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IS IT POSSIBLE TO PATENT IT YOURSELF?

Yes. However…

Being a do-it-yourselfer has advantages. It can save money. There can also be a sense of satisfaction if the job comes out well. This can be true about changing your cars oil, building a bric-a-brac shelf, or filing your own patent application.

However, being a do-it-yourselfer has potential drawbacks. If done wrong, the waste and damage can quickly claim more money than you were hoping to save. There is little satisfaction in making a travesty of a project. This can be true about changing your car's oil, building a bric-a-brac shelf, or filing your own patent application.

If the shelf rips off the wall and spills valuable breakables onto the floor, you would likely have been better off hiring a carpenter. If you spend the time and money to apply for a patent and end up destroying your rights to your invention, you would likely have been better off engaging a registered patent practitioner.

Inventors do successfully navigate the confusing rules of the patent world. However, it is important to remember that getting a patent is relatively easy. Getting a strong patent, a patent worth having, is the hard part. A weak patent is an expensive piece of paper. Often pro se inventors (inventors representing themselves) think they won because a patent issues. It is only later that they realize that the patent they have gives little protection.

Inventors who are good at writing and who read about how to craft a patent application can often do well describing the invention. However, many have difficulty developing good claims. Often inventors without a representative write claims that are allowed by the patent office, but which give very little protection for the patent holder. Again, the hard part is getting a patent worth having.

On the patent bar exams, there are questions about an inventor asking a patent agent for assistance after the inventor started and made a mess of the application process. The questions are essentially: What, if anything, can be done to fix this particular disaster? It is not surprising that bar exams have questions of that sort. It is not uncommon for patent agents to be confronted with that sort of situation. Unfortunately, the inventor has often spent a lot of time and money and is in worse shape than if nothing had been done.

Here is some information from General Information Concerning Patents (2004, United States Patent and Trademark Office)

"The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO or Office) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.

"Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

"Most inventors employ the services of registered patent attorneys or patent agents. The law gives the USPTO the power to make rules and regulations governing conduct and the recognition of patent attorneys and agents to practice before the USPTO. Persons who are not recognized by the USPTO for this practice are not permitted by law to represent inventors before the USPTO. The USPTO maintains a register of attorneys and agents. To be admitted to this register, a person must comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree."

If you decide to represent yourself, please read-up and be careful. As one do-it-yourselfer to another, I wish you success.

If I can be of service, please feel free to contact me.