Want to protect your idea with a patent? You can draft it yourself, but be aware of the risks.
By Kirk Teska
 

Patent attorneys are expensive, no doubt about it. The price for a patent application drafted by an attorney can range from $6,000 to $20,000. In some cases, expect to pay more. This may be why a Google search for "patent it yourself" reveals not only the popular book by David Pressman, but numerous other resources and even software programs that purport to assist the low-budget entrepreneur with the patenting effort.

Most patent attorneys were once engineers, so it's evident that any reasonably bright engineer can learn how to prepare, file, and prosecute patents. Some engineers I work with regularly are extremely patent savvy. I'd like to think I taught them all they know, but I cannot honestly say that in all cases.

The devil with patent self-help is in the details. Consider the case of Ole K. Nilssen, a prolific inventor well-known in ballast and lighting circles who has sued several companies for patent infringement and licensed several others. Somewhere along the line, Nilssen began preparing and prosecuting his own patent applications. He then sued Sylvania for infringing 15 patents covering compact fluorescent light bulbs and ballasts for gas discharge lamps. Nilssen had procured the patents himself, but they were all voided, for a variety of reasons: Nilssen had paid the less expensive "small entity" Patent Office fees after he had licensed the patent to a "large entity"; he had failed to disclose relevant prior art; other actions on his part were judged as constituting a breach of the duty to prosecute patent applications with candor, good faith, and honesty.

Before you decide to patent it yourself, the following guidance by the Federal Circuit in Nilssen's case may be of some assistance: "The patent process is a complicated one," said the court, "one that requires both technical and legal credentials in order to effectively prosecute patents for inventors. The same credentials are generally required to prosecute patents on one's own inventions. Mr. Nilssen, while apparently gaining considerable knowledge of the patenting process, thought he did not need professional patent help. The result of this case, regrettably, proves that he was wrong."

To be fair, Patent It Yourself does include a section covering "How Patent Rights Can Be Lost," for instance, and even an "inventor's commandment" regarding the duty of candor. The book also notes in many places that professional help may be warranted, so there's no excuse for a Patent It Yourself adherent to make the same mistakes as Nilssen.

The Value of Claims

A little knowledge, however, can be a dangerous thing. There are patents and then there are patents.

A patent has no real value, (a) unless money is made off it (either by voluntary payment from a licensee or a forced payment after litigation) or (b) because of a market share increase when a competitor refrains from competing because of the patent (again, either voluntarily or via a court-ordered mandate). That said, money is made or competition is thwarted because of only one key part of the patent. And, that part is not what might be draftable by the uninitiated, like the background section (where the state of the art and its limitations are explained), the specification (where the invention is explained), or the drawings (which depict the invention).

Oddly enough, the most important part of the patent—the part reviewed by the Patent Office to ascertain whether the invention is sufficiently new, the part reviewed in court to determine validity and infringement, the part reviewed by a would-be licensee to ascertain if it's worth paying for the rights to the patent, and the part reviewed by a competitor seeking to enter the market with the similar concept—is at the very end of the patent: the patent claims.

The all-important patent claims, each a hybrid of technical and legal language, can be extremely difficult to craft. The Supreme Court once said that patent claims constitute "one of the most difficult legal instruments to draw with accuracy." Worse, a single bad word in a patent claim, like a single mistake in a computer program thousands of lines long that renders the program inoperable, can significantly lower the value of the patent. One difference between a competent patent attorney and the do-it-yourself engineer is that the patent attorney has experience in writing the patent claims— an art that is mastered only after a great deal of experience. Attorneys also have learned and continuously keep up to date with the ever-evolving legal landscape surrounding patent claims.

What Does 'When' Mean?

There are numerous maddening examples of patent claiming "errors" filling the law books. Here are just a few. In one patent claim for a radar detector, a process was recited whereby the strongest return signal or the return signal representing the fastest target was processed. When a competitor's device processed both signals, there was no patent infringement, a court held, because "or" means A or B, not A and/or B despite the usual logical operator definition of "or."

Think you know what "when" means? Think again. One patent claim recited a touch probe that produced a signal "when" the sensing tip of the probe touched an object. The competitor arranged its competing system to send the probe signal after a delay from when the probe tip touched down. No infringement, said a court—"when" means right after, not later.

Now to be sure, the patent claims of these examples were probably written by patent attorneys. The real point is that patent attorneys, and probably only patent attorneys, read this case law and (hopefully) continue to improve their claim drafting and patent writing skills. A novice, even a novice patent attorney, simply cannot be trusted to claim a new concept in a way that provides real value.

As I stated at the outset, it's not that engineers aren't smart enough to figure it out nor are they prohibited from keeping up with the patent case law; it's just that they typically don't.

In addition, there have been cases where the specification portion of the patent caused the patent to have limited value. In one recent case, for example, the patent claim recited a special material for fuel system components, but the patent specification disclosed only a fuel filter including the special material. Because of that, a court held that a competitor's fuel system with quick-disconnect components did not infringe the patent even though they were made of the patented material and technically constituted components of a fuel system. In still other cases, ideas, embodiments, and examples disclosed in a patent specification but not properly claimed were held to be dedicated to the public and free to use by all.

Pitfall Potential

Once the patent application is filed, the potential for pitfalls does not diminish. Ole Nilssen is a case in point. He failed to properly inform the patent office regarding the correct priority date of his patent application filings. He failed to disclose several prior patents he knew about. He failed to tell the patent office that several of his patents were the subject of a lawsuit with Motorola, and he had a contract to license the patents to Philips rendering his payment of small entity patent office maintenance fees improper.

Even a slight amendment to a patent application claim made, for example, after a Patent Office examiner uncovers prior patents disclosing similar ideas, can result in the inability to assert the claim against a close knock-off of the patented technology.

So, it's not just the claims that are cause for concern by the would-be do-it-yourselfer, it's the whole patent application and anything said or done during its prosecution.

By the way, if I invented something, I wouldn't patent it myself for another reason: I'd be too close to the invention. Sometimes, the best decisions are made when a step is taken backward and things are viewed from a fresh angle.

Kirk Teska is an adjunct professor of law at Suffolk University Law School, in Boston and is the managing partner of Iandiorio & Teska, an intellectual property law firm in Waltham, Mass. His book, Patent Savvy for Managers, was published by Nolo in 2007.