Patenting Your Software: A Patent Attorney's Warning

By Thomas H. Jackson, Esq.

December 8, 2003

(Patenting Your Software: A Patent Attorney's Warning :  Page 1 of 1 )

Think attorney fees are too expensive? Think you can apply for a patent yourself? Well, there are plenty of how-to books and even software out there to help you do just that. In fact, you might think that patent attorneys would discourage you from checking out the available books and software. We won't. The more knowledgeable an inventor is of the patent process, the less explaining we patent attorneys have to do, especially with the first-time inventor. Books and software can provide the knowledge you need to get the process rolling.

Take, for instance, the many how-to books on the market, all priced for less than $100. You may use this information to complete a "disclosure" in the form of a first draft patent application and, moreover, to understand the patent application examining process. They warn you of the dos and don'ts and how to avoid the many pitfalls that first-time inventors often encounter.

For example, you should never publish an article describing your invention, or disclose your invention publicly to a large corporation that might be interested, until you have discussed your foreign filing opportunities with your attorney. On innumerable occasions, patent attorneys are asked to prepare a patent application within a week or two of publication at a trade show or conference to avoid a foreign filing "bar"—meaning, inventors will lose the right to prepare and file a patent application in a foreign country if they publicly divulge their invention. Patent attorneys do not want to have to tell an inventor that they have lost valuable rights because they didn't do something they should have done.

As an alternative to how-to books, you may choose to visit www.uspto.gov and download copies of first-time inventor guides, written in a style similar to the tax return guides published by the Internal Revenue Service. Patent attorneys each have a desktop manual known as the Manual of Patent Examining Procedures, comprising three volumes and thousands of pages.

 Page 1 of 1