by David Pressman, 1999, 496 pages, $44.95 ($33.95), ISBN 0-87337-469-X. Published by Nolo Press
This book is the number one book on just about every list of books recommended to inventors contemplating obtaining a patent. Now in its 7th edition, it remains the best selling book, world wide, in its field.
Not only is it a must read for inventors seriously considering writing their own patent application (hundreds have successfully done so), but it should be read and studied by those who choose to leave this task up to a patent lawyer or patent agent. Even the finest lawyers and agents cannot read an inventors mind. However, an informed inventor can greatly aid in the preparation of an application that results in a strong patent which is a commercially desirable patent.
One of the book's great features is that common misconceptions, that the author has encountered in his 38 years of patent experience, are refuted by facts. Another virtue is the 30 "Inventor's Commandments" sprinkled throughout the book. For example, #14, "Before signing any document, whether in the patent field or elsewhere, read, understand, and agree to it fully. After signing, obtain and save an identical copy of what you sign". Of course, you know this, but how many heartaches has the violation of this commandment caused?
Not only does the author avoid "legalese", but he provides a helpful list of 31 "patent attorney words". Also provided, in the appendix, are six pages of useful technical terms in 13 categories. For example, if you are at a loss for words to describe a shape, try category #7 (Shapes), perhaps the word you want is bifurcated (2 branches), incurvate (curved in, lozenge (diamond-shape), or perhaps the word you seek is prolate (cigar shaped).
Fundamentals are stressed throughout the book. Inventors commonly regard patents as "protection", but as the author notes, patents should not be regarded as a defensive shield. They are an offensive right -- a tool for enforcing your legal monopoly.
Some inventors are under the mistaken impression that filing a disclosure under the Patent Office's "Disclosure Document Program (DDP)" is a substitute for a patent application. Not so. In fact, the author feels a properly maintained notebook or properly witnessed invention disclosure is superior to a DDP filing. A simple invention disclosure form is given.
Another fundamental stressed is to perform an evaluation of your invention as to its commercial potential. He gives 55 factors that may affect marketability. A rule of thumb that he suggests is that an invention should make you $50,000 or at least twenty times the cost of searching, building, and patenting.
The author is strong on doing a prior art search before rushing ahead. ("Prior art" is a term long used by the patent office and it means public knowledge or public use prior to your invention. This includes publications, demonstrations, patents, and even term papers. These could exist anywhere in the world one year before your filing for a patent or prior to your provable date of invention.) He gives instructions on analyzing the search report. Also, detailed instructions are given for doing your own patent search. This includes using your nearest Patent Depository Library (locations given), visiting the patent office search facilities, and using tools now available on the Internet.
Many flow charts are given that will aid you to understand and to decide what choices you can or should make as you go from inventing to manufacturing or licensing your invention. One example is a 25 step flow chart for preparing a patent application. The author strongly feels a lay inventor can, using this book, prepare a proper patent application.
Nothing shocks a first time inventor (whether the application was prepared by the inventor or by a professional) as receiving a letter ("office action") saying your invention claims are totally rejected. A sample of an office action is provided. How to deal with each of the examiner's objections is detailed. A flow chart helps clarify the bureaucratic maze. Incidently, a patent lawyer or patent agent may feel a cause for worry if the application sails right through -- the claims may have been written too narrowly.
Yet another excellent feature of the book is the full page examples given. For example, an entire sample patent application, 17 pages long, is given. This includes drawings and claims. Along with this example, a 17 point checklist regarding writing generally and a 29 point checklist regarding the specification section of your patent are also furnished.
A common reason for rejection is that you failed to meet the "unobvious" test. The author offers 27 general arguments for you to consider. A 24 point checklist for reviewing your amendments is supplied. The appendix has a six page "Universal License Agreement". Note that the appendix section is designed so all the forms may be readily copied.
The book ends with a postscript that every inventor should read. It deals with proposed legislation that will be harmful to the individual inventor. These proposed laws favor large, multinational and foreign corporations. These laws would destroy the world's most successful patent system. (If you surf the Internet, visit www.heckel.org for more information. In addition, a wish list of desirable laws is given.
This is a superb book. It is often referred to as the bible in its field. If you are an inventor praying for help, this is the book you should be holding.