Call Before You Dig – Reducing the Cost of Patenting By Preparing Beforehand

by Downs Rachlin Martin PLLC
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So you’ve got an idea and, although you briefly thought about buying the “Do-it-Yourself” patent kit you saw offered on TV after the late show with David Letterman, you’ve decided to call a patent attorney/agent for help with the patent application.  What should you do before you make the call?

Generate a thorough written description of the invention and illustrative diagrams

A patent application consists of a description, drawings, and patent claims. (An excellent primer on patents can be found here: Patent Basics, By Paul Smith.)  Both the description and the drawings should be completed by you prior to beginning discussions with a patent attorney.  The written description should include all significant aspects of the invention and include alternative formulations, part or process step substitutions, and optional components.  An explanation of your knowledge of the prior art in the field of invention, while not necessary for the patent itself,  will be helpful.

For example, consider U.S. Patent No. 4,320,756 (principle drawing right):Patent, Breathing Aparatus

Without commenting on whether breathing through a piece of hose stuffed through toilet water is a good idea, this patent describes a device the inventor believes can be used to save your life during a fire in a high rise building by allowing you to breathe “fresh” air while the rest of the building melts around you.  I’m sure your invention is more clever than this, but for this post let’s just suppose this is your invention.

The drawings do not need to be as detailed as what is shown above, but it should show all of the important aspects of your invention.  In this case it may be the hose, the mouthpiece, and hopefully a one-way valve so that you don’t breath in toilet water.  You should provide a written description of your invention – what each piece of the invention is and what it is made of (including alternatives).  For example, is the tube flexible or rigid or doesn’t it matter? Is a specific valve necessary? Does the insertion of the tube happen in a certain way?  If the invention is a new process of breathing through a toilet, you should provide a flowchart detailing the process steps necessary to complete the task, e.g., step 1: blow out while placing tube in toilet, step 2: watch for water entering tube, step 3: only breathe in when tube is substantially devoid of water (probably a critical step!), step 4: if this contraption does not work, try opening the window.

Spend Your Time Or Your Money?

Developing the description and drawings yourself can significantly reduce costs of patenting because it limits the amount of original drafting to be done by the patent attorney, accelerates the understanding of the inventive concept, and facilitates the drafting of the claims.

A good starting point for inventors who are unfamiliar with patents is to identify an existing patent in your inventive field and use it as a guide for the types of information you will need to include with the description and drawings of your invention. There are many websites to use to search for patents, I personally like FreePatentsOnline – it’s easy to use, provides pdfs, and has an advance search feature that mimics the USPTO website.

If you are trying to reduce costs, but don’t want to waste your time on things the attorney does not need, there is a large grey line that indicates when an idea is “complete enough” to get a patent attorney involved.  As a rule of thumb, you are ready to draft the patent pieces if you can describe your invention to an equal in your field so that they are able to understand the invention and its implementation.  At that point, you can put together the drawings and description of your invention, and then call your patent attorney.

More patent advice for new inventors to come…

Posted in General IP, Patents

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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