November 2019

Patenting an invention can give an inventor a competitive advantage in the marketplace.  But preparing and prosecuting a patent application takes time, money, and expertise.  Some energetic inventors who can’t afford to hire a patent attorney or patent agent take time to acquire the expertise needed to prepare and prosecute their own patent applications.  Michael Pugel (patent attorney, Eurekovation, LLC) described resources available to these pro se applicants.

“Patent It Yourself” by patent attorney David Pressman is a good general introduction to the topic.  Step one is to keep an inventor’s notebook in which ideas, the invention process, experimental tests and results, and observations are recorded, dated, signed, and witnessed.  The United States Patent and Trademark Office (USPTO) grants a patent to the first inventor to file a patent application for a particular invention.  The notebook helps to establish that persons listed as inventors in a patent application are, in fact, inventors.

Step two is to write a patent application.  The USPTO’s Pro Se Assistance Program, Inventors Assistance Center, virtual instructor led training, and Learning and Resources page offer help with this.  For example, a checklist and guide for preparing a nonprovisional utility patent application are available.  Librarians in Indianapolis and in West Lafayette demonstrate how to use patent examiner systems for finding prior art.  USPTO personnel by phone and in person explain different types of applications, help complete forms and locate resources, and review applications for compliance with regulations.  Monthly online Inventor Info Chats are available, as are a newsletter and in-person workshops and independent inventor conferences.  The USPTO does not offer legal advice, but individuals and small businesses who qualify can receive free legal advice and help from patent attorneys or patent agents through the USPTO’s Patent Pro Bono Program in Bloomington, IN.

Step three is to file the patent application.  Create a USPTO account, get a USPTO customer number, verify your account, and learn how to use the USPTO’s electronic filing system.  Include payment for the appropriate fees.

Step four is to prosecute the application.  This is a months- or years-long legal conversation between a patent examiner and the applicant about which, if any, features of the invention claimed in the application should be patented.  The conversation is always summarized in writing and may include in-person meetings and teleconferences.  If the examiner’s final decision is to reject some or all of the patent claims, the applicant may abandon the application, appeal the decision, request continued examination of the application, or file a new or continuation application.  If the examiner instead allows some or all of the patent claims, the applicant may pay additional fees to get a patent.

Thank you, Mr. Pugel, for sharing these valuable resources with us.