Can You Patent Your Invention? Part Two

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 second installment of a two-part interview with David.

NOLO: David, since you can never get a patent just by filing a provisional patent application, what good is a provisional patent application?

DAVID PRESSMAN: Well, you’re exactly right; a provisional patent application doesn’t give you a right to get anything. It’s actually a misnomer, because it’s not an application for anything; it’s really just a way of recording your invention, so that later you can go back to this date when you filed the provisional application, and use that date to antedate references that the patent office cites against you, or you can win an interference if someone invents the same invention and there’s a proceeding in the patent office to determine who was first. Another advantage of the provisional is that you can call your application “patent pending,” but remember – it’s very important to remember – that within a year, after you file the provisional, you have to file a regular patent application, or else the provisional will be lost and discarded forever.

NOLO: A U.S. patent can only be used to stop infringements within the United States, so when is it worthwhile to file for foreign patents?

DAVID PRESSMAN: Foreign patent filing is extremely expensive, because the value of the dollar has gone down, and the foreign patent agents charge quite a bit of money. So, if you have a very valuable invention, and you can afford to pay for it, if someone else is willing to pay for it such as a licensee or someone else who buys a part of your invention, then you can foreign file if your invention has a market overseas – in other words, if your invention has a market in Europe, then you can file in the European patent office, but it costs about six or seven thousand dollars to file there, or in Japan it costs about the same. You can file in Canada for a couple thousand dollars, but in any of these countries there are ongoing substantial expenses, so you have to be prepared for that, and you have to be sure that your invention has enough potential there to make it worthwhile, and you’ll get much more back then you paid in.

NOLO: You hear a lot about business method patents, perhaps the most famous of which is the Amazon one-click patent. What are business method patents, and are they here to stay?

DAVID PRESSMAN: Well, I’ll give you a little bit of history first. The business method was always never patentable in the patent office. Whenever we got a patent application that was even remotely connected to a business method, as an examiner we’ve always rejected as non-statutory because it was always the rule in the patent office that business methods were non-statutory subject matter, but this was challenged by an innovative person, and they got patents on business methods, and now it’s very, very common, and they seem to be hear to stay. Recently I had an application pending on a pure business method that was a way of financing, and the patent office rejected it because it didn’t use technology, it didn’t use a computer, and I had to appeal, and while I was waiting for the appeal to be decided, they changed their mind and there was another decision, and they decided that it doesn’t need to use technology, so any method that is used in business that is novel and unobvious – that’s the key, it has to be novel and unobvious, such as a new way of financing, a new way of advertising, a new way of doing something on the internet can be patentable now, but it has to be novel and unobvious.

NOLO: David, in the U.S., we use a first-to-invent system, but the rest of the world uses a first-to-file patent system. Can you explain the difference, and do you think the U.S. will ever change?

DAVID PRESSMAN: I don’t know whether they’ll change or not; it all depends on the politicians and how much they’re willing to conform the U.S. patent system to the rest of the world. The rest of the world, except the Philippines, all has the first-to-file system, which means that the first person to file a patent application gets the patent, even if the other one invented it first and documented it first. In the U.S., it’s not the first to file; it’s the first to invent, so if someone invented first, and that means they conceived of it first and were diligent in building and testing or filing, or built and tested it first, then they can get the patent even if the other one filed after them, provided that they can prove this. There are many advantages and disadvantages on both sides, and it’s too much to go into now, but I feel that it’s much better for the layperson to have a first-to-file system, because if you do get into an interference at present, you have to hire a trial attorney, and that’s very, very expensive, so it’s better to rely on the first-to-file.

NOLO: Besides your books, are there any sites on the internet that are especially helpful for novice inventors?

DAVID PRESSMAN: Yes, the patent system is changing so much that it’s essential if you use Patent it Yourself to go to my update site, where you can just go to www.patentityourself.com/ and there’s a link to my blog site, which has all the updates, and I apologize because there’s so many, but it’s necessary to keep up-to-date with the law. For general information on patent law, there’s a good site run by a friend of mine, Victor Lavrov, that’s called inventnet.org. Then there’s another site run by another friend of mine, Ron Riley, and it’s called inventored.org. There’s also an Inventor’s Digest site – Inventor’s Digest is the magazine for inventors – that’s called inventorsdigest.com, and lastly there’s another good site run by a guy named Andy Gibbs out of Sacramento, called patentcafe.com, and all of these sites will give you a lot of good general information about patents.

NOLO: What advice would you give to an inventor who’s starting out today?

DAVID PRESSMAN: Okay, the first bit of advice I would give is to evaluate your invention very carefully before spending any money and time on it, and that means to search it and evaluate the commercial potential of it. In chapter four I tell you how to evaluate the commercial potential, all the positives and negatives you should be aware of, and in chapters five and six I tell you how to search it, and don’t proceed with it unless you feel that your invention is commercially viable and patentable, and if it is and you still feel it’s a great idea, then you have to spend a lot of time and effort on it, and preparing a patent application, and promoting it.

NOLO: David, you have many helpful inventor commandments in Patent it Yourself. Do you have one or two favorites you could share with our listeners?

DAVID PRESSMAN: Yes, I think that the heart of the book is how to prepare a patent application, and the most important thing you can do when you do a patent application is to make a full, clear, concise, and complete explanation of the invention and how to make and use it in your patent application, and that’s covered in inventors’ commandment number ten in chapter eight. Also, when you write a patent application, you have to have these little sentence fragments called “claims” in there, and you want the broadest possible claims for your main claims, and that’s covered in inventors’ commandment number twelve, where you make your claims with as few elements as possible, and each element should be recited as broadly as possible.

NOLO: As a patent attorney, you examine and help prepare a lot of applications for inventors. Are there one or two mistakes that are commonly made by inventors when they prepare their patent applications?

DAVID PRESSMAN: Yes, the one mistake that I find most often is that the inventor doesn’t tell clearly how to make and use the invention. You have to sweat the details like a professional does, and don’t be ashamed to detail all the parts of your invention, how they’re connected together, and how they work. They don’t penalize you; take as many pages and use as many drawings as necessary. Another thing that I find is the writing is not clear and communicative, so it’s best when you write it to have someone else review it and make sure they can understand what you’ve written and it’s clear and readable and understandable.