For a long time, I have been a big fan of David Pressman, author of "Patent It Yourself". I recommend his book to everyone asking me about the basics of the patenting process, and used it for my successful submitting of a patent application to the Patent and Trademark Office. The book is well written, covers all aspects of the patenting process pretty well, and its few deficiencies are also found deficient in very advanced books written by other patent lawyers. Buy the book. So it was with eager anticipation that I heard that Nolo Press published a software version of Pressman's book. They have graciously provided me with a review copy, and what follows is my review of their software product. First the mandatory publisher's specs: Patent It Yourself Software ISBN 0-87337-249-2 Nolo Press, 800-992-6656 950 Parker Street, Berkeley, CA, 94710 Req.: Windows 3.1, 4 MB RAM, VGA, mouse $229.95 list price (One of Nolo Press' nice customer support features is their Unconditional Money-Back Guarantee, so if you don't like the program after checking it out, you can return it.) My quick review: this is half of the perfect product at twice the price it should be. The review is split into five sections: a review of the software, info on the pricing strategy and history of its inception, what it is missing, its impact on the Patent and Trademark Office, and its impact on the patent profession. PRODUCT REVIEW The product has four main components: a Windows help version of Pressman's book, machine editable versions of patenting forms that appeared in Pressman's book, basic patent record keeping utilities and checklists, and a checklist directed utility for drafting a patent application (with help file examples of each section of the patent application). The program installs easily under Windows. Pressman's Book as a Windows Help File What has been done here is to take Pressman's book and turn it into a series of Windows help files. This has been done very unimaginatively, just basically the text turned into help files, with no use of the illustrations that makes reading Pressman's book so much fun. I blame this on the corporate types at EDS who developed the software - they know how to get the job done, but without much flair. There are too many good Windows Help authoring tools to be proud of what was done with the book. But it does provide the whole book online, and there are enough hypertext links to make it interesting to jump across various topics. As an aside to both the book and software versions, the comments in the "What can't be patented" section with regards to computer software are wrong. It is possible to get patents on pure software, no matter what the legal articles, court precedents or Patent Office memorandum indicate. Given the exploding growth in the number of software patents, an audience who will be greatly interested in things like this product, the next version of the book and software should clarify the reality of seeking software patents. Also Gable's article should be referenced - it's a nice summary of all of the important court precedents. I suppose having a Help version of Pressman's book is useful, but I prefer flipping through the book - it is easier, as quick and more tactile. But if you are going to automate the book, take advantage of the graphics facilities under Windows Help. Machine Editable Patent Prosecution Forms One of the nice features of the book is that there are many forms to be used at various stages of the patent prosecution process. In the book, these forms are provided for in the Appendix, and include information disclosure statement forms, declaration of small business status, cover letter when sending in patent application, etc. These forms are now manipulable in the software version, which is convenient. The best bet is to generate the form you need, and transfer it to the word processing of your choice. Again this is a nice feature, but with some whiteout I was able to adapt the forms in the book without too much trouble, or typed in some of the forms into the word processor that I use. Basic Patent Record Keeping Utilities and Checklists There are a series of menus and data entry screens for entering basic information about your device - inventors, date of conception, and other diary like information. Also, in the book there are a few flowcharts to determine how patentable your invention might be, through which route you should file your patent (international aspects making the differences), and other assessments. The software version implements them in a straightforward manner. One consideration for the future is that it is harder to notarize computer files. While you can print out the file, and have the paper version notarized or witnessed, some people might forget to do so, and keep all notes on the computer. Again, a good notebook, and paper and pencil for the flowcharts in the book is just as useful. I disdain these three features somewhat since the software version provides little additional benefit beyond the book, but at a steep price for the traditional person-in-the-street audience of Nolo Press. (Of course, I also think that students shouldn't use calculators :-) Patent Application Drafting This is an application near and dear to my heart. For some time I have been distributing a LaTeX template of a patent application for free through my patent news service (probably a few thousand copies to date), and am always interested in how others approach this great need (no catcalls from the patent lawyers, please !!). In this module, the structure of the patent application is broken up into many sections (title, background/cross references, background/field of invention, background/prior art, objects and advantages, drawing figures, detailed drawing descriptions, main embodiment, other embodiments, conclusions/ramification/scope, abstract, and claims). For each section, the program prompts you with editable windows that you enter the appropriate text. You can jump across windows (which is useful, since the text of patent applications is intimately cross-linked), and pop-up help files that contain sample text from existing patents. In general, for people new to patent prosecution, the program is quite useful. It helps you understand the structure of a patent application, steps you through each section, and provides examples from existing patents. I suggest, when using both the book and/or the software, that you buy copies of patents in the subclasses related to your invention. The text in these patents will be more pertinent examples than the general examples provided in Nolo's software. ---------- Together, the four sections of the computer program provide an excellent introduction and tutorial material for understanding and participating in the patenting process. You can use the materials to file a patent on your own ("pro se"), or to organize your thoughts and ideas on paper so that when you interact with a patent lawyer, you don't have to waste time having the basics of patenting explained to you, or waste time explaining the basics of your invention to the lawyer. At $150/hour, saving a few hours of time interacting with a lawyer more than covers the cost of buying the program from Nolo Press. Like any product, future versions will be more useful (for example, adding pictures to the Windows Help files version of the book), but this version is a useful tool. My one concern, which I will explain below, is that price is twice as high as it should be, that the program's benefits, above and beyond the book's benefits, are not worth the $200 differential. At half the price (or twice the content), I would wholeheartedly recommend this program to any inventor. PRODUCT INCEPTION According to Nolo Press, some time ago, the EDS corporation (a big systems house) decided to use Pressman's book inhouse to help educate their employees in the patenting process. EDS liked the book enough to approach Nolo Press and suggest a joint venture to transform the book into software. What resulted is this program. Part of EDS' advice was to target this program to the corporate market, and to charge a price typical for this market, resulting in the $229 list price for the program. I think this is a big mistake by Nolo Press, for two reasons. First, I don't think there is much of a market in the corporate world for such a program (other than for educational purposes) - corporations either have inhouse patent counsel with their own systems already created (using word processors, etc.), or use patent law firms, who either have their own systems, or have little interest in something that makes their operations more efficient (less billable hours - sue me, I'm cynical). No, the market for Pressman's book and software implementation is the individual inventing community. Which leads to my second objection. Nolo Press has long sought ways to bring legal information to the masses, both in an effective and informative style, and at reasonable prices. This $229 price is not in this spirit. Further, another Bay Area company, JAIN, sells similar products (BizPlanBuilder, etc.) in sophistication, in the 75$ to $135 price range. Thus I strongly recommend to Nolo Press that it price the software in this lower price range, not only because it will lead to higher sales and profits (the supply/demand price curve being elastic enough to achieve this), but to remain true to the spirit of Nolo Press. My advice is to price the program at $119. WHAT IT IS MISSING There is however a set of substantial additions to the software that would make the $229 price tag reasonable, or allow a higher price advanced version to be marketed along with the current product. This advanced version would include information on four subjects not well treated by Pressman's book (or for that matter, even by advanced patent drafting texts): prior art searching, figure drafting, claims analysis, and international filing. Before these additions are discussed, one general addition would have to be made - adapting the software to a CDROM. There are vast amounts of patent information machine accessible that would be useful for inventors to access from their PCs. The Patent and Trademark Office already sells CDROMs with such information, some of which could be captured as part of this program. At 500 megabytes, a CDROM product could provide plenty of data. Especially when it comes to claim drafting, it would be great to offer a wide variety of example claims from patents in a wide variety of classes. Searching Using a few hundred megabytes (compressed and decompressed on the fly), you could store the Patent Office's Manual of Classification and lists of patent numbers by class and sub-class. This allows people to learn about, and to do preliminary patent searches in the comfort of their home. The data is easily accessible, structurable and quite informative (in fact, I am trying to setup an Internet mail server to make this data available). Drafting The Patent Office recently released a revised patent drafting manual, titled "Guide for the Preparation of Patent Drawings". It includes a listing of the federal regulations pertaining to drafting patent diagrams, plus good and bad examples of patent drawings. The scanned in text is about 150K, and compressed BMP files of the figures total about 5 megabytes, easily stored on a few floppy diskettes, or on the CDROM. Here is an example of part of the manual: (b) PHOTOGRAPHS. (1) BLACK AND WHITE. Photographs are not ordinarily permitted in utility and design patent applications. However, the Office will accept photographs in utility and design patent applications only after granting a petition filed under this paragraph which requests that photographs be accepted. Any such petition must include the following: (i) The appropriate fee set forth in section 1.17(h); and (ii) Three (3) sets of photographs. Photographs must either be developed on double weight photographic paper or be permanently mounted on bristol board. The photographs must be of suffcient quality so that all details in the drawing are reproducible in the printed patent. Also, part of the CDROM can be used to store hundreds of figures from a wide variety of issued patents, so people can see how others drafted diagrams. Both Pressman and patent lawyers always suggest to start out the patenting process by sketching your diagrams - yet there is no guidance for this crucial first step. Supplying lots of examples of diagrams will give inventors good ideas for drafting their own diagrams and figures. Claims Analysis One of the most important parts of a patent are the claims - it is the section that describes exactly what you want intellectual property rights for and is where most patent infringement cases are fought over. Patent claims drafting is not a trivial subject, and it can take many years of practice and guidance to be able to draft good claims. While I usually recommend that individual inventors can do much of the patenting process on their own, I also suggest they retain a patent lawyer or patent agent to aid in the drafting of patent claims, claims that properly refer back to the text of the specification, and provide broad protection. All this aside, there are software tools that individuals can use to analyze their own patent claims, and those from existing patents that they might be examining for inspiration or prior art considerations. Such programs range in complexity. For example, here is the output of one Windows program I have written that implements some of the rules from the MPEP: Patent Number : 4467421 Patent Title : Virtual storage system and method Number claims: 30 Indep. claims: 9 Depen. claims: 21 CHECKING INDEPENDENT CLAIM BASIC STRUCTURE WARNING: Independent claim 1 does not start with 'A' or 'An' WARNING: Independent claim 11 does not start with 'A' or 'An' WARNING: Independent claim 24 does not start with 'A' or 'An' WARNING: Independent claim 30 does not start with 'A' or 'An' CHECKING DEPENDENT CLAIM BASIC STRUCTURE CHECKING INDEPENDENT CLAIMS FOR MULTIPLE MEANS CHECKING THAT PREAMBLES MATCH CHECKING ILLEGAL PUNCTUATION: ' " - (s) Claim 11 uses '(s)' to indicate one or more of an item. This could be ambiguous. Rephrase clause to use 'at least one' CHECKING FOR ABBREVIATIONS CHECKING FOR DOUBLE ARTICLES CHECKING FOR PRESENCE OF 'OR' Claim 1 contains 'or' - violates rules unless noun phrases before and after 'or' are very similar, for example, 'bolt or screw' CHECKING FOR VAGUE NEAR-EQUALITY ADVERBS CHECKING FOR VAGUE ADVERBS Claim 1 contains the word ' comparatively ' It is suggested to use more precise definitions in the clause. Claim 5 contains the word ' relatively ' It is suggested to use more precise definitions in the clause. Claim 12 contains the word ' periodically ' It is suggested to use more precise definitions in the clause. CHECKING FOR NEGATIVE LIMITATION CLAUSES' Claim 7 contains the word ' nor ', which suggests that an element is being subtracted. This is improper, and should be corrected by redrafting the earlier claim 5 Claim 9 contains the word ' not ', which suggests that an element is being subtracted. This is improper, and should be corrected by redrafting the earlier claim 5 CHECKING FOR PRESENCE OF 'MULTIPLICITY' CHECKING FOR PRESENCE OF 'PREFERABLY' CHECKING FOR VAGUE ADJECTIVES Claim 1 contains the word ' temporary ' It is suggested to use more precise definitions in the clause. Claim 2 contains the word ' convenient ' It is suggested to use more precise definitions in the clause. Claim 5 contains the word ' low ' It is suggested to use more precise definitions in the clause. Claim 6 contains the word ' high ' It is suggested to use more precise definitions in the clause. Claim 24 contains the word ' slow ' It is suggested to use more precise definitions in the clause. Such a program can help an individual check drafted claims before submitting them to the Patent Office, or showing them to their patent lawyer or agent. Such rules are unambigious, and catch errors that waste time and money in their correction. It amazes me that twenty years into software patents, there are so few tools available for patent analysis, tools Patent Bar associations should have sponsored years ago. International In this era of global economics, it is profitable for many inventors to seek foreign patent rights, especially in Japan and Europe. Seeking such rights is expensive and complicated, as each country has its own rules for awarding patents. Unfortunately for individual inventors in America (actually everywhere else in the world), there is little collected information on foreign patenting. Pressman's book only explains the basics, and advanced books (such as from the Practising Law Institute) don't explain that much more. Other than a few expensive publications, one has to unnecessarily rely completely on a patent lawyer. This not be so. Much foreign patent information can be located and organized in an easily retreivable form. For example, here is the China record for a database of foreign patent practices that I maintain: COUNTRY: China ITSNAME: Zhonghua Renmin Gonghe Guo DERIVE: SELF POPULATE: 1169 M [1992] CAPITAL: Beijing ELCPWR: 670 GW [1991] MONEY: Yuan, 5.71 [1993] USEMBAS: 2300 Connecticut Avenue NW, 20008, 328-2500 WIPOCODE: CN WIPOMEM: YES PARISMEM: YES PCTMEM: YES BERNMEM: YES PATOFFC: Beijing PATTITL: Chinese Patent Office PATADR: 6 Xi Tu Cheng Road, Ji Men Bridge, Hai Dan District, Beijing PATFONE: (86-1) 201 94 51 PATFAX: (86-1) 201 94 51 PATCHIEF: Gao Lulin USPATS: 513 EPOPATS: 14 PTOCODE: CNX CN1 RC PTOHOLD: 1985 CANTPAT: Animals, Plants, Medical diagnostic methods APPLANG: Chinese PUBLISH: 18MON OPPTERM: Grant to month six PATTERM: 20F WORKBY: 3 years WRKFRM: Grant PATORG: All-China Patent Agents Association PTRGADR: 17 Beihuan W Road, Beijing 100088 TRADEREP: In January 1992, the US and China signed a Memorandum of Understanding (MOU) on Intellectual Property Rights. In the MOU, China has committed to providing improved protection for US inventions and copyright works, including computer software and sound recordings, as well as trade secrets. The Chinese have made progress in implementation of the MOU. Such information, along with information in GAO reports and US Office of Trade Representative foreign trade barrier reports (which contain sections on intellectual property violations) only takes up a few megabytes, and would be a welcome addition to any patent information product. Comprehensive information is available on at least 80 countries (the PCT members plus a dozen or so big non-PCT members like Taiwan and India). The data in the many different fields illustrate the complexitites and boobytraps of foreign filing. For example, the Japanese Patent Office prefers that the Background Summary of a patent application be prepared in a specific layout, a layout that is compatible with US Patent Office requirements. Thus preparing a US patent application in the Japanese style will facilitate processing of the patent application when filed in Japan. Advice on this is found in a recent GAO report, and no other public publication (and probably not known by many patent lawyers). It is this type of international patenting information that greatly helps individuals, and even corporations. ---------- Thus my suggestion to Nolo Press is to come out with an advanced version of their patent software program on CDROM that includes features like the four described above, either as a separate product, or a product for which you can more reasonably charge $229. (And if you are looking for an author to write these additions, I might be able to suggest someone :-) PTO IMPACT Like it or not, more and more sophisticated tools for drafting patent applications, like Nolo's implementation of Pressman's book, will be made available to inventors in the years to come. It will increase the number of patent applications, especially in the field of software patents, since those people are most interested in patent application generator software. While the additional revenue is welcome by the PTO, it will also probably lead to more patents being issued that are faulty on prior art concerns, as well as consume more examiner time because of the extra burden of handling "pro se" applications. At the same time, some of these developments in patent application tools and services (such as my Internet Patent News Service) are things that the Patent and Trademark Office should be offering. For example, the PTO has been trying to develop an electronic application submission form/process, but has not been entirely successful. Nolo's product shows that this can be done (and in fact, their product probably can be enhanced for PTO needs). Just like people in basements can invent devices that make obsolete technology of established businesses, so to can other people in basements develop patent application tools that challenge traditional patenting practices and strain PTO capabilities. Nolo's product should be a reminder to the PTO that technology always moves faster than government agencies. PATENT COMMUNITY IMPACT As much as I think the Patent and Trademark Office should be offering some of these capabilities, being a government agency, they are constrained on how they can reach out to the public. The patent legal community is under no such constraints, and should be doing a lot more to provide information and tools to inventors. The Patent Bar associations around the country have been negligent in not doing more to educate and assist the inventing public. And I will be cynical - such information and tools, such as Pressman's book and the software implementation, cuts into their profits by allowing an inventor to do much of the preparatory work themselves. Fortunately, there are a growing number of patent lawyers and agents who don't insist on preparing the entire patent application, and will charge a smaller fee if you provide them with ample, well organized materials. Typical costs for having a patent lawyer prepare a full application can range from $6000 to $10,000. With sufficient preparation and a willing patent lawyer, you can reduce these fees in half. Thus the $129 or $229 product price for programs like Nolo Press' is a bargain if you can save a few thousand dollars. ____________________ In summary, at half the price, or twice the content, I highly recommend Nolo Press' software implementation of David Pressman's "Patent It Yourself". It takes away some of the mystery of the patent process, and helps people organize their notes and thoughts. At its current price, I still recommend the program, though I suggest you buy the book first, and if you feel you need more assistance, then certainly buy the program. But in any event, I applaud Nolo Press for bringing this product to the marketplace, and encourage people to check it out. Greg Aharonian Internet Patent News Service (for subscription info, send 'help' to patents@world.std.com) (for prior art search services info, send 'prior' to patents@world.std.com)