Do I really need to hire patent attorney in US for filing my patent ?
As an inventor you probably ask this question to yourself many times... Should I really go for hiring a patent attorney ? or will I be able to do it (writing and filing patent application) myself ?
Of course you (inventor) can go ahead and file a patent application on his / her own. without help from patent attorney and possibly end up saving save few thousand dollars.
However, while doing so you may commit some serious mistakes that can result in inadequate protection to your real invention and in some cases may even result in completely loosing invention and rejection of patent. or can result in loss of some or all of your patent rights.
Here are some of the common mistakes done by inventors:
Disclosure 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 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 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 of the 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 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.
Patent is a Techno-legal document:
Writing a patent application also called as patent drafting is a specialized skill, and it takes years of practice and experience for a patent attorney / patent agent to be a good patent writer.
Since patent is a techno legal document, writing a patent application only form technical angle without considering legal angle (just like writing thesis for a project) is a major mistake that an inventor going on his own without help of patent professional seems to be making.
Writing patent application/ patent drafting 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 right patent”
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.
An experienced patent attorney / agent can help you in:
Writing patent application that is ascertaining the patentability of the invention along with Usefulness, Novelty and Non obviousness.
Preparing patent application and other relevant documents and forms for filing at USPTO
Doing Novelty search to ensure the novelty of the invention
Following patent procedure like filing, examination, office actions and applicable fees at appropriate stages
Represent inventor in entire patent procedure that is from filing to grant of patent
“A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice”
Generally a patent attorney is an attorney that possesses both the legal and technical expertise necessary to represent clients before a patent office.
The scope of duties for a patent attorney can be broad and include representing clients in all matters and procedures relating to patent law and practice, such as preparing, drafting and filing patent applications, prosecuting patent applications representing clients in other patent-related matters.
In some countries patent attorney and patent agents are used interchangeably and in other countries patent attorney is used only if the person has qualified as a lawyer.
The responsibilities of a patent agent or patent attorney in US are:
representing clients in all matters and procedures relating to patent law and practice
Preparation of an application for patent
Providing advice during patent application process
Helps in drafting strong claims for your invention to be able to protect it in fullest possible extent
prosecuting patent applications
conducting of the proceedings in the United States Patent and Trademark Office to obtain the patent
By executing power of attorney, the inventor can appoint a patent attorney or agent to represent him for patent proceedings at USPTO.
Well written patent application by Patnet attorney provides strongest possible protection to your invention
by strongest possible protection, it typically means
The invention is described in basic simple format and then all the possible variations (also called embodiments) are explained. By doing this you can claim that these variations are also part of your invention and hence tend to provide much broader protection to the invention. Eventually it better protects your invention from other parties trying to work around the invention by bypassing the claims to avoid infringing on your patent.
So, on a concluding note:
You can write and file patent application on your own, But if you are absolutely sure the commercial potential of your invention and do not want to leave things to chance then it is advisable to go with hiring right patent attorney for protecting invention with greatest possible scope.
Points to consider on deciding to hire a Patent attorney:
Patent attorney is aware of Patent law and can make best use of this knowledge for protection of the invention to the fullest possible extent.
The novelty search conducted would be more comprehensive and would be including any existing patents your invention requires to function.
The right words to be used while writing patents can make significant difference on meaning and deciding scope of it. Patent attorney can use the right language while writing patent to your advantage.
Most important is help in writing responses to office actions (that is objections raised by controller to your patent application). Patent attorney tries to negotiate with controller and stands better chance to get approvals for grant of patent.
for more information on process inventor should follow while selecting the right patent attorney in US to work with and regarding deciding whether to go for most expensive attorney or the most economic attorney for patenting your invention check our section on hiring right patent attorney in US.
You may also find How to save costs when working with an experienced patent attorney relevant.