Lay people, and even inventors holding several issued patents, can sometimes look at the process of filing for and obtaining patent and trademark protection and come to the conclusion that this can be a fun, weekend, do-it-yourself project. After all, there are books that purport to teach the basics of filing, software that generate applications based on a series of questions presented to the would-be inventor online, and there are many websites offering low-cost off-shore services. All in all, the process looks very manageable and doable, sort of like walking through a beautiful rose garden.
But intellectual property law is not a rose garden. It’s a mine field.
This article highlights just a few of the many difficulties with filing and obtaining a patent, but other issues are also present for trademark and other intellectual property matters. This article does not recite all potential problems with the filing, prosecution, and maintenance of intellectual property.
First, the laws recite lots of dates – called “bar dates” – which may mean that the failure to file something or file something correctly before the bar date may mean abandonment of the application or patent. In most situations, abandonment means forever without recourse. The US Patent and Trademark Office (USPTO) – the federal government entity that handles patent and trademark matters for the US – does not send out reminders of pending deadlines, does not follow up to determine where you moved in case mail was returned, and does not understand that you were sick in the hospital at the time of the bar date. The USPTO has many heartless computers that watch the calendar and, if a document is not filed correctly by midnight of the bar date, may methodically abandon your application automatically.
Second, there are thousands of arcane “gotcha” rules and requirements. Many of the rules can be found in a phone-book sized tome called the Manual of Patent Examining Procedure (MPEP) published by the USPTO. Unfortunately, the MPEP consists of 29 chapters covering some 3,500 pages, where related subject matter may be sprinkled over several chapters. Many people find the MPEP to be very unorganized and repetitive. In fact, the USPTO recognizes the complexity of the MPEP and requires attorneys or agents to pass a comprehensive test known as the “patent bar” in order to practice before the patent office. The “patent bar” tests for a practitioner’s ability to find subject matter quickly as well as patent law.
Third, patent and trademark applications are legal documents. For example, there are specific legal requirements for the written description, the claims, and the drawings of a patent application. The choice of individual words in the claims may make a huge difference in the legal protection of an issued patent. The interpretations of words are often based on case law, where courts may review specific fact patterns to interpret the laws.
Fourth, in many cases, there are no “do-overs” in intellectual property law. For example, a well-written patent application should have detailed, robust description of the inventive concepts. During the prosecution of the application, the claims may have to be amended to overcome art cited by the patent office. If the application does not contain sufficient written details of the inventive concept, the claims may not be amended, which may lead to a rejection of the application. A poorly drafted description lacking in details cannot usually be later amended no matter how obvious the concept may be based on the drawings and common-sense. Often, poorly drafted applications are abandoned as the description is inadequate to distinguish the claims from prior art.
This article is written for general information purposes and should not serve as legal advice. Nor is this article fully exhaustive, as there are many rules and requirements that must be followed. This article is not meant to provide legal advice, but rather to inform. For legal advice, please seek the advice of legal counsel who fully understands your circumstances.