Patent on a Shoe String

Continued from my last post.

The clock was ticking. I had one year from the filing date of the provisional patent, June 5, 2002 to file my utility patent application. Since I fired my first patent attorney, where do I find another one whose fees fit the budget of a senior citizen on a fixed income? I checked with a couple, both said that their fee would be upwards of $8,000, and the lower retainer of the two was $2,500. I explained that a patent search had been made and a provisional patent filed, so all that was needed were the drawings and claims. Their retort was that in order to do a good job they would have to be familiar with previous patent literature and understand the present invention thoroughly. At $250 per hour (including coffee breaks I presume) it doesn’t take long to run up an $8,000 bill.

I knew I could produce the drawings with the help of a local artist. After downloading the instructions from the Patent Office web site, I proceeded to make the drawings according to their specifications, but then out sourced the free hand drawing at a cost of $120. The provisional patent manuscript was revamped to accord with the part numbers on the drawings. Writing the claims, however, concerned me. It is the claims that prevent infringement of your patent, and if not well written to cover all the loopholes your patent may be worthless.

I heard from a friend who teaches at the local Michigan Technological University that one of the university employees had recently been licensed as a patent agent. While not an attorney, he can represent others in dealings with the Patent and Trademark Office. The “recent” label worried me a bit but I contacted him and asked if he would be willing to write my claims for a fee. He declined but offered to act as a consultant for free.

Armed with the promise of his help and an intense reading of the claims of many patents, I felt confident I could write claims that would protect my invention. After innumerable rewrites and three consultations with the patent agent I was confident that the claims were air tight. The patent application was ready for filing. The manuscript along with several forms and a filing fee of $150 was sent on May 30, 2003. It arrived at the Patent Office on May 30, just six days before the deadline! Then began the long wait for the “first reading”, the report back from the patent examiner.

In August, 2004 I received a very official looking manila envelop from the Patent Office. With trepidation I opened it to find that all my claims had been denied. I was devastated! While I had been warned that this denial often occurs, I had been confident that my claims were thorough, reasonable, and did not infringe on the claims of any other patent. The examiner also had the audacity to say, “It is obvious that the applicant is not knowledgeable in the art of writing claims. It is strongly advised that he consult a patent attorney.”

The examiner’s telephone number was included in the report so I call asking him what was wrong with my claims. The examiner’s name was Ramon O. Ramirez, and to my surprise he was friendly, helpful and a very nice person. I was expecting an ogre. He said there were two problems with my claims:

1. The claims should describe what the invention is, not what it does.
2. Each claim should describe only a single entity, some of yours describe multiple entities.

I asked Mr. Ramirez if he would critique a new set of claims on an informal basis before the final submission and he agreed. With these two simple comments I was able to rewrite the claims and fax them to him. Several days later he called to say that if two words were changed he would accept my eleven claims. The changes were made in the manuscript and it was resubmitted. What a difference a little knowledge can make! True to his word, in January, 2005 I received a Notice of Allowance. I was home free! Well, not exactly free, along with the Notice was a $700 bill for the issuance of the patent. It issued on September 27, 2005 and I received a copy of patent no. 6,948,690 in a beautiful cover with the gold seal of the Patent and Trademark Office along with the director’s signature.