Do I really need patent agent or patent attorney ?
We will address this question upfront,
The reason behind this question is obvious, you are trying to figure out whether it is worth going for such an expense to go with patent agent / attorney to file a patent application. Or can I just take the forms that are provided, fill in the details and submit it to patent office? This is basic question that every inventor has when he decides to go ahead for filing patent for his invention.
to answer this question in unbiased way let’s take one step back and try to understand who exactly patent agent is…
as you already might be knowing patent is a techno-legal document, as an inventor you are the best person to who understands the invention technically but when it comes to legal as it is a patent law (the patent act) you probably won't have that kind of experience or that wisdom to write a patent application considering the legal side of patent.
so let’s search few patents from your domain area which is the area of your invention, go on Google patents and try to come up with some granted patents from your domain.
for example you may have mechanical device or idea for software application or E-commerce website to patent. Just type in relevant search keywords and review some results.
Look at the construction of patent, have a look at how description is written, how the diagrams are marked and labeled, how detailed the description is written. and then most important part of patent , claims. Observe the language of claims. Structure and order of claim, broader scope claims and narrow claims etc…
You will quickly realize that this is way different than the normal thesis or project report or any technical document you have seen.
There is a reason behind.
Patent documents are one of the most complex documents involve certain degree of difficulty in creating while considering technical side as well as legal side. After all it is a Law, and like any other law, there are sections, act, rules, general guidelines, case laws, historical wisdom (wisdom from cases and their results) are involved.
So there are way too many aspects, rules, sections and general practices followed by experienced patent practitioners while writing patent application for your invention which is almost impossible to match by a first time inventors.
And interesting thing to know is, patent office knows that inventors might need help in creating patent application so patent agents and patent attorney are authorized by government to practice before government patent office for patent procedures that is patent prosecution and litigations.
So, registered patent agents and attorneys are made available by government itself. there is an exam for registered patent agents which an extensive very difficult level exam. And they are established by government of India itself to help inventors in patent procedures.
The main advantage here is patent agents and attorneys are also science graduates, like electronics, computer, chemical engineers or pharmaceutical or biotech graduates, so they are equally qualified to understand the technical side of invention as well.
An experienced patent professional stand in your (inventors) shoes and understand invention from your point of view. and he leverage his wisdom of writing patent application as he would have seen hundreds of if not thousands of patents in his career.
Can I do it myself without patent professional ?
It is possible. You can file the patent application without help from patent professional, in that case it is advisable that you should at least get your patent application reviewed by an experienced patent agent or attorney before filing into the patent office.
because writing a good patent application involves so much more than a first timer can accommodate into his / her writing, even trained patent professional require at least 3 to 5 years of experience to be able to write reasonably good it in the application. Hence it is worth giving a second thought to it, if you have decided to do it yourself.
A patent application not written properly, could prove a costly mistake in future as it will not protect your invention as you expected it to do and it will probably not worth the time and effort you put to get the invention protected.
There are rules about so many things while writing patent application:
- Rules about writing title of image
- rules for writing abstract
- how claims should be written
- how detailed description is to be written
- rules for drawings
- rules for numbering the drawings
- rules for pages
it is very likely that the first time inventor or do-it-yourself writer of patent application would be making some obvious mistakes that could prove costly in the longer term, and if your invention is worth patenting it probably is worth having a patent agent or attorney.
Common mistake if you are do it yourself
Some common mistakes done by inventors while filing patent application on their own are:
- The disclosure of invention is not sufficient enough and not enabling
- Claims are not supported in description of the invention
- Claims are not protecting the actual inventions properly
- The inventive step is not properly claimed
- The claims written are too limiting and lack the proper legal terms to be able to have border scope
- All possible variations and embodiments are not mentioned
- Best mode of practicing invention is not disclosed
And this list by no means complete, and many other type of mistakes that can raise a lot of objections in the proceeding of getting patent for your invention.
Having said that It has been observed that some inventors have written their patent application with remarkable quality and understanding of legal aspect of writing that it is hard to believe it is not written by an experienced patent attorney but by an inventor. However such cases are very rare and most often than not, inventors understand the technology part really well and but lack the understanding of legal aspects when writing patent application especially writing claims for the invention.
Writing patent application is a specialized skill
Writing patent application requires fair understanding and experience in
- Patent law and patent office rules and regulations
- Case laws affecting the interpretation of patent law
- Technical skills of subject matter of the invention
As an inventor you can be a leading expert in your field of invention that is technical side of it that’s your strength but where you may face challenge is legal side of it. Without (patent attorney or patent agent) chances are your patent application would be just a technical description of the invention and may fail for its sole purpose of “protecting your invention with broadest possible scope” refer our outcome expected from patent in introduction.
When you (inventor) work with right patent attorney (agent), it becomes a combination of your technical expertise + patent attorneys legal expertise and this can result into a very strong patent that adequately protects every aspect of your invention.