Dynamic Bundles, LLC filed its utility patent application over the weekend. We finished the application in the nick of time. Here are my thoughts and impressions from the perspective of the inventor, not as a lawyer. My advice to anyone considering filing a patent application is don’t try to do it without an excellent patent lawyer.
We had filed a provisional application a year before and therefore had to file the utility by the anniversary date. The biggest difference between a provisional patent application and a utility patent application is that the provisional contains disclosures about the inventions, while the utility must also include claims. A year ago our patent lawyer, Jeff Kuester, pushed me to write a comprehensive description of our inventions for the provisional application. Some inventors try to submit the bare minimum, but run the risk that they did not fully and properly describe the inventions. Because we were successful in following Jeff’s directions, the provisional was comprehensive, and thus the disclosure in the utility application didn’t require that much extra work. Note that in the utility application you can change the wording of the disclosures that were in the provisional application, but new disclosures will have probative effective only from the date of the utility application’s filing. Once the utility application is filed, you can’t change the disclosures (including the diagrams or screen shots). So many rules!
I am beginning to understand what a challenge it is to write claims. Writing claims requires strict adherence to rules. (For example, you can’t say “not” and you can’t say “or.”) But it is art as well as science. The good news is that the claims aren’t immutable. Whereas you can’t change the disclosures after you file the utility application, we learned from the previous utility application that you can change the claims in response to the Patent Office’s office action.
We followed the practice of “concentric claims.” As a technology lawyer I have passed this concept on to my clients with only a superficial understanding. I am starting to get the hang of it. You start with a broad independent claim and then you add dependent claims. The independent claim can be very broad, while the dependent claims narrow the independent claim in various ways. Usually patents won’t issue for very broad independent claims. On the other hand, I felt that you could make a better impression on the patent examiner if the independent claim wasn’t so broad that it could describe virtually any e-commerce system. I was warned—and rightly so—that we risk giving something up in breadth by narrowing the independent claim too much. So it’s a balancing act.
In the previous utility patent application, we had to spend a lot of time responding to the office action. During that process we changed the claims considerably. (I had changed patent law firms between the application and the office action.) My current patent lawyers told me that it was fine to change the claims, as long as the disclosures supported the claims. We went through the disclosures with a fine tooth comb to find support for our claims and thankfully the disclosures supported all of the changes.
Another thing to keep in mind is that you have to pay extra for having more that three independent claims or more than 21 total claims. It is not worth losing a solid claim to save filing fees, but these rules impart some discipline, especially on a start-up. Apparently some patent applications had run amuck with claims until the Patent Office implemented that rule.
All we can do now is wait for the Patent Office’s response. Perhaps for a year or two. If they deny some or all of the claims, as they usually do, we will once again revisit the claims in connection with our responses. Never a dull moment in the patent world. And if we are lucky, by then we will have some more inventions to patent, meaning we can start this process all over again for a third patent application.