Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office 15th Edition

4 years ago I read this book and filed a patent application. Today I have an acceptance letter from the PTO in hand. You might think of that as a success story and justification of the book's premise that you can patent your own inventions. The truth is not so pretty however. What I've been granted is a "vanity patent". My examiner forced me to specify and specify so that all useful protection was gone by the time she finally acquiesced into granting the patent. So I paid a substantial amount of money and put in a herculean amount of effort into what amounts to a worthless piece of paper, which is now considered prior art against any future efforts to write a patent with real claims.

The book spends 75% of its time explaining the application writing process but devotes only a few short chapters to the actual patenting process. It provides a dozen or so handy arguments to use if you are rejected on 102 or 103 grounds, which makes it sound so simple. I used every argument in the book then researched several more from the MPEP. All were rejected out of hand as "unconvincing" to the examiner. All reasonable arguments with legal precedent. This book presents a myth that the examiner is reasonable and the process straightforward as long as you have a truly novel invention. Nothing could be further from the truth.

The examiner is NOT your friend and they have no obligation to be reasonable. In fact they have every incentive to be unreasonable. An abandoned application is preferable to a patent with strong protections because the latter may end up in court and a judge might decide the patent was overbroad, a risk the examiner would rather not take. An examiners performance reviews are based on how much they are able to force you to narrow the claims, and no argument is more convincing than their own long term survival at the PTO.

This book contains a lot of useful information for the inventor, no doubt, and maybe when it was first written it was possible for an inventor to patent it himself. Those days are long gone. If you want a piece of paper showing your widget has been patented, go ahead and file yourself, you'll get something through. But if you actually intend to enter the commercial marketplace HIRE A PATENT ATTORNEY. You'll save yourself a several hundred bucks and years worth of fruitless effort and aggravation. Even better is to not do either, get commercial backing and let the money men hire the patent attorney.

Nolo is the first stop for business advice books, and for good reason. Their books are usually accurate, up to date, and easy to understand. NOLO also offers many great resources on their web site. This book does not include a CD-ROM.

This is a large and very detailed book on patent law and process, and a thorough review would require months of time and several pages. That said, I found it to cover the topic very well on most issues, and found only a few nitpicks which would matter only in certain cases.

Since most of the material is well done, I will concentrate on the nitpicks. This is not intended to slight the other marvelous material in the book, just to give a heads-up in areas I find lacking.

First, I find the authors somewhat biased toward corporate interests as opposed to society and the small inventor. This is evident in sections like the sidebar on page 420 discussing "patent trolls" and "submarine patents." They are generally dismissive of the existence and practice of these two things, and indeed use definitions from Wikipedia, not exactly a sound source to reference. Granted, those two terms may not be in Black's Dictionary, but seriously, Wikipedia? In a book on patent law? Not guaranteed to generate confidence.

By way of explanation for those who don't yet know, a patent troll is a person, group, or company who buy and hoard patents to use as leverage or commodities rather than to exercise the patent itself. They may also be buying it to bury it or prevent significant advancements from disrupting their current business. In some countries, there are even provisions in patent law which prevent the issuing of "disruptive patents."

Submarine patents are patents that people suddenly spring on a market claiming infringement after protracted periods of no action. In looking through the book for information on statute of limitations for infringement actions, I found it difficult to locate that information. It is mentioned briefly on page 418, but not in any other section on dealing with infringement, and not indexed at all. I would have liked a more concentrated discussion of this, as it is a serious enough piece of litigation to be more visibly addressed.

On page 421, it is stated that a person is not allowed to make even one copy of a patented device, as that would be infringement. I must admit I was under the impression that a person could indeed make one copy to test and validate the device, and that this was an intended part of society's rights under patent law. Apparently this notion is not correct.

This again makes me think the authors are biased, as they seem not to address the whole notion of society's rights and the intentions of our U.S. Patent system. They also do not address much of the patent system's history or the changing nature of patents and their uses. Probably since this is meant to be a guide to actually working the patent process, they felt it unnecessary to go into such things.

Compulsory licensing by the government is only very slightly mentioned in a small sidebar on page 419. Since this is a significant topic in a country where the government contracts out to so many manufacturers, it should be given far more coverage than it is.

Also related but not covered at all are the government's "march-in" rights, and the ability to take a private patent "black," removing it from public scrutiny. March-in rights mean that the government can come in and take ownership of a patent, ostensibly for "national security" concerns. They may or may not compensate the patent holder, and may place them under strict non-disclosure agreements (gag orders) regarding the entire situation, even that it happened at all. I think this is a significant subject to broach for potential patent holders.

Speaking of non-disclosure agreements, the authors do mention them but seem to think they are not all that useful in most cases. They do not discuss non-circumvention agreements, which are an absolute necessity in dealing with large entities like corporations, universities, and government agencies. In certain areas of technology, these are very important documents to have.

All in all, a good book despite my nitpicks. I found some very interesting things which would inform any discussion on patent reform (which is desperately needed), and the book is certainly a must have if you are considering a patent.

Other than those few nitpicks, another good NOLO book I heartily recommend.