About Me

Hi. My name is Jerome Sacks (Jerry). I live in Lexington, Massachusetts and am a registered patent agent admitted to practice patent law before the United States Patent and Trademark Office.

Education

I received a Bachelor’s degree form Brandeis University in Physics and Math, a masters in Mathematics from Columbia, and a PhD from University of California at San Diego majoring in Applied Mathematics and Engineering Sciences.

Employment History

  • Taught full time undergraduate mathematics at the City College
    of New York (CCNY) for three years
  • Worked approximately 25 years as a Government Systems Analyst
    at the Technology Service Corporation, General Dynamics/Convair, Aerospace Corporation, TASC, Intermetrics and CTA Incorporated. My last position at CTA was as Chief Engineer
  • Worked 12 years as a database developer-the first 6 years as an independent contractor; the last 6 as a full time employee for Investor Bank and Trust (IBT). State Street Bank acquired IBT in July 2007. I left State Street on January 2, 2008.

My Experience as an Independent Inventor

My first invention was for a software patent done many years ago. I used a  patent lawyer to write the patent and it issued. I abandoned it after I realized there were better ways of implementing the algorithm.

I started my current inventing efforts over three years ago as a hobby,  almost by accident. I owned a convertible Briefcase/Backpack (ConvertaBrief by Eagle Creek). It was stolen while vacationing in Canada. I loved it; however, when I tried to buy a new one I found that it was no  longer on the market. I looked at other briefcase/backpacks and none suited my needs. Thus, I got the brilliant idea that I could design and  build my own. After about a year of work, I developed a prototype, filed a  provisional patent application and then a patent application.

After using the prototype for six months on a daily basis, I decided that there was room for improvement. I started on an improved design. Over the  course of a year I made several improvements, successively filed three  provisional patents and finally a second patent application for the new  design.

I have subsequently filed a provisional patent application  and regular patent application for a business card sized  tape measure, and shortly will be filing additional provisional patent applications for other inventions,

It was at this point that I realized my love of inventing and special aptitude for writing patent applications. I also enjoyed the camaraderie of other inventors. My career  as a patent agent by day and inventor in my free time was born.

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What I Learned By Writing My Own Patent Applications

I became a Registered Patent Agent (#62493) in June 08, 2008. I have filed over 11 regular patent application and multiple provisional patent applications in the last several years. Realizing my limitations in protecting my inventions, I took and passed the USPTO exam for becoming a registered Patent practitioner. Based on this experience, here is what I’ve learned as an independent inventor filing his own applications.

Pros

The availability of the Internet, the relatively low cost and high capability of personal computers, and the availability of resources such as

  • Pressman’s Patent it Yourself (2011  edition) for patent filing related guidance
  • Slusky’s Invention Analysis and Claiming for Writing claims
  • Google Search for Prior Art Commercial Products
  • www,FreePatentsOnline/search.html for Patent and Patent Publications Prior Art Search
  • DesignCad software for preparing formal drawings
  • Prototyping skills by trial and error makes “Do-It-Yourself’ patent application writing within the reach of many inventors.

Cons

However there are also significant risks of this approach,

  • Writing my own disclosure and claims was risky since the invention has to be protected from:
    • existing prior art that has been uncovered by inventor at filing
    • prior art that surfaces during patent prosecution
    • others who will attempt to work around or break the patent
    • infringers who violate the patent after the patent issues
  • The claim writing process is very challenging and is difficult for most.
  • Evaluating prior art is tricky, because interpreting the prior art documents, based on complex US patent law, is tricky.

Conclusions

The independent inventor:

  • Can prepare as much of the patent application herself as she is capable of
  • Should hire a registered patent practitioner to maximize the likelihood that the patent application that is filed will eventually issue and will offer the inventor the maximum protection possible.