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Posted: Tuesday, February 20, 2018 1:21 AM


Hello Inventors! I'm a registered patent attorney in practice for more than 20 years with nearly 1000 patents obtained on behalf of my clients. I know the games that the patent office plays, and avoid the mistakes that many applicants make. Please read the top 10 mistakes below, and contact me for a free consultation.

1. Disclosing/selling before filing a patent application
The most common mistake inventors make is to publicly disclose their invention or start selling it, and decide to file a patent application once their invention is successful. Inventors think that they will only patent their invention if sales justify the expense, and take a wait and see approach before moving forward. The inventor then finds out that they are no longer eligible to file a patent application, because the invention has fallen into the public domain. Novelty, a requirement of patentability, means that an invention has not been offered for sale or is known by others for more than a year. If the inventor waits until the year passes, there is no way to protect the invention. Also, many foreign countries require absolute novelty for issued patents, so simply offering your invention for sale or publicly disclosing your invention even a day before you file your patent application in the US can result in the loss of intellectual property rights outside the US.

2. Filing a patent application without having a professional patentability search
Before deciding to file a patent application, there needs to be a determination as to what is patentable about the invention. This is not something that an inventor can perform on his or her own. Inventors often want to skip the search entirely, and assert that their invention is patentable, or conduct their own search and make the decision themselves. But, without knowing what the requirements for patentability are, the inventor is not able to make an accurate determination as to the patentability of their invention. Even if the inventor can verify that their invention is novel, novelty is not the only requirement of patentability. A professional patent search is one that is conducted by someone who has passed the patent bar exam and is a registered patent attorney. A patent agent cannot give legal advice after reviewing a patentability search, because they are not allowed to give legal advice. It is better to spend the money for a professional search rather than rolling the dice and blindly filing a patent application.

3. Writing your own patent application/hiring an incompetent practitioner
As with a professional patentability search, writing a patent application is not something you can try on your own. Patent practitioners have to pass a rigorous and thorough bar exam administered by the patent office, and are mindful of a myriad of requirements and obstacles to patentability. A seasoned patent practitioner learns through experience, not just how to write a strong patent application, but how to defend one from an examiner who rejects the application. While you would never consider performing your own dental work, writing a successful patent application requires significant education, training and experience that an inventor does not have.

4. Failing to consider alternative embodiments to your invention
One of the skills a seasoned patent practitioner has is the ability to expand a patent application to include multiple embodiments or versions of the invention. A patent application should include as much detail as possible to support broad claims that can stop infringers who change small details on their version of your invention. A patent application that includes multiple versions of the invention is a stronger patent application than one that only describes the invention, because it supports claims that extend beyond the invention as envisioned by inventor, and maintains a buffer of patent protection beyond a specific version of the invention. Additionally, because an invention sometimes changes between the time that the patent application is filed and the time when the patent issues, including multiple versions in the description portion of a patent application often will support claims that are broad enough to cover small changes made to the invention while the patent application is pending.

5. Giving up when your patent application is rejected
Because a patent application is an application for a monopoly that is enforceable by the federal courts, examiners at the patent office have an obligation to carefully scrutinize a patent application. Examiners rarely get in trouble with their superiors for wrongfully rejecting a patent application, but can easily face disciplinary measures for allowing a patent to issue when it should have been rejected. For that reason, the vast majority of patent applications get rejected at least once. Applicants need to be prepared for this unfortunate inevitability, and understand that filing a patent application is only part of the process, and that patent prosecution is the process whereby a patent practitioner responds to rejections received from the patent office, which are made fairly and in good faith by the examiner, as well as a poorly made rejection that is not supported by prior art that the patent examiner cites in the rejection.

6. Accepting less than you are entitled to just to get an issued patent
Sometimes, an examiner will reject part of what is claimed in a patent application, and allows other parts. Almost always, what is rejected is the most valuable part of the patent application, and what is allowed is not as valuable. Here again, a seasoned patent practitioner can overcome the rejection and preserve the value of the patent that actually issues to the inventor. Rolling over for the examiner just to get an issued patent, and not offering arguments to overcome the rejections made by the examiner, often results in a worthless or otherwise unenforceable patent being issued.

7. Failing to update your current address to the patent office/patent attorney
As the patent process easily can take more than a year to complete, the patent office requires applicants or their practitioners to maintain current mailing addresses with the patent office. If an inventor moves to another address, and doesn’t inform the patent office or his or her patent attorney, correspondence can be missed, resulting in missed deadlines, and the abandonment of a patent application. It is an easy mistake to make, and a difficult and costly mistake to repair, IF it can be repaired. Sometimes, enough time has passed since the patent application was abandoned that it cannot be revived. And, if there is an offer to sell the invention or a public disclosure, the applicant cannot even start over with a fresh patent application, and the invention will have fallen into the public domain.

8. Failing to pay fees to the patent office on time
Similarly to the change of address issue, payment of fees to the patent office must occur on time. If a payment deadline is missed, the patent application can also become abandoned. For some instances where a fee payment deadline was missed and the patent application is abandoned, the patent application can be revived. But for other payments, such as the issue fee that the patent office charges an applicant once the patent application has been approved, there is no recovery from this mistake. And, like with the change of address mistake, if the invention has been offered for sale or publicly disclosed more than a year earlier, it falls into the public domain, and the applicant is no longer eligible to start over with a fresh patent application.

9. Failing to file a continuation patent application
Sometimes, an invention is so complex that it doesn’t fit entirely into a single patent application. This is often the case where the invention has several distinct aspects. A patent can only contain one invention. But with inventions having several distinct aspects, if all aspects are included in the claims, the patent office will issue a restriction requirement, which basically forces an applicant to choose one aspect for the patent and withdraw claims not associated with that aspect. The patent practitioner can then file a continuation application, which uses the same description, drawings, and filing date of the original patent application, but now claims a different aspect of the invention. If the continuation application is not filed before the first patent application issues, the patent office can use the original patent application as prior art against the inventor in the second patent application, even though he or she is the inventor. There is nothing worse than having your own issued patent cited against you to reject your later patent application.

10. Failing to pay maintenance fees
The patent office charges a patent holder maintenance fees for the issued patent every 3-4 years after a patent is issued. The maintenance fees increase by amount over time, and by the final maintenance fee reaches thousands of dollars. The maintenance fees must be paid on time, or the patent will expire. There is a limited window of time in which the maintenance fee can be paid, not early, and not late, because the patent office is providing a disincentive to maintain the patent and thus place the invention into the public domain. If this happens, there is no reinstating it, and once again, the patent holder will no longer eligible to start over with a fresh patent application because the patent has been published years earlier and thus novelty is destroyed.

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