Can You Patent Your Invention? Part One

We’re speaking with patent attorney David Pressman, the author of the world’s best-selling guide, “Patent it Yourself,” as well as the co-author of other Nolo books, including, “Patent Pending in 24 Hours,” “The Inventor’s Notebook,” “How to Make Patent Drawings,” and “Nolo’s Patent’s for Beginners.” This is the first installment of a two-part interview with David.

NOLO: David, we’re all familiar with stories about great inventors from the past who came up with great ideas, patented them, and made millions of dollars. But nowadays it seems like large corporations and universities dominate the world of patents. Is it still possible for an independent inventor to come up with something innovative and make money off of it?

DAVID PRESSMAN: Definitely. I think that about 30% of all patents are now still issued to inventors who have no assignee; that means they haven’t assigned their invention to a corporation and therefore they’re small inventors. Most small businesses are still individually-owned, and even one of Nolo’s authors, Jack Low, started a very big business where he’s very successful now, on his vertical mouse, by himself. I have several clients, one which makes insulating cups, another which makes shower mirrors, and they’re both individual inventors who have started businesses on their own.

NOLO: Another change since Thomas Alva Edison’s day has been that the patent system has become more complicated and more complex, yet you still maintain that a diligent inventor can prepare his or her own patent application. Tell us why you believe that inventors can prepare their own applications.

DAVID PRESSMAN: Yes, because the inventing process is still the same, and it’s actually much harder than the patent application filing and preparation process when you look at all the work involved. To get a patent you actually have to do some new things which inventors are not familiar with, but basically a patent application is just a detailed explanation of how to make and use the invention in conjunction with drawings, and then there’s a few forms and rules you have to follow, but I lay them all out in a checklist, and I think anybody who is smart enough to invent, to create something new, should be easily able to follow the instructions. You do have to be able to write a detailed description of your invention in conjunction with drawings, and frankly, not everybody can do that, but if you can do that, I think the rest is duck soup.

NOLO: David, you’re familiar with the stories behind many famous inventors. Who are your favorites?

DAVID PRESSMAN: Well, my favorite inventor happens to be a person who had his lab and made his great inventions on the same street that I live on in San Francisco, Green Street, and his name is Philo T. Farnsworth, and if anybody is not familiar with him, he invented television. He was a genius, a farm boy from Iowa, and he just really understood how the electrons work, and how the cathode ray tube works, and made television work. Of course, it was a little before its time, but his widow did collect a lot of money from his royalties. Two other famous inventors that I like are Edwin Howard Armstrong, he was another electronic genius, they called him the man of high fidelity. He invented the automatic game control, a very important circuit in electronics, and continuous wave transmission, and also FM. Finally, my third favorite inventor is Dr. Wallace Caruthers of DuPont, who after working and striving and using his brilliant knowledge of chemistry for eleven years, he came up with what we now call nylon.

NOLO: There are many things that an inventor needs to do when preparing a patent application, and you discuss them in detail in Patent it Yourself. But if you had to discuss one indispensable thing to do before filing a patent application, what would it be?

DAVID PRESSMAN: Well, there’s not any one individual thing that I can think of, because there’s several things that are really important, and really one is no more important than the others. There’s two things you have to do to avoid a lot of needless work with your invention, and that is to make a search before you file, and to evaluate it for commercial potential before you file, because if it’s old, and there is a reference showing the same thing, all your work will be wasted, and also if it has one or more serious drawbacks and you didn’t think about these, then your work will also be wasted. And then another very, very important thing you can do is to prepare for challenges and other difficulties that you may get involved with after you file, is to make a written record of your conception of the invention, and build in testing if possible, and make a written record of that. If you do that, you can go back to the date of conception, or the date of building and testing, and you can win an interference if someone invents the same thing, or you can swear behind references if the patent office cites a reference that has a date earlier than your filing date, but after the date you conceived of the invention. So, those three things I would say are essential: search, commercial evaluation, and record conception and building and testing.

NOLO: After many stops and starts, it seems as if the US Patent & Trademark Office has finally created a useable system for electronic filing of patent applications. Does the system really work?

DAVID PRESSMAN: Yes, it does, and I’m very pleased with it, but I do not recommend that an inventor who’s filing a one-time patent application use it, because it will take the inventor much more time to use the electronic system than it does to prepare and send in an application on paper. That is because the patent office’s instructions are not clear. I’ve attempted to write out clear instructions, but even with those, you’re always going to find a lot of issues and difficulties when you do anything new with the computer. So, if you really want to go in for the electronic experience, and you’re ready to spend a little extra time, it’s a good way to go because you don’t need to express-mail your patent application; you get an instant acknowledgement and a serial number, and there’s no need to make file copies of any papers, because the papers that you do are the papers that you keep, and you send in a PDF copy of them. But it’s not for everyone.

NOLO: When you started as a patent attorney, all patent searching was done through paper patents at the US Patent & Trademark Office, or at a special patent library. But in the past ten years, there’s been a change in how patents are searched, with more and more emphasis in online searching. Is searching through paper patents at the US PTO a thing of the past?

DAVID PRESSMAN: Not completely; I haven’t done any searching deeply for many, many years, and I hire a searcher, but he still goes into the patent office and searches the paper patents. The reason for that is, is that the patent office’s online system only goes back to 1976, and the European patent office’s search system goes back to the 20’s, but it doesn’t search the full text; it only searches the abstracts of patents. The patent office has a system for searching way back for the full text, and that’s called the EAST system, for examiner-aided search tool, but it’s very expensive to use at a patent depository library, several of them have that, and it’s free if you use it in the patent office, but if you look in the paper files, it’s a lot easier to search generally, and you have some foreign patents there. So, they still use paper searching, but it’s gradually being replaced, and most examiners have two computer terminals on their desk: one to display the patent application, and one to do the searching with, but they still use the paper to a certain extent.

NOLO: There’s often one person who stands between an inventor and a patent, and that’s a patent examiner at the US PTO. You once worked as a patent examiner… what are patent examiners looking for when they examine a patent application?

DAVID PRESSMAN: Yes, I was a patent examiner for two years, and I can tell you the first thing an examiner needs to do is to understand the invention, and make sure that the application tells how to make and use the invention, and if the application passes that hurdle, the examiner needs to be sure that the claims are clearly written and directed to the invention that’s described in the patent specification, and lastly, when those formalities are over with, the examiner has to get into the meat of the matter, and make sure that the invention claimed is novel and unobvious, and to do that, the inventor makes a search of all the prior art, and pulls out everything that is close, and then compares the claims with this prior art to make sure or to determine if the claims recite something novel and unobvious over the prior art.

NOLO: In your book, Patent it Yourself, you refer to a patent as a hunting license. Can you explain what you mean?

DAVID PRESSMAN: Yes; it’s not actually a general hunting license, where you can go out and go after everybody; it’s only a hunting license to go after people who make the invention covered by the claims of your patent. If you don’t have a patent and you have an invention out there and someone infringes it, you have no rights at all against that person unless they copy a trademark of yours, or they copy some feature of your invention that has a secondary meaning, then you can accuse them of palming off, but generally you have no rights at all if someone copies your invention. So what do you need? You need a license to go after them, and to be able to sue them and stop them, or just send them your patent and show them, and that’s what a patent provides; it provides a license to go after and nab the infringer, and if you do win your suit, you can get an injunction against them to order them to stop making, using, selling, importing, and offering your invention for sale, and also to get damages for what they’ve done in the past, and often this is used to extract royalties from them, and to get a license from them, for past and future activity.