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Can I file a provisional patent application myself?

Friday, October 19, 2007

Fred Greguras, Fenwick & West, http://www.fenwick.com/

You can but you need to be very careful to describe the invention and the best mode of practice as required by patent law. A patent attorney may be needed to help draft “claims language” because of increasing litigation over whether a provisional application covered these elements. The provisional patent application must contain a written description of the invention, and “of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or which it is most nearly connected, to make and use the same.”

Question: If we have been issued a patent, won’t that stop a Microsoft from copying us?

You cannot enforce a patent until and if it is issued and the costs to enforce a patent can be staggering – literally millions of dollars. Whether someone is infringing your patent usually isn’t a 1 or 0 case. The other party may claim it is not infringing your patent or that your patent is invalid, for example, because it is based on a defective provisional application. There may be good arguments on both sides that require a court to make a decision after a lengthy and expensive trial.

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