Common Patent Mistakes

Issues With Patent Applications

 

There are three patent application mistakes commonly made by inventors operating pro se (on their own behalf, any one of which will likely result in the application being rejected in the USPTO Application Assistant Unit’s initial review, which means that patent never even goes in front of an examiner.

 

The mistakes are:

 

  1. Failing to include drawings that meet the requirements set forth in the Manual of Patent Examination Procedure (MPEP). The section of the manual that discusses drawing requirements can be viewed here.
  2. When the drawings do comply, the inventor frequently fails to explain them in a brief description of the drawings, as proscribed by the MPEP.
  3. The inventor does not properly tell the USPTO what fees they intend to pay, and/or does not pay the necessary fees.

 

Unintentional Patent Disclosure

 

Another unfortunate mistake—which is thankfully rarer than the above—that occasionally happens is that an inventor will simply send their patent application to the wrong destination, such as the U.S. Copyright Office. Such mistakes are incredibly costly, for two key reasons:

 

  1. No patent or legal protection is put in place.
  2. When you disclose an invention publicly, you have one year to file a patent application. Sending a patent application anywhere is a public disclosure. By the time the mistake is discovered, the 1 year deadline may have already passed, making the product permanently unpatentable.

 

Actually, the issue of patent deadlines is largely overlooked, and deserves repeated mention. When an invention is publicly disclosed in any way, shape, or form, you have one year from the date of first disclosure to file a patent application. Some examples of public disclosure include:

 

  1. A public demonstration of the invention, either live or on video.
  2. Selling a copy of the invention.
  3. Offering to sell the invention.
  4. Publishing a description of the invention.

 

Once you’ve disclosed your invention, the clock starts ticking. If you fail to file a patent application within one year, your invention will be placed in the public domain, and anyone will be able to produce and sell it.

 

Lack of Detail and Inaccurate Descriptions

 

However, perhaps the most onerous mistake made in patent applications is simply a failure to include enough detail. In cases of alleged patent infringement, patents have been thrown out in court for failing to include even minute details. In New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., the patentee failed to explain the angled nature of a screw in a provisional application.  This, combined with previous sales that served to publicly announce the device, rendered the invention unpatentable.

 

The takeaway is, be as detailed as possible in your description. Go over your invention from top to bottom, and make sure that every part of it is described accurately, and in detail. Be sure to use exact, accurate wording.

 

Not Realizing That Patents Are Published

 

Many inventors want to keep the details of their inventions secret, for one reason or another. However, they overlook the fact that patent applications are published publicly, for anyone to see. This frequently results in unpleasant surprises.

 

If you wish to file a patent, but keep the patent secret, in some cases you can opt to have your patent application kept secret until a patent is actually issued. Doing so requires the submittal of a specific request for nonpublication. This does have drawbacks, such as barring you from filing for foreign patent applications, and making it more difficult to protect against infringers. It would be wise to consult with a patent lawyer before making this decision.

 

If you’re in the position where you’ve already filed a patent application, but you don’t want the patent to be made public, then you will have to file a petition to abandon your patent application, and then file a second patent application. This is a very costly process, but unfortunately, there isn’t an alternative if you are certain that maintaining secrecy is of paramount importance.

 

Patent Review Oversights

 

Of course, the assembling of the patent application is just the beginning of the process. Inventors often run into issues when going through the examination process. Two of the most common sources of problems are the following:

 

  1. When an examiner is having difficulty identifying a unique structure that—not found in prior art—with a unique function that is suitable for patenting, inventors often respond with meaningless arguments like, “You just don’t understand the invention” or, “It’s really different.” Generally, the examiner is not really concerned with the problem that your invention solves or other higher, larger concepts. The examiner is looking at the structure of the invention, and just wants to identify those novel structures. Inventors who fail to meet the examiner on this mental level usually fail to get any satisfaction in the patent process.
  2. Sometimes, an examiner will propose an amendment that is way too narrow for patentability. When this happens, most pro se inventors and inexperienced attorneys will choose to settle for what the examiner offers. However, experienced patent attorneys accept the amendment, and then file a continuation application in order to get the original, broader claims approved, with some adjustments. Inventors usually aren’t aware of this opportunity to address the problem after the fact.

 

Not Making Use of Patent Continuation Applications

 

Inventors who are going after patent infringers without legal representation are usually unaware of many ways that the patent system can be used after the fact to strength the protections for their inventions.

 

For instance, if a copier is selling a product that clearly infringes on your patent, but has made slight changes—either to distinguish it, or to keep costs low—you can file a continuation application with the USPTO to adjust the description of your patented invention to make it more similar to the infringing product. I have personally represented cases in which, once an infringer’s lawyer has recognized that a continuation application has been filed, they immediately offer to settle. Continuation applications are a powerful tool that many inventors fail to utilize.

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