Originally posted on 8/28/05
Can I prepare the patent application myself? This seems to be a very common question lately among prospective clients. I have addressed this issue in my FAQ page on the firm’s website, but I believe this question is deserving of additional consideration here.
First, let us start with a common misconception concerning patent applications: many people are under the false belief that a patent application is a form that is merely filled out and filed. Nothing could be further from the truth. There is no standard form that can be filled out with relative ease. Rather, a patent application is a multi-page written legal document that on average for a simple invention approaches or exceeds 5,000 words in length. The content of this document in whole or in part determines the scope of protection afforded the patentee, the strength of the patent, and consequently, its value in the marketplace.
Simply, a poorly written patent application, which issues into weak patent, will be easy for a competitor to circumvent without infringing while still taking advantage of the advancements and improvements described in your patent. And if the patent is easy to get around, then companies that make products or sell services related to the invention are not going to license it. Further, the patent may provide little or no deterrence effect to those who want to market products and services that will compete with your invention. To summarize: a weak patent resulting from a poorly drafted patent application is often no better than having no patent at all. In fact, it is often worse considering the time and money spent preparing the patent application and shepparding it through the patent office might have been better spent marketing and promoting the product or service.
So how does a poorly prepared patent application relate to an inventor drafting a patent application themselves? Well in my experience in all but a very few exceptions, an inventor drafted patent application and the subsequent patent issuing therefrom is usually poorly prepared and weak respectively. I would guess maybe 1 in 100 is halfway decent and that rare gem is most often prepared by an inventor that has had a significant amount of experience with the patent process. In other words, the inventor probably prepared a number of duds before he/she got it right.
Why are inventor prepared applications so poor? Sometimes the applicant is not a great writer but even very good to excellent writers have a difficult time of it. Why? Because patent applications are written differently from other types of writings. A good patent attorney always considers his/her knowledge and understanding of patent law with each and every word, sentence and paragraph he/she writes. As a good patent attorney becomes more and more experienced, the process becomes more natural and requires less and less of a conscience effort. But the inventor often does not have the knowledge or experience to apply to the effort and therefore will almost invariably make mistakes that effect the patent’s ultimate strength and desirability.
An aside: you notice I tend to use the phrase, “good patent attorney” and not “patent attorney”. This is on purpose. Stay tuned to this blog for future discussions and musings about good versus not-so-good patent attorneys. I wish I could say most are good, but the more and more stuff I see from other attorneys, especially those that deal with primarily with independent inventors and entrepreneurial companies, the more I realize there are a significant percentage of “poor patent attorneys” out there.
I guess an example or two is in order. On my web site I use the example of performing surgery on yourself rather than hiring a doctor. You could very well be more intelligent than your surgeon but I am betting no amount of reading and watching of surgery videos is going to prepare you for removing your own appendix. So you hire a qualified doctor. OK, this example is a bit extreme since surgery is a life and death situation and drafting a patent application generally only has monetary consequences. But if you are building a business around your invention or you are certain it is a million dollar idea that could be easily licensed to a major corporation, don’t you owe it to yourself to do it right? Incidentally, newbie patent attorneys have the same problems as an inventor in writing their first patent applications except perhaps they will have a bit better grounding in the law. Nevertheless, this is why patent attorneys fresh out of law school are closely monitored and their work is closely reviewed by their senior colleagues.
ORIGINALLY PUBLISHED AUGUST 28 2005
Ok, back to the question posed at the beginning of this now very long entry: can I prepare a patent application myself? You would think after reading this my answer would be a resounding NO! However, I cannot seem to say it. I merely tell a prospective client a shorted recitation of what is written here and send him/her on his/her way. This particular client could be the one in 100, and even if not, there is nothing legally preventing the prospective client from preparing and filing his/her own application. And who knows, maybe they will be back in the future with a new found respect for my craft
