13. Minimizing Legal Costs
Research the Market:
First you should research the market thoroughly! Doing so helps establish whether your invention is worth the time and considerable amount of money you will be investing in it. Readily available sources of technological and market information include the following:
- yellow pages (for retailers, distributors, and local manufacturers)
- Thomas Register (for manufacturers on a national and international level)
- the Infotrac and ProQuest CD ROM Systems at your local public or university library (for magazine articles which feature similar products or which discuss the particular problems that the invention seeks to solve)
- the Reader's Guide to Periodical Literature (for magazine articles)
- Annual Survey of Manufacturers (for national sales figures by product type. Look here to get an indication of how big the market might be for your invention)
- catalogs and brochures of retailers or suppliers carrying similar products (here you may find patent numbers which you can use as a starting point for your patent survey search. You should also find information about potential competitors or licensees).
Inventors often overlook one method that is sometimes very effective in obtaining information about competing products. A phone call to the local distributor of products similar to the invention can be a gold mine of information. If you indicate your interest in purchasing a solution to your problem (the same problem which your invention solves), a knowledgeable and service-oriented salesman should be able to tell you what products are currently available that would help solve the problem.
When you are a potential consumer, the salesman will usually be happy to supply you with brochures on the various alternatives.
Although market research bears upon whether or not an invention is patentable, it is not within the scope of a typical patent search. A patent search is just that--a search of patents, and nothing else. Therefore, despite the fact that the results of a patent search may indicate that your invention is patentable, the invention will nonetheless be unpatentable if anyone offered the same invention for sale, published an article about the invention, or disclosed it publicly prior to the filing of your patent application.
Unfortunately, just because someone else didn't try to patent a certain invention, this does not guarantee you the right to patent the same invention.
You Should Perform Your Own Patent "Survey" Search:
Unfortunately, you cannot significantly reduce the likelihood that someone else has patented your invention merely by checking the Sears catalog, researching the market, and browsing through shops at a mall. However, doing this, in conjunction with performing a patent "survey" search, will enable you to more confidently invest your hard-earned money in a formal, professional search.
The primary advantage of your performing your own patent search is saving money so that you can afford to pursue this hobby even if your first effort fails. Inventors rarely ever just come up with one invention, and that one invention succeeds. Successful inventors are constantly inventing; they have made a long-term commitment to it. One major problem though--it is an expensive hobby. Patent attorneys are some of the highest paid professionals.
As I already mentioned, of the inventions for which a patent practitioner performs a patent search and writes a patentability opinion, about half are not patentable.
Assuming that you will pay a patent professional $1500 or more for each "dry-hole", it is clear that if you are a prolific,
although not-yet-successful inventor, you have much to gain by increasing the probability that the search will return favorable results. You can increase the probability significantly by pre-screening your inventions through the performance of your own patent survey search. If you do this, you'll be doing the patent practitioner a favor as well; I do not know any patent attorney who likes being the bearer of bad news, much less when the bad news comes with a $1000 plus price tag!
Once you begin your search, I recommend that you follow through with it even after you find a patent very similar to your invention. Then, when you think you've found all relevant patents, pick up the most similar patent and look at its "References Cited" section. The Publications Division of the Patent and Trademark Office places this section on the first page of the patent, and lists all patents which the examiner or the applicant cited during the prosecution of the patent application (see Appendix, exhibits A or B). Now make copies of the most relevant patents, and examine them closely.
[You will have to use the microfilm copier, so bring plenty of dimes with you].
If you already found most of the patents in the "References Cited" listing, you probably did a good job with the search.
On the other hand, if you find that you failed to uncover several relevant patents, you should probably start your search again.
In rare instances, it may not be worth your time to perform a patent survey search. This may be the case if you are familiar with the technological field of the invention, the field is less than two or three years old, and there are no similar products currently on the market. These facts may justify your making a request that your patent practitioner not do a patent search. You are incurring a risk here (as always), but the risk may be small enough to justify going forward with a patent application. Confer with your patent practitioner and go with his advice.
Be Prepared for the First Meeting
Although the first meeting with your patent practitioner may be free, it is up to you to make it productive--one that is more than just a personal introduction. To this end, I recommend that, prior to your first meeting, you complete the "Invention Disclosure to Attorney" (the "IDA") found in the Appendix (Exhibit C), and give it to the attorney during your first meeting. The IDA asks questions which the patent practitioner typically asks in this first meeting. In addition, provide the practitioner with patent search results. Doing this should increase the meeting's productivity, and earn the patent practitioner's respect.
Better still, mail the IDA and the search results to the practitioner well in advance of the meeting. If you do, attach a cover letter that includes a statement acknowledging your awareness and appreciation that the first meeting is without cost,
and that you are supplying the enclosed information for the practitioner's benefit, should he care to review it prior to the first meeting. If the practitioner has not reviewed the information at the time of your first meeting, nothing is lost. If, on the other hand, he has reviewed the information, you will then have a more productive meeting at no additional cost. In addition, his reviewing the information prior to the meeting indicates that the practitioner places a significant value on your time. This is an important indication that the practitioner believes his purpose is to serve you, the inventor, and not vice versa.
Provide the Patent Practitioner with a Rough Draft of the Patent Application:
If the search results yield patents similar to your invention, you may use one or more as examples to guide you in preparing the patent specification. Your example patent should be one which a patent practitioner has written. The Patent Office allows inventors to recognize their patent practitioner by allowing the practitioner's name to be printed on the first page of the patent, just above the section with the title "Abstract" (See Appendix, exhibit A). Therefore, choose an example patent on which the Patent Office has printed the name of an attorney or agent.
I recommend that you refer to a how-to reference manual, such as "Patent It Yourself", for step-by-step instructions on how to write a draft patent specification. Your draft should contain descriptions of all practical configurations which you envision your invention may take.
You should prepare the draft of the specification, including the claims, on a word processor, and then copy it onto disk.
Once you give the patent practitioner your draft patent application, you should ask him not to prepare or submit formal drawings with the application. For filing purposes, the Patent Office accepts informal drawings (i.e., clean and descriptive sketches). The Patent Office does not require formal drawings until the Patent Office indicates that your invention warrants patent protection.
You may Prepare, File and Prosecute the Application Yourself
In the short term, the least costly way to prepare and file a patent application is for you to do this yourself. However, today's cost savings may become tomorrow's expense. The Patent Office maintains that "while it is possible for a layman to successfully prepare and prosecute a patent application, it has found that the complexity of the laws, regulations
and formal application requirements are often misunderstood or misinterpreted by the persons who are untrained and unfamiliar with the patent process. The misunderstandings or misinterpretations often lead to errors which are costly, if not impossible to rectify"(emphasis added).
Because of this, the Patent Office "strongly advises prospective applicants to engage the services of a patent attorney or agent" (Basic Facts about Patents, Government Printing Office).
If you absolutely cannot afford to hire a patent practitioner, then your only choice may be to prepare and file the application yourself. If this is the case, I strongly recommend that you purchase a recently published reference book written by a patent attorney. An example of such a book is "Patent It Yourself" by David Pressman. Patent It Yourself is relatively thorough. As such, it can be intimidating. However, if you want to do a passable job on your own application, you must use a good reference, and follow its directions carefully.
If you have any other questions whatever, please do not hesitate to call me. You can reach me at +41 71 230 1000. Thanks again. I hope you found the Patent FAQ worthwhile.
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