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Worst Kept Secret of Pro Se Filing

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There is a myth in the US that anyone can prepare and file a patent themselves (we call this a pro se filing) and receive meaningful protection. Inventors sometimes file academic papers outlining their findings, for example, and attach a basic claim. While an early patent filing that provides a full disclosure can, during prosecution, be amended by a professional to have a reasonable scope of claims, once issued, the patent is difficult and costly to rectify, if this is even possible.

There are three chief drawbacks:

  1. A lack of enablement
  2. Reduced claims scope
  3. Limitation to a single invention.
A patent must be enabling, that is, a person skilled in the art should be able to read the document and reproduce the invention. Oftentimes, when patent filing on your own, an inventor will provide just the object without a detailed explanation of the parts including how they work and how they fit together. Without this information, critical inventive parts may be lost, but more to the point, the patent will not be allowed. Patent attorneys are trained in providing enabling specifications.

During prosecution, the Examiner may object to certain aspects of the claims as disclosed in the prior art. Self-filers may panic and add a number of unnecessary limitations in the hope that one of them will overcome the objection. The result of this makes it much easier for competitors to work around the claimed invention, while still receiving the benefit. A patent attorney can identify the particular aspect that is being objected to and limit or argue that one aspect without unnecessary limitations in the rest of the claims.

A single application may have more than one inventive feature. If this is claimed effectively, it usually leads to a restriction requirement that removes subsequent inventions and leaves only one for prosecution. Self-filers may not realize that these further inventions may potentially be abstracted from the patent and used for other application besides the described invention, and they may not understand the filing of divisional application that will enable coverage of these further inventions.

Without these steps, the aspects of the invention that are removed in the restriction are removed from protection forever.

 

If you found this blog post helpful, read our post: Top 3 tips for preparing to file you patent application.

 

The materials in this blog are not for the purpose of providing legal advice and are provided for informational purposes only. By using this site you are not entering into an attorney-client relationship with MU Patents. If you need legal advice you should contact an attorney directly.

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