Best books/resources for self-filing of patents?

Question

Keeping in mind that this is not a question on the ethics of software patents,

What books or resources do you recommend for self-filing of patents?

Or, do you have solid reasons for why one should not self-file and instead use an attorney?

Answer 1

Responding to the part B of your question, Van Lindberg's book "IP and Open Source" advises against self-filing saying it is for experts only, that it takes a lot of practice to become proficient in the syntax and idioms of patent law. I guess I can believe that.

I'm curious myself from the "filing defensive patents and donating them to the community" perspective...

Answer 2

I have used this for European Patents. I have filed in UK, Europe and US and the systems don't vary substantially in what is considered a novel idea or prior art. Where they do differ is in the sequence and timing of filings and how they relate to commercial activity around your idea.

I tried self-filing, but the reality is that your filing is assessed by a government patent attorney in any case, so you wind up dealing with lawyers of one shape or another. Also there is a necessary search before you even file your application and you will have to engage an agency to do that for you.

On balance I would recommend using a lawyer. I don't normally, but in the case of patents I think it is worth it, especially if you can find a specialist who won't charge you the earth - and they do exist.

In all cases the thing to do is get your idea down in sufficient detail that you understand it yourself and can communicate it to a lay-person. Try that out on a smart non-technical person and see if they can describe your invention back to you from your description. That is the first thing your attorney will do.

Another piece of advice is to break your invention into some smaller parts and make several filings. The more specific your patent the more likely it is to be non-overlapping with someone else's invention. If you find out that all your innovative thoughts are already covered by patents then you always have the option of filing for a process which puts the constituent parts together and is itself novel.

Last of all, there are specific rules around what constitutes a patent-able idea in software. For that you will need to get some advice.

Answer 3

Friends of ours recommend Patent It Yourself for such things.

Answer 4

As a budding attorney, I would say...hire an attorney.

Obviously, there are downsides.

• Expense
• Time needed to explain the patent to them

But the upsides far outweigh these.

• A skilled patent attorney will be able to search for prior art that could be used to invalidate your patent. Not only will they locate this art, but draft your claims around them and to be as general as possible to defend from interference
• Attorneys know the payment schedule and filing techniques for patent applications. They will know the deadlines for term extensions, USPTO regulations and can respond in a timely fashion to the USPTO during the process
• Although the engineer would best understand the science and theory behind a patent, the best patents are written in a way to maximize the scope of a claim as well as defend against future patents as well. An experienced patent attorney will have the technical expertise and legal know-how to make this translation
• Best of all, you won't have to worry about missing technicalities that could invalidate your patent. It would be frustrating to wait 3 years to find out that your application is rejected because you failed to properly name all the prior art

As always, the choice is yours. The best of both worlds would be to read up on self-patent drafting and approach a lawyer. I should also mention that a number of these self-patent books may be skewed towards a specific discipline. If you pick on up, check to see the technical background of the author is similar to your patent. The more you understand about the process the more useful you are to the attorney and the faster claims can be drafted.

Best of luck!