FAQ: Can I DIY my own patent application?

by: Andrew T. MacMillan
May 1, 2014

Confused

The answer to this question is yes. You can DIY your own patent application. A more appropriate question, however, is should you.

Guess what? The process of obtaining a patent in Canada, like most countries, is complicated. If you want a beginner's tutorial, go ahead and start at the Canadian Intellectual Property Office (CIPO); they have a tutorial online here. You'll probably also want to peruse the Patent Act, the Patent Rules, and the Manual of Patent Office Practice (MOPOP). Assuming you are a good student and follow those perfectly, expect to receive a rejection letter from an Examiner in about two years.

I'm not saying you will get rejected because if you do-it-by-yourself you will do it improperly. I'm saying even assuming you do it perfectly expect to get a rejection letter in about two years.

Everyone in this business gets rejection letters, DIYers and professionals alike. It does not mean the patent will never be allowed. I have written hundreds of applications that have issued as patents and yet I still fully expect to get a rejection letter for each new application I send in. What CIPO's patent tutorial fails to mention is that the majority of patent applications are rejected as soon as they are picked up by an Examiner. Maybe you will get lucky, I have on occasion, but odds are good that your first feedback from a (hopefully) well-intentioned Examiner will be a big fat rejection letter.

Real inventions couldn't possibily get rejected, right?

It's not surprising you get an initial rejection. Day after day the Examiners at the patent Office slog through the immense backlog of applications making rapid decisions on patentability.

For each new application in electrical and computer fields (what I have experience with), they are allotted five to six hours of processing time. They quickly skim your written description, claims, and figures; form a mental picture of what they think you have invented; and then search their extensive databases to see if they can find something similar.

Typically they find hundreds to thousands of matches based on keywords and technology classifications. Since they don't have time to read everything and ponder it carefully over a cup of tea, and because they certainly don't want to allow a bad patent right off the bat and be made a laughing-stock in the press and in front of their coworkers, they make the safer assumption that your invention is not patentable.

They pick one (or multiple) of the references they find and write you a brief explanation of why they think your independent claims are nothing more than (or would have been obvious in light of) what's disclosed and suggested in those documents. You might get some kind of explanation for your dependent claims too, but more likely than not you will get a curt form-paragraph objection along the lines of “these claims do not seem to add anything of inventive significance.” Yes, that's an actual quote not something I made up.

The rejection letter will also specify your deadline to respond. Typically CIPO gives you six months unless you requested accelerated examination and then it will be three months. If you don't reply by the deadline your application will be considered abandoned and your invention will become your unwitting gift to the public.

The patent Office rejected my perfectly good invention, what can I do?

If you are new to the patent game (the second sport of kings), you will most likely feel your ego take a huge hit when you are rejected. You will get angry at the Examiner and you may want to write obscenities in a letter, complain to your MP or go on national television to criticize the government for holding back entrepreneurs, or worse. What you need to do is stay calm. If there is ever a guide book written for patent applicants getting rejected at the patent Office, the words DON'T PANIC should definitely be written in large friendly letters on its cover.

Find your inner peace and then go through the rejection letter again from an objective viewpoint. Remind yourself that the Examiner is not out to get you personally, she (or he) is just an overworked human being in a cubicle who took a first pass through your application.

I suggest you make a numbered list of the separate problems identified in the Examiner's letter, for example:

  1. Formalities are not proper in the description
  2. The figures are not acceptable
  3. The independent claims are anticipated by D1
  4. The dependent claims are obvious in view of D1 and D2
  5. etc

If the Examiner makes other requisitions (requests) add those to your list too; for example, the Examiner may want you to provide a list of all prior art cited to you in any foreign country patent Offices.

Once you've got your list, you'll need to draft a clear and concise letter back to the Examiner and address each and every item. For most problems pointed out to you by the Examiner, you will either amend the text/figures of your application to fix the problem or write a persuasive argument as to why the Examiner is mistaken (i.e., argue that there is no problem).

Make sure you answer every point raised by the Examiner. If you don't know the answer to a specific question or don't have certain information that is requested then state that in your letter. Failing to address every issue can be deemed to be the same as not replying at all.

Do I need professional help?

I cannot speak to other aspects of your life, but with your patent applications, you probably do.

I say “probably” because if your ultimate purpose of getting a patent is just for fun or for pride or for something to hang on your wall then doing it yourself may well be a viable approach. You can learn something in the process and most Examiner's will be sympathetic to a pro se inventor with limited experience with the patent system. They may even help you draft allowable claims if what you file is unacceptable.

However, if your ultimate purpose in getting a patent is for monetary gain, I recommend you seek out a patent agent with whom you feel comfortable working to help you prepare the initial application and deal with any rejections it may face at the patent Office.

A qualified patent agent will understand your situation and make suggestions for filing strategies in addition to drafting the initial application with enough detail to support claims that will actually benefit you. You may think of your invention in a very limited way – your implementation is your invention and that's what you want a patent on. But your patent agent will be thinking of how your invention can be refined and possibly generalized in ways that you have not addressed.

Perhaps you are going to start a company to make and/or sell a product based on your invention. You'll want the patent agent to help make sure that the patent protects the generalized form of the invention rather than just your one specific implementation. This way competitors can't make some simple modifications in order to get around the patent while still appropriating the essence of your idea.

It may also be the case that there are several entirely different ways to implement your invention and it may not be possible to cover them all with a single generic claim. A qualified patent agent will recognize this situation at the outset and will draft the application to both describe and support additional claim sets that can be filed as later divisional applications to cover the alternative implementations. The cost will be higher than a single application but the description and figures portion may be the same across all applications so it won't be as expensive for the subsequent applications.

If you need help, please contact ATMAC for more information.