- The Basics
- Approximate Costs
- Patent Lingo
- The Need for Confidentiality
- Process & Timelines
Technically, you do not need a patent agent to file a patent application. As an inventor, you can draft and file your own patent application. Once your patent application is filed, you can hire a patent agent to assist you with the examination process, or you can receive and respond to the Examiner’s Reports (often called an Office Action) yourself.
However, you should be aware that there are a lot of pitfalls in both the patent drafting and prosecution process, and new ones crop up all the time.
Perhaps the biggest pitfall in the patent drafting process is related to claim drafting. Most inventors (and indeed many patent agent trainees) tend to draft their claims too narrowly. If they do, they may not even become aware of the scope of monopoly that they have given up, because the patent examiner is only too glad to grant a patent with overly narrow patent claims. A skilled and experienced patent agent can work with you to identify the inventive concept, which is often quite different than what was originally perceived by the inventor, and draft a comprehensive set of claims that cover the inventive concept in a layered fashion, so that as broad a scope of monopoly as the inventor may be entitled is obtained, while establishing fall-back positions in the event that prior art is uncovered.
In many technical areas, including high technology and chemical / pharmaceutical fields, there are specific rules that have been developed by the governments of different countries and/or the patent courts. These rules prohibit certain types of claims based on a lack of patentable subject matter. In many cases, these prohibitions can be circumvented with the assistance of an experienced patent agent with subtle changes to the form and structure of the claims.
Believe it or not, an experienced patent agent can even save you money through claims drafting. In many jurisdictions, including the US and the EP, penalties are assessed if a threshold number of claims is exceeded. Some jurisdictions such as the US, have exotic patent claim counting rules so that even if you think you have less than the threshold number of claims, you may be subject to expensive excess claims fees.
Historically, a complicated set of rules for drafting claims has been developed, resulting in modern valid claims that can be unreadable gibberish to the untrained eye. These rules include restrictions on punctuation, antecedents, use of acceptable conjunctions and more.
There are also obstacles in the drafting of the patent description as well, although these tend to be less critical. The most important rule is the prohibition against adding subject matter after the initial patent filing. An experienced patent agent can help you extract further details that should be set out in the description to facilitate the examination process later.
Other rules include the enablement and best mode requirements in many jurisdictions. Some jurisdictions have specific rules about ensuring there is support in the figures and/or the description for specific types of claims, such as method claims. Failure to abide by these rules may result in a patent being invalidated at a later date.
During the examination process, deadlines abound. As a general rule, these need to be strictly observed. A patent agent will docket these deadlines and provide timely reminders to maximize the likelihood that they will not be missed. At different stages in the examination process, there may be more than one course of action, with different deadlines, or many steps that need to be undertaken. The Examiner will not routinely explain these options at all, or fail to clarify them in an understandable way. Failure to respond correctly, however, cannot be excused on the basis of ignorance or lack of experience, and has dire consequences, including the loss of patent rights.
Finally, care must be taken, especially in some jurisdictions, in terms of how to respond to the Examiner’s concerns. Injudicious statements made in response to an Office Action may unintentionally limit the scope of protection that a patent might otherwise be entitled after it eventually issues.
With all of the foregoing in mind, we believe that your energies are best utilized concentrating on the development of your technology and growing your business, rather than focusing on the confusing and detailed minutiae of the various patent rules that need to be understood and obeyed.