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I'm pretty sure I'm using up the goodwill of the moderators with my many questions about patent phrases and wording, so I'm turning to Meta.

Background: I'm working on my first patent, and I plan to file a slew of other patents once I get the hang of things. If I file them myself, at first it costs between US$80 and US$160 for me to file at USPTO by uploading my own PDFs. I then pay more fees if I don't abandon applications.

Patent attorneys in my area are charging over $10,000, and from emailing several I found out that they want to control the A to Z of drafting and executing. My ads in Marketplace and Craigslist have gone unanswered for patent professionals. In other words, I either draft 0% or 100%.

People have filed good patents on their own before. I too am trying to draft spec and claims, and sometimes I have questions. I try to make minimal examples that may be useful to others here.

I receive very helpful answers from @GeorgeWhite (Thank you!). However, comments at the bottom of my questions usually indicate "contact a patent professional".

How then do I use this site to improve my phrasing and legalese skills?

I've read the Don't Ask list.

I've read the On Topic list.

I've been asking in good faith questions related to

  1. Specific aspects or interpretations of a particular patent claim.

UNLESS, they mean "3. Specific aspects or interpretations of a particular-patent claim." Notice the hyphen I added.

Then, are questions about crafting Markush claims, seeking alternative phrases for "connect", seeking boilerplate phrases like "'comprising' encompasses 'including'", getting an opinion about an example claim, and like off topic here? In other words, is this not the place to ask for help when drafting a patent per se?

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First - I am happy to keep answering your questions unless it seems I'm drafting an application piecemeal, going in circles, etc. But note that the site wasn't set up to help with the very detailed aspects of patent drafting.

History

The site was started specifically as a collaboration between google, SE and the then Director of the USPTO, David Kappos. It did not go through the normal SE process to start a new site. See The Verge article.

The American Invents Act (AIA) had been passed and was going into effect. For the first time, it provided a way for the general public to put potential prior in front of an examiner in a way that they are required to look at it. See this USPTO site for FAQs.

Many provisions of the AIA were motivated by the idea that there were tons of "bad" patents granted (look up Method for Swinging on a Swing US6368227 and the IBM patent on asking to go to the bathroom on an airplane US6329919 for poster children). One category of those supposedly bad patents were so-called software patents. Since then the appeals court and the SCOTUS have declared many things it that realm "abstract" so the clamor against them has subsided.

But before that trend, Dave Kappos had the idea that a core problem was that software patents were relatively newly patentable (after State Street in 1988 which has since been overturned) and examiners primary look at issued patents and published applications for prior art. That situation would make it easy to miss past published software that would show an application not patentable.

Note that SE is full of programmers. And there is a new way to submit art to the examiner that is easy and mostly free - and can be even anonymous. And google could add a link in every patent record it provided that said "Discuss" (in the External Links area) that drops right into Ask Patents. Funny becasue SE is vehemently a Q & A venue, not a place to discuss. The "what is on topic" and other materials for the site were heavily biased towards people asking for prior art to be unearthed for specific pending patent applications at the stage where third party submissions were possible. The idea was that SE people knew a lot about previous software and could crowdsource good prior art to stop bad applications from getting granted.

At one point the CEO of SE, Joel Spolsky, took credit for killing a Microsoft patent application via Ask Patents. Unfortunately for the original purpose of the site the posters generally had little idea of what would make good prior art and, in my opinion, would cite things which were way to general to be of any use. And "obviousness" is hard for professionals, the SE users were not likely to understand what elements went into an obviousness rejection.

At some point in that era. I posted that I thought that the site would eventually change from a "how to keep someone else from getting a patent?" focus to a "how do I get a patent?" focus - which it has done. There were always questions about how and why the system worked the way it did and we were lucky to have the top patent blogger and law professor Denis Crouch PatentlyO provide very well written and authoritative answers for many months. General questions about the patent process.

Prof. Couch encouraged other professionals to jump in and answer. One very senior patent attorney said in response -

All commenters on this blog [PatentlyO] should know they are not getting legal advice. But I would be concerned about answering some of the above “Ask Patents” question-askers. Some of them are apparently not even aware of fundamentals of patent or copyright law, and/or are clearly seeking legal opinions about specific patents, and may well missunderstand an answer when they get it.

Over the history we have had many knowledgeable people posting good answers but only a handful of professionals have participated, to my knowledge.

Scope

Even as a long time user, all time high point earner and mod I have no idea how to get the scope edited. We do not deal with licensing, trademarks, copyright and are not a way to either reach the patent office or the inventor/applicant, we have not enforced any scope.

Ask Patents Issues

I think Ask Patents suffers from a very low rate or participation at this point. A short while ago there was a move to merge it with Law.SE due to low volume of activity. I think it was stopped becasue we do not mind being asked for actual advice and Law does - sometime.

Your Questions

To your specific questions - I think they are generally well formed and clear and you have definitely done homework in many aspects of patent law. They are well within the scope as it is currently understood operationally. I think that, due to the low volume of questions, anyone with many questions stands out and people providing answers might, somewhat illogically, think "why is this one person always posting?" when, otherwise there would sometimes be no posts for days.

However, if questions become so narrow (yours have not done so far) that the answer is not useful to other people it might not get much in the way of answers

Patent It Yourself

I think you received the message that patenting it yourself is hard and unlikely to provide what you think it might for a few reasons. One is it is true generally - the field is deep and wide and subtle and not always logical and definitely is a moving target. After I studied for the patent bar full time for three months, and wrote up an application for my own dumb idea as an exercise, I was still in no position to confidently draft and prosecute an application for a client. Fortunately I found the National Association of Patent Practitioners. Via their member chat application and from speakers at their national conferences I slowly learned the science and art of patent prosecution. Nonetheless, when I asked a fellow NAPP member to critique my first application for a real client, she was happy to help. The drawings were great, the specification was pretty good but feedback on my claims was polite but devastating.

You can learn everything you can from David Pressman's Patent It Yourself, buy and study several $100+ professional books, read many patents in your field and a few patent blogs and notable CAFC cases.

People can and have learned enough to get patents on their own but it involves making it your avocation for a long time. I am happy to answer your questions unless it seems I'm drafting it piecemeal.

Draft 0%

I think this is a worry that will evaporate if you work with someone experienced in dealing with individual inventors. They may take some wording from the meat of a draft specification you provide, and usually use your drawings as a starting point; they need to involve you in deciding which aspects of your invention are the most important to go after first and make sure you understand their approach and why that approach makes sense to address your goals. But, as I mentioned in a comment, if the first words they hear from you is you need to be involved with the drafting, they will rightly be scared away or need to push back strongly. Especially if you say you already have a god draft so can they cut the price. It is almost never the case, the inventor is not in a good position to know and it would take time to evaluate and most evaluations might end up offending a potential client. Demanding to help is bad, wanting a discunt to help is worse.

Patent drafting is an arcane art and someone without experience second guessing you is unpleasant.

I liked to work with people I could meet with in person but much interaction between clients and patent attorneys/agents is virtual at this point.

One tactic you might consider is try to find a relatively new practitioner in a small firm (possibly check the NAPP member list or get a reference from someone at an inventors club in the area. Agents will work for less than attorneys) who might draft it for $5k and quote a price per office action after that. Have them work on your most important invention and take what you learned from the experience to plan the future steps.

Advised to contact a patent professional

I do not believe that was been in comments in the first several questions. Any question here could be trivially answered that way and it would be very unhelpful. As it became clearer that you are getting deeper into the specifics of drafting you did see that in comments, but not in answers.

Good luck!

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  • WOW! What a great response. I'm blown away by your dedication to this site, as well as the time you put in to (it feels like) only helping me. Yes, I have the 20th ed. of PIY, and it is marked up and highlighted in several colors now. Great book, but it makes me think of so many questions. "CAFC cases" - insightful! (e.g. the Trend Micro opinion today). Good tip. NAPP - I had no idea.
    – Drakes
    Oct 26, 2022 at 5:53
  • TBT, I usually post a question to Ask Patents when I can't zero in on a solution by searching USPTO, like "in an embodiment" or "in some embodiments", or that "processor" question, or that 36-combination claim question (I was so excited by that "loophole" until you answered, ha). I mean, who do I even ask if not Ask Patents? But, I understand the history of the site now. I have many patents I wish to draft, so I'm going to invest in figuring out how to become a kind of patent "nerd", let's say. Thanks again, and I hope this question helps others who also catch the IP bug.
    – Drakes
    Oct 26, 2022 at 6:03
  • If you have a degree in engineering or physics you can be the ultimate patent nerd by passing the bar exam. If not, they will not let you take the test but the expensive classes prepping for the patent bar (the name has changed to "The Patent Office Registration Exam") are still open to you. The most popular class (pli.edu/programs/P/patent-office-exam-course-online?t=ondemand) is about $3,000 but $1,000 off to students. Also, I could post a list of about $1,200 worth of books. I see that some are available at a county law library near me but probably not to check out.
    – George White Mod
    Oct 27, 2022 at 0:33

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