Whether to file your patent application independently or hire a professional such as a patent attorney or patent agent is very critical and pivotal for any inventor. While it is legally possible to file a patent without expert help, a process known as “pro se” filing, the complexities involved in patent law make it highly advisable to seek professional assistance. Before deciding on what could be a life-changing moment for an inventor, potential entrepreneur, and business owner, it is important to look at the advantages and risks of various options and alternatives to help one make an informed decision.

The Complexities of Patent Law

Patent law is a highly specialized field, and drafting a patent application is not as straightforward as it may initially seem to an inventor. It involves not only a deep understanding of legal principles, rules, and practices of the patent granting authorities but also technical knowledge about the invention itself. A patent attorney’s expertise can significantly enhance an inventor’s chances of securing a strong and enforceable patent. Although the United States Patent and Trademark Office (USPTO) allows for “pro se” filings, meaning one can submit a patent application on their own, this option is fraught with risks, particularly for first-time inventors or those unfamiliar with the intricacies of patent drafting.

The Risks of Filing Your Own Patent

Drafting (meaning writing and preparing for filing as per requisite format) a patent application involves adhering to a complex set of rules and regulations that are further complicated and may differ vastly among various patent granting offices in different jurisdictions. Some of the key areas that require strict attention to detail when drafting the patent application include:

• Title of the Invention: The title must be clear and concise, accurately reflecting the invention.
• Abstract: A summary of the invention that is a concise yet comprehensive technical description that helps readers quickly understand the invention.
• Claims: These are the most critical parts of the patent application and define the scope of your invention and must be written with precise legal terminology.
• Detailed Description: A thorough and accurate description that fully discloses the invention.
• Drawings and Numbering: If an invention involves drawings, they must adhere to specific guidelines, including proper labeling and numbering.

Each of the aforementioned components of the patent application is subject to specific rules, and even small mistakes can have serious consequences for the inventor. For example, errors in the claims could lead to a narrow scope of protection or worse, a rejection of the patent application altogether. The more narrowly the claims of the patent application are written, the easier it becomes for others to “design around” the invention claimed in the application, essentially bypassing the patent without infringement.

Inexperienced inventors and businesses when drafting (and subsequently prosecuting their inventions as disclosed in their patent applications) often make common mistakes that can jeopardize their patent’s value, such mistakes include the following:

• Insufficient detail in the description of the invention as provided in the patent application.
• Claims that are not fully supported by the detailed description as provided in the patent application.
• Failing to cover all possible variations or embodiments of the invention as provided in the patent application.
• Overly restrictive claims that limit the scope of the invention’s protection as provided in the patent application.
• Not disclosing the best mode of practicing the invention as provided in the patent application.

These aforementioned errors can result in a patent that is either too weak to enforce or outright rejected, leaving the inventor with little or no protection for their invention.

Why Hiring a Patent Professional is Recommended

Patent attorneys or patent agents along with patent engineers collectively referred to as patent professionals from hereinafter, are responsible for drafting the patent application. These patent professionals are experts in navigating the technical and legal challenges of the patent process and provide:

• Expertise in Patent Law: Patent professionals are well-versed in the intricacies of patent law, including the nuances of writing claims that meet legal standards in a territorial jurisdiction. They also know how to conduct prior art searches to ensure that the invention is truly novel and non-obvious, which are essential requirements for patentability.
• Maximizing the Scope of Protection: One of the primary roles of patent professionals is to ensure that the claims in the patent application protect the invention as broadly as possible. They understand how to draft claims that prevent competitors from easily circumventing the inventor’s patent.
• Drafting Techno-Legal Documents: A patent application is a techno-legal document that requires both technical knowledge of the invention and a strong command of legal language. Patent professionals have the experience to balance these aspects, ensuring that the patent application is both scientifically accurate and legally robust.
• Avoiding Costly Mistakes: A well-drafted patent application is an investment that protects the invention disclosed in the patent application. Mistakes made by a novice can lead to missed opportunities, weak patent protection, and even the potential for losing valuable intellectual property rights. Patent professionals help you avoid these pitfalls.
• Increased Chances of Patent Grant: An experienced patent professional can help an inventor navigate the patent office’s requirements and ensure that the inventor’s patent application is as strong as possible, increasing the likelihood of approval.
• Protection in Commercialization: Once a patent is granted, it must provide the protection necessary to monetize the inventor’s invention as disclosed in the patent. The patent professional will ensure that the patent application disclosing and claiming the invention covers all the commercial aspects of the invention and anticipates potential legal challenges from competitors.

The Importance of Claims in Patent Applications

As alluded to hereinabove, perhaps the most critical part of a patent application is the claims section. The claims define the boundaries of the protection provided by the patent to an inventor holding the patent and determine what is covered by the patent. They must be drafted carefully to ensure that they are neither too broad (which could lead to rejection) nor too narrow (which could make it easy for competitors to work around the granted patent).

An experienced patent professional knows how to craft claims that cover all possible variations of the invention, ensuring maximum protection. Without proper claim drafting, the application may never be considered allowable and if allowed, the resulting patent could be too weak to be commercially viable.

Costs vs. Benefits

While hiring a patent professional can be expensive, it is often a necessary investment for serious inventors. The cost of filing a patent application is a fraction of the potential revenue an inventor could earn from licensing the patent or using it in the inventor’s business. By ensuring that the patent is properly drafted, the inventor maximizes their chances of success in both obtaining a patent and monetizing it post-grant.

If an inventor is not sure whether the cost of hiring a patent professional is justified, consider the commercial potential of the invention. If the inventor believes that their invention could generate substantial revenue, investing in a patent attorney will likely be worth the cost. On the other hand, if the inventor is unsure about the commercial potential, the inventor might opt for a do-it-yourself (DIY) approach but proceed with caution.

Alternatives and Other Considerations

Before deciding to file a patent application, the inventor should also explore other forms of intellectual property protection, such as trade secrets or copyrights, depending on the nature of the invention. Additionally, filing a patent in multiple countries can add complexity and cost, which is another area where a patent attorney can be invaluable.

It is also important to remember that patent rights are not automatic once granted. A patent gives the inventor the right to exclude others from making, using, or selling their invention, but enforcing these rights is a separate matter. A patent professional can guide the inventor through the complexities of patent enforcement if needed.

Conclusion

Filing a patent application is not something to be taken lightly. While it is possible to file a patent application on your own, the chances of successfully protecting your invention are far greater when you have the help of a qualified patent attorney. From ensuring the accuracy of your claims to navigating the complexities of patent law, a professional can make a significant difference in securing valuable protection for your invention.

Therefore, if you are serious about your invention and its commercial potential, investing in a patent professional is a wise choice that can save you from costly mistakes and ensure your intellectual property is adequately protected.