Is it practical for a novice to successfully file a patent without hiring a patent lawyer?

46

20

I am an undergraduate student in the US, and have come up with a (hopefully) patentable idea independently of my studies. The upside of that is the university cannot claim any rights to my invention; the downside is that I cannot take advantage of the university's legal help for navigating the patent process.

I have no prior experience with filing patent applications, and only know what I've found through websites and talking briefly with an academic adviser. From what I have learned so far, anybody can file a patent by themselves, but it is likely that either a) it will be rejected, or b) the patent will be granted, but might be worded such that workarounds could easily (and technically legally) be executed based on the idea of the patent with a different implementation.

Some quick research into law firms and individual lawyers specializing in patent law in my region shows that it could easily cost me up to $10,000 just to get an application filed, and that's without any guarantee of it actually being accepted. As a college student, I can't really afford that cost.

Are there any practical and affordable options for individuals who have little to no patent experience and coincidentally have little to no capital? Are there reputable sources of advice/guidance that are cheaper than a full-fledged law firm that can still guide the writing process? Alternatively, is it possible to write a patent application oneself without legal assistance?

nhinkle

Posted 2012-09-08T06:53:11.493

Reputation: 330

It is possible for an individual to file their own patent without counsel but if possible have a patent practitioner write the claims. Claims matter and the PTO is persnickety about semantics. If you use the wrong word in a claim it could have a disparate impact later in filing or litigation. You are more likely to be able to do this with an individual practitioner that a large firm. – A. K. – 2018-07-26T12:59:20.360

3What you've learned so far seems correct to me. My suggestion is to approach your university's legal department and see if they'd do the filing, in return of course for a hefty interest in the patent. They're more likely to be willing to take a financial risk (investing work on a patent that may prove worthless) than some random lawyer or bank; and the number of patents they file is a bit of publicity, so they're likely to set the bar a bit lower on the expected cash input. – Gilles – 2012-09-08T12:04:34.507

Answers

23

I don't think there is a direct answer available. Your circumstances actually pose a generic strategy question for someone with an idea for something new.

As I have written in answer to other questions, the underlying issue is net present value of the idea/invention. How do you capture, and then accelerate, that value? You are confronted with compound questions of timing, cost, implementation, secrecy, and business partners.

  1. Patent protection, even if possible, might not be the best way to protect or exploit your idea. Patent prosecution is an arcane art with innumerable opportunities the get side-tracked or lost in the process. Pick a few patents and compare the filing date with the issue date. Ten thousand dollars can get your patent application in the door at the Patent Office, but it commonly takes many years, and tens of thousands of additional dollars, to get a patent issued, even for experienced inventors with capable legal help.

  2. Can your idea be implemented into products and protected as a trade secret as you exploit it in the marketplace? Is it likely to be leap-frogged by other technology in a relatively short period? By leap-frogged, I mean the development of alternatives that do not employ your idea to get the same or superior performance. Trade secret protection does not work if your idea is obvious or easily reproduced just by observing or examining any product in which it is used.

  3. The penurious have options for obtaining patents, but the choice of 1) going it alone pro se or 2) finding a money partner is a common threshold for technical folks. Can you put together a prototype product illustrating the value of your idea? If so, you have a better chance of finding that money partner. Be aware, though, that you have only one year from the full realization of your idea to file for a patent.

  4. Do you really have a new idea? Do you know enough about the area of technology and the history of that technology to be reasonably (read economically) sure? There are something north of 8 million US patents already - with hundreds of thousands of applications working their way through the system. There are tens of millions of technical papers, doctoral dissertations, white papers - and physical products extant in the world. Are you saying that none of them could possibly be interpreted to encompass your idea?

I am not trying to rain on your parade with respect to your possibly patentable idea, but I think the question is ill-considered because it assumes that patenting the idea is the best (or even a reasonable) approach. Alternatively, I would say that, while it is theoretically possible for a novice to prosecute a patent application successfully, the chances of that being a reasonable investment of time and effort is within epsilon of nil.

user96

Posted 2012-09-08T06:53:11.493

Reputation: 1 708

The numbers that youhave to consider under item 4are even higher, since the requirement for patantability is not novelty in the US, but novelty world-wide. This also means that patents from other countries and documents in other languages count as prior art that could anticipate your invention. A good entry point to search for worldwide patent documents is espacenet which is hosted by the European Patent Office. – Bart van Wezenbeek – 2013-02-12T16:36:48.900

Re: #4. People get patents every week. The examiners often just look in US patent documents, find the closest thing and then reject. You argue that what they found doesn't really hit the nail on the head (or near the head); and/or you amend to get around it. After a couple of go-arounds the result is often a patent being allowed and granted. Later, if you go after a big company asking for a lot of money, they will have a team do a much more thorough search and are likely to find something closer than the examiner did. – George White – 2017-05-30T22:02:18.427

9

I have a few suggestions: the USPTO is helping local non-profits set up pro bono patent help. (pro-se and pro bono at USPTO) The first one up and running is in Minneapolis but others are getting on line. Second there may be an inventors club in your area and there may be members who are patent agents or patent attorneys who can provide some advice on DIY patent application. Third many inventors learn as much as they can and file a pro se provisional application. There is not much in the way of formal requirements for that type of filing and the fees are $125. (guide to provisional applications at USPTO) It gives you a year to file a "real" application. However, their ultimate value as a stake in the ground will turn on how well the claims in the eventual non-provisional application are supported with details in the provisional. Last - not every patent practitioner charges that much. Many patent attorneys do not really enjoy individual inventors as clients. Individual inventors need more hand holding, do not represent repeat business and are very cost sensitive. Some registered practitioners are more oriented to small companies and individual inventors. Check with a local inventors club for names. (search for inventors clubs) Consider a patent agent rather than an attorney. Same rights at the USPTO, same patent bar exam and same educational requirements. But we can't command the same size fees (full disclosure - yes I am one). You might look at the member list of the National Association of Patent Practitioners. About 1/2 are agents and 1/2 are attorneys. Almost all are sole practitioners with lower overhead than a big firm. Good luck.

George White

Posted 2012-09-08T06:53:11.493

Reputation: 14 100

3

An alternative not yet mentioned is to consult with your university's tech transfer office. You should do so under confidentiality agreement or otherwise ensure that they will keep any disclosure confidential so it does not count as prior art against you. Many professors are in the same situation as you-they have a potentially patentable invention but no means or desire to pursue it personally. Many universities have set up an office to deal with this. Typically, the professor has signed an agreement to assign all rights in inventions to the university. In return, the university retains patent counsel and pays the cost of prosecution. The agreement has some provision relating to royalties from any licensing of the patent to a company or other marketer. The university or their counsel typically will interview you to get all details of the invention so that they can prepare a proper application that, if it issues, provides protected subject matter. The agreement between prof and university also typically provides that the college can pass on any "invention" in which case the professor can pursue it personally. For your first "invention", this might be a route for you-it is already well-trodden so the people involved know the ropes, and little cost to you but with potential return. Anyway tech transfer might also have some useful advice for you. You can also search USPTO's database of patents and published applications (both count as prior art) either at USPTO or other online sites like freepatentsonline.com. Just because you have not seen something on the market does not mean it has not been patented or published.

James

Posted 2012-09-08T06:53:11.493

Reputation: 31

-1

I was in the same situation and started with a book. It is available online http://www.abluestar.com/files/uploads/2012/aug/Patent.pdf but I am not sure if online version as completed as a printed copy. Then I read many patents in the field to get better understanding.

Pol99

Posted 2012-09-08T06:53:11.493

Reputation: 315

-1

I'm in a similar situation as you are, where I have several ideas which I'm pretty sure are patentable.

Although I'm definitely not an expert, here are my conclusions after doing a lot of reading and digging on the matter. I hope this will be of use to anyone like me and you.

NOTE: The numbers bellow are only approximates since I don't remember them off the top of my head, but they were based on 2010 patent stats or something... use the following with a grain of salt.

  1. There are discounts (I think up to 50%) for individuals filing (ie: non-corporate, no lawyers)
  2. The filing process should normally cost around or a little over $5,000 (fees, paper-work, deposits, etc, etc.)
  3. About 85% of patent applications do NOT get challenged and thus should NOT incur large additional fees
  4. For the remaining 15% of patents which were challenged, the price could then sky-rocket from anywhere between $100K to millions of dollars... depending on who challenged, what was being challenged, how you decide to pursue (ie: with lawyer) and if its mediated or litigated, etc, etc. (whatever the last parts mean).

On those basis, I would not get discouraged... at least I'm hopeful. I do admit that the filing process seems overly complex and the reason why I have not yet started. But I would not let that discourage you! If you believe in your idea and it's potential, you could always file and if challenged then give up... you would only loose 'some' money (when you're a student $5K hurts more).

But I would not let comments of 'user96' (above) discourage you. I've spent years reading patent files that were related to the patents filed by my last employers and I believe that the lingo can be learned. Yes, what you write is crucial but it's legalese and it can be learnt. I've tried to call a few lawyers in my parts of the world to see if they would be interested in 'only' proof-reading my claims document... didn't really get a definite yes/no answer, but my impression was that this was possible at reasonable costs.

I've tried to find a detailed FAQ on the filing process to no avail. I guess lawyers and patent experts don't want that kind of tutorial and since they pretty much do 99% of the filings, why on earth would they post something like that. But I'm still hopeful someone will eventually do it and it will be of immense use.

Good luck!

Jeach

Posted 2012-09-08T06:53:11.493

Reputation: 119

3The 50% off on most fees is based on the applicant's status as a "small" entity. It has nothing to do with using a registered practitioner or not. I would guess that way fewer than 15% ever make it to court. But all of them are examined and about 90% of those get a first office action with all claims rejected. Responding properly to a rejection will be an important step in almost every filing. The well-known book Patent it Yourself, and many other publications, detail every step for the layman. It is a complicated field and someone doing themselves will need to do a lot of studying. – George White – 2013-02-06T17:19:16.337

Current fee schedule

http://www.uspto.gov/web/offices/ac/qs/ope/fee100512.htm

If an application is filed electronically and the applicant qualifies as a small entity the original filing fees total just under $540. Assuming no late fees are incurred in responding to Office Actions and you get a Notice of Allowance after only one rejection, then the $885 issue fee and $300 publication fee are all there is left to get your patent in the mail. For $5k you are getting close to paying a professional to do it.

– George White – 2013-02-06T18:44:13.190

Regarding FAQs and guidelines the UPTO has one here http://www.uspto.gov/patents/resources/types/utility.jsp

– George White – 2013-02-06T23:41:26.710

@GeorgeWhite: Thanks for the clarification and links. If you are correct about the $5K being the cost of a professional, then I'd definitely be willing to pay that... especially if its over a few years. All I know is that it cost one company I worked for up to $7 million for its first dozen patents (eventually approved, but pretty much all challenged). Although they were international patents (filed in other nations/continents) and lawyers were charging like $300 per word to translate to other languages (back in 1995, 1996). – Jeach – 2013-02-07T00:03:23.253

The $5k + uspto fees would be for a relatively simple mechanical invention., And just for initial creation and filing. I was trying to make the point that the uspto fees would be lass than $5k for a small entity. Also was talking about U.S. The fees internationally can get very steep, I thought you meant opposition in the courts. If we are talking about international patents they do have an opposition procedure within their patent offices. Historically we have not had the same thing here. Translation is expensive but is nothing close to that figure now. – George White – 2013-02-07T00:58:29.143

If you google "patent translation per word rate" you will see data on translating ranging from 10 cents to 40 cents per word. – George White – 2013-02-07T23:02:25.470

-3

For the non provisional patent application - I will say do it on your own. According to me going with the lawyers is good for nothing. In my life - I have hired lawyers at least 4 times and I can tell you they are not adding much value. They will scare you that it's complex or almost impossible but we don't need them most of the times.

Ashu

Posted 2012-09-08T06:53:11.493

Reputation: 135

This is terrible advice for so many reasons. – Maca – 2017-06-26T08:06:24.597

Why?? I have come across at least 10 attorneys for the non provisional patent filing process - none of them were at all valuable. – Ashu – 2017-06-26T15:15:10.170

Either you have had extraordinarily bad luck, or you are failing to see the value: an inventor cannot successfully draft a patent application themselves, as they simply do not have the experience of a professional. – Maca – 2017-06-27T05:49:22.480

I agree with your statement.

According to my good attorney who is with me for many years, there are two types of attorneys:

1) Copy/paste attorneys 2) Real Attorneys

He told me that roughly 85% of all attorneys out there falls on #1 (Copy-N-Paste attorneys)

You need to interview the attorneys, asking for references, case history, etc. – Robert Rademacher – 2017-08-29T21:37:44.427

I filed the provisional patent on my own after buying a book from Nolo(it's the best seller at Amazon.com). I came across almost all the attorneys who fall in category # 1. – Ashu – 2017-08-30T21:45:56.120