8. Do I really need patent agent or patent attorney ?

Do I really need patent agent or patent attorney

“Do I really need a patent agent or attorney? DIY patent drafting has risks like inadequate understanding of patent laws, drafting narrow claims, and procedural mistakes, which can lower the chances of getting a patent granted. Hiring an experienced patent attorney helps in getting the broadest possible protection for an invention, ensures accuracy in following patent office procedures, and getting a patent granted.”

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Do I really need a patent agent or patent attorney?

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 a 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 the patent office? This is a basic question that every inventor has when he decides to go ahead for filing a patent for his invention.

to answer this question in an unbiased way let’s take one step back and try to understand who exactly the patent agent is…

as you already might be knowing patent is a techno-legal document, as an inventor you are the best person 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 the patent.

So let’s search a 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 a mechanical device or idea for a software application or E-commerce website to patent. Just type in relevant search keywords and review some results.

Look at the construction of the patent, have a look at how the description is written, how the diagrams are marked and labeled, how detailed the description is written. and then the most important part of the 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 (Patent document) is way different than the normal thesis or project report or any technical document you have seen. There is a reason behind it.

Patent documents are one of the most complex documents that involve a certain degree of difficulty in creating while considering the technical side as well as the legal side. After all, it is a Law, and like any other law, there are sections, acts, 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 a patent application for your invention which is almost impossible to match by a first-time inventor. And the interesting thing to know is, the patent office knows that inventors might need help in creating a patent application so patent agents and patent attorneys are authorized by the government to practice before the government patent office for patent procedures that is patent prosecution and litigation.

So, registered patent agents and attorneys are made available by the government itself. there is an exam for registered patent agents which an extensive very difficult level exam. And they are established by the 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, the 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 leverages his wisdom of writing a patent application as he would have seen hundreds of if not thousands of patents in his career.

Can I file patent myself without patent professional?

Can I file a patent myself without a 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 professionals 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 the future as it will not protect your invention as you expected it to do and it will probably not be worth the time and effort you put to get the invention protected.

There are rules about so many things while writing the patent application: 

  • Rules about writing title
  • 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 doing it yourself

Some Common mistake if you are do it yourself that is writing and filing patent on your own are: 

  • The disclosure of the invention is not sufficient enough and not enabling
  • Claims are not supported in the 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
  • The best mode of practicing the 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 a patent application is a specialized skill

Writing a 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 the 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 (a 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 the 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.

Advantages of hiring patent agent or attorney

Advantages of hiring a patent agent or attorney 

  • Patent agent and attorney would know how to write patent application and claims to have the broadest possible protection for your invention such that your competitors should not be able to copy your invention or just walk around your invention by changing some things and not infringing on your patent.
  • Writing a patent application itself has extensive laws, rules, and procedures applicable, and a number of things to consider, you would be surprised to know, there are rules related to margins of the page, rules for writing the title, abstract, claims, diagrams, detailed description, enabling etc…
  • The entire process of inception of idea to granted patent and beyond becomes a smooth experience for you when you have experienced patent agent/attorney guiding you at every stage…
    you don’t need to worry what kind of forms to use or fees to be paid, what kind of notice is there or what do you mean by objections raised, how to respond to objections etc… 

all these kind of things are already taken care by patent agent or attorney and not to forget the importance of dates and subsequent steps you should be considering for entire procedure.

so patent attorney takes care of reminding you for every date and appropriate steps to be taken with right information.

So, these 3 things make this investment in going for a patent agent or attorney look pretty small if you are considering in the longer term that is the life of your invention and if at all you win the patent get 20 years from the filing date that you are going to enjoy a monopoly on it. 

ultimately I think it all depends on level of seriousness that you have with your invention if you are casual you can just try it out just submit whatever you think is appropriate and let see what happens with the response from patent office but if you are serious with your invention and don’t want to lose its entire Novelty or don’t want to lose upon the opportunity to take it to the next level then you should consider hiring a patent agent or attorney. It is well worth the investment.

On the other hand you can try writing and filing patent application on your own but as explained above it is almost impossible to match the level of well drafted patent application by an expert patent professional, and more often than not you will end up losing on the opportunity to protect your invention adequately and making significant money with it.

that’s why patent agents and patent attorneys are there to help and they improve your chances of getting a patent granted for your invention.

The responsibilities of patent agent/attorney

  • Representing clients in all matters and procedures relating to patent law and practice
  • Preparing application for patent
  • Providing advice during the patent application process
  • Helps in drafting strong claims for your invention to be able to protect it in fullest possible extent
  • prosecuting patent applications 

By executing power of attorney, you (inventor) can appoint a patent attorney or agent to represent you for patent proceedings at Indian patent office.

First meeting with a patent attorney

It always starts with a Non-disclosure agreement (NDA).

A non-disclosure agreement is an agreement that a patent agent/attorney or Intellectual Property firm is doing with you, to protect the confidentiality of your invention.

In other words, the patent professional doing this non-disclosure agreement with you (inventor) and agreeing on keeping your invention confidential/secret and do not misuse it.

There are no cost or charges for doing this agreement, however, it is a strong document which you can take it to court your invention is misused by the patent professional (but this almost never happens)

The first meeting with patent agent or attorney could be you meeting patent attorney personally or your communication on call or via emails. The first always remains same, signing Non disclosure agreement with inventor to keep the invention confidential.

to have an effective first meeting with patent professional you should be ready with: 

  • a detailed description of invention where every aspect of it is completely captured
  • Diagrams, flowcharts and illustrations if applicable
  • comprehensive list of keywords, synonyms and search terms
  • list of closest possible prior arts
  • differences and problems with prior arts that our invention is solving
  • other products or services in market that are similar to our invention
  • our competitor working in same field
  • what feature is novel and non obvious
  • commercially important feature to protect
  • sample claims from your point of view 

and all the relevant answers to question from Invention disclosure form

and that’s where our idea incubation phase helps us to be well prepared and ahead of time while contacting patent agent/attorney for the first time.

Thus it becomes an easy job for us now… all we need to do is share the outcome documents that we have prepared from the idea incubation phase along with the closest possible prior arts that we have identified.

Ideally, the Patent agent or attorney would like to go through all this information before having a meeting with you such that the meeting becomes fruitful and result-oriented.

It is important for you to understand that all the information that is relevant to the innovative ideas should be disclosed to the patent attorney sometimes seemingly unimportant or trivial information could prove important in the context of the invention.

sometimes patent attorney might ask you to illustrate the entire timeline starting with the Idea and the action steps that you took to develop the innovative idea into its current state, this timeline discussion also includes technical details of the invention, its features and advantages, What problem invention solve, and how it is different or better than prior arts already known to the public.

Another important aspect of this first meeting with patent attorney is to get working invention disclosure having sufficient information about the innovative idea such that it becomes enabling, and a person skilled in the art would be able to practice their invention based on the disclosure. And with the detailed invention disclosure, a patent professional could perform the comprehensive Novelty / Patentability search.

it is important to discuss all the synonyms and different set of keywords used to identify the same element of the invention, here again or preparation that we did in Idea incubation phase comes to rescue and we are already ready with all the synonyms and parallel words used for different elements of our invention. Many times it is important for a patent attorney to understand whether the elements of the invention could be replaced with something similar and still perform its intended purpose?

It is important to list down all such elements that could be replaced so as to form the highest possible protection while writing claims and a detailed description of the invention.

as a part of the discussion during first meeting with patent attorney you might be asked to differentiate your invention in reference to prior arts.

you may be asked for identifying the novel feature or novel part of the invention along with identifying commercially important element of the invention. patent attorney labels a reference number to your invention disclosure for further communication and keeping all the records organized.

Drafting the first claim in the meeting itself

Drafting the first claim in Meeting :

If we have performed all the steps correctly till now, and have communicated all results to the patent agent or attorney before the meeting for review (of course after signing NDA online or via email) then this step is possible.

It would be really helpful if a patent attorney could draft the first claim (first independent claim) for your invention during the first meeting itself, as most of the description in the patent application follows the claims, it would be a great achievement if you and patent agent or attorney could write the first set of claims in the first meeting itself. Of course, the claim would be revised and updated but if we could get a finalized set of at least the first independent claim in first meeting itself when you (and patent attorney) is together then this would be a great head start for moving towards filing patent application for your invention.

This step will greatly enhance the speed of completing the patent application as having a finalized set of claims ready will make the job of writing the patent application easier and less time-consuming.

Prasad Karhad
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