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TechRoadmap Directions
  IP Issues of Interest to High Tech Companies
Vol 3 Issue 2 February 2003

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The tell tale signs of a pro se filing

Pro se is a two edged... shovel?

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Small companies, particularly those which are bootstrapping themselves along, will do almost anything to preserve cash. One tactic they use is to file patent applications on their own. This approach, filing "pro se", does save money although, ultimately, a "cheap" patent may be worth less than no patent at all, since it may give away your ideas and provide no protection against near copies.

I'm writing this as the snow flies outside my office window, building up to what should be one of the record snowfalls of all time. The patent in "Pro se is a two edged... shovel?", which deals with a snow shovel invention, appears to be a compromise between the dangers of filing pro se and the costs of using a patent attorney.

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  • The tell tale signs of a pro se filing
  A recent patent, US Patent No. 6,357,148, Double Shovel, appears to be an inventor's compromise between saving money by filing "pro se" and having a patent attorney's advice. Looking at the front page of the patent we see all the signs of a self-written document; very short, one inventor, no assignee, all references "cited by examiner", a single claim, and a semi-formal drawing. Yet, Thomas Tate is shown as the attorney of record.

By writing the application himself but having a attorney file, the inventor has saved money but ensured that all the arcane rules of the USPTO have been satisfied. If you are idea rich but cash poor, perhaps you can find an attorney to work with you in this type of relationship too.

Read the whole (3 page) patent
Double Shovel text Double Shovel figure
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  • Pro se is a two edged... shovel?
  Let's face it, filing a patent can get expensive. One way to pay the cost is with the sweat equity of the patent world - filing yourself, or, in patent speak, filing pro se. To learn the benefits and pitfalls of pro se filing...read on...

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  • Tip of the Month
 
When you are in a bootstrapping, no-budget mode of operation, consider a modified pro se filing approach:
  • Patent Specification - Generate as much of the specification yourself as you can. Enlist patent-experienced, technically aware resources (like TechRoadmap) to help.

  • Patent Claims - Work with a cooperative patent attorney or agent to develop your claims. Properly drafted claims are critical to the value of your patent and should be created by an experienced individual.

  • Filing and prosecution - Again, unless you absolutely have no money, use a registered patent professional to ensure that you meet all PTO rules, regulations, and deadlines.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  The following link should take you to this same article in the web based version of Directions, where you will find the on-line Patent Glossary.

Industry's Best Glossary
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  • Pro se is a two edged... shovel? - continued
 

Filing a patent without an attorney or agent is a lot like taking out your own appendix; you certainly save money but it may hurt a lot during the operation and you might end up worse off then when you started. What are some of the trade-offs to consider?

Finances are certainly a major consideration. If you have no liquid assets, even the least expensive patent agent is going to be out of your reach. But for most independent inventors or start up entrepreneurs the real trade off is your time versus your money. Is the $10,000 you save filing pro se greater or less than the opportunity cost of, say, a week's worth of time spend developing your product or soliciting funding from angel investors? As a principal in a fledgling business, there are certain activities only you can perform. No investor is going to send you money without seeing you face-to-face. On the other hand, writing a patent specification is probably not in your skill set and can easily be outsourced. The appropriate and effective use of your own time is probably a key indicator of how well you will manage your company.

Quality of the resulting patent must also be considered. As regular readers of Directions know, patent quality is ultimately determined in a court proceeding and the courts are loath to read information into a patent that is not already there. It's what's on the page that counts the most. While the court is often inclined to give the pro se filer the benefit of the doubt when a subjective question arises, errors of objective fact cannot be brushed aside no matter how sympathetic the judges may feel. Thus, even though you have the deepest understanding of your invention, you may not have the skill to describe your invention in the language of "patentese". More likely, you will write either an overly detailed or an overly broad specification, potentially limiting your scope or failing to "enable".

Patent scope, which is defined by the claims, is perhaps the most important consideration. The claims, as construed by the courts, are what define your invention; all of the verbiage of the specification is just supporting documentation. In fact, if you present information in the specification but do not properly cover that information in the claims, that aspect of your invention is likely to be considered "donated" to the public domain. Unlike the specification, where you are the expert in the technology, the claims are an art where you dare not go. Some people will point out that the patent examiner will help you write the one required claim that makes your application valid. While true, the examiner is not paid to keep your best interest in mind. As most people realize, almost anything can get a patent if the claims are made narrow enough. The patent examiner may not suggest a very broad claim, which increases the scope of coverage. Instead the examiner only want to suggest a claim that is supported by the specification - even if it is only a narrow claim.

When we balance the cost savings against the risk, a middle ground, wherein the applicant takes a shot at writing the specification but lets a professional read it over and write the claims, seems the best course of action. Many patent attorneys will consider this arrangement for the sole inventor or bootstrapping start up. This middle ground seems to be the approach used by the inventor named in US Patent No. 6,357,148. The patent has all the fingerprints of a pro se filing; very brief, just one figure and one claim, and all the cited patent references were supplied by the examiner. Yet, a registered patent attorney is listed as the agent of record. Good decision, inventor Salmonsen!

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Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.