What are the risks of writing a patent specification without an attorney?

Question

I'm working on a prototype for my invention. My situation is that I can't afford a patent attorney at the moment. So my plan is to file a specification for the invention myself, no claims yet. Then advance my prototype a bit more and find investors. Once I have money for the project, and no later than 12 months after my initial filing, I can get a patent attorney to write a full patent. Then my assumption is that as long as my first specification includes enough support for my invention writing a full patent for it should be possible.

Any comments about this plan? Is that fine? Risks?

Answer 1

If your first application has no claims I assume you are planning for it to be a US provisional application. Many people do follow this path. There are possible pitfalls if the provisional application does not turn out to have good support for the claims that are eventually written. I have seen well written provisionals done by inventors and also have seen some that provide zero value at all. Study some of the voluminous information available on the net and in books on patenting it yourself .. Include drawings.

Risks are that you will assume you have covered it better than you have. If you feel covered and tell people all about it without an NDA and the aspects you talk about are not sufficiently described in the provisional, you can lose your international rights. Or possibly even your US rights.

It is hard to be sure you have good support for claims that have not yet been conceived. If push comes to shove at some point in the future and you need to rely on the provisional it will be looked at with the same criteria (35 USC section 112) as a "real" application would be.

You might submit drawings that have lines so thin that after being scanned at the USPTO there is essentially a set of blank pages on file.

Answer 2

The earlier answer makes the important point that it's difficult to know if you have good support for claims yet to be conceived.

You can never avoid the danger entirely, but the more preparation you put into you patent even at a provisional stage, the better. I'd say do as much searching as you can, so you know the closest prior art (though I'm not a US attorney, I've heard some US attorneys advise against this). Well, at least think about the prior art you know of. Then think clearly about the differences, and the essential integers of your invention - in effect, your main claims. Then emphasise this in the description.

The US seems more relaxed (during examination at least) on 'added matter' - but the EPO can be very strict on this. Say you disclose something that uses components A, B and C together. If you try and add a claim to elements A and C, (without B), the EPO may say this is added matter - you are 'cherry picking' a new combination that wasn't originally disclosed - and you'll have to include B as well, even though perhaps B isn't really necessary. You're allowed to spell out different permutations and variations - sometimes this is done in excruciating detail :(

Provisionals can lull one into making an unfocused, half-baked, too skimpy (or too rambling) application that isn't much use. It's more work to start with, but if you can get as close to what you ultimately want, as early as you can, you can avoid a lot of later aggravation.