January 2015 - DSL Patents

Technically, you do not need a patent agent to file a patent application. As an inventor, you are able to draft and file your own patent application and then upon filing, 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 number of challenges in the patent drafting and prosecution process that make it more difficult for inventors to embark on the process themselves, with new ones coming up all of the time.

Claim Drafting

Perhaps the biggest obstacle 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 your inventive concept, which is not uncommonly 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 the high technology and chemical / pharmaceutical fields, there are specific rules that have been developed by the government of different countries and/or the patent courts. These rules prohibit certain types of claims on the basis of lack of patentable subject matter. In many cases, these prohibitions can be circumvented with the assistance of an experienced patent agent by 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.

As well, historically, a complicated set of rules for drafting claims has developed, with the result that modern valid claims tend to be unreadable gibberish to the untrained person. These rules include restrictions on punctuation, antecedents, use of acceptable conjunctions and more.

Patent Descriptions

There are also challenges 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 the invalidation of the patent 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 of these upcoming deadlines 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 a multiplicity of steps that need to be undertaken. The Examiner will not routinely explain these options at all, or in an understandable fashion. 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 served by concentrating on developing your technology and growing your business, instead of focusing on the confusing and detailed minutiae of the various patent rules that need to be understood and obeyed.

When you are searching for the right patent agent to help you develop and file your claim, there are a number of important factors that should be taken into account.

Registered patent agents

First, you should ensure that any person you retain is a registered patent agent. Most jurisdictions have a comprehensive training and qualification process that must be done in order to gain the patent agent designation. This process can be quite rigorous. For example, in Canada, patent agent candidates must pass a series of four, 4-hour written exams that test the candidate’s ability to draft a good patent application, prosecute an existing patent application to secure a notice of allowance from the patent office and analyse whether a patent is likely to be considered by a Canadian court as being valid and analyze whether a patent is likely to be considered infringed by a competitor’s device. The candidate must get a minimum 60% average mark in all four exams to qualify as a registered patent agent.

There are a number of people who have not yet sat, much less passed the patent agents exams who wish to get into the business. These people may hold themselves out as “patent professionals”, “technology consultants” or some similar confusing terminology. Remember that if the person is not listed as a patent agent, the person is not one. Then the question is whether this means the person has tried to pass the exams and failed, or have never even sat the exams.

There is no need for the patent agent to be a lawyer. Many patent agents are also lawyers. However, for purposes of drafting and prosecuting patent applications, a lawyer is in no better position than a non-lawyer patent agent.

However, many lawyers, even those who practise patent or intellectual property law, are not patent agents. While they may be familiar with the laws governing patents in their jurisdiction, they probably do not have the experience or skill set necessary to prepare broad valid patents for you, or at least have never bothered to sit or pass the exams. Unfortunately, it is sometimes difficult to identify such persons. Perhaps the best way is to directly ask whether or not the person is a registered patent agent. A lawyer may identify himself or herself as a “patent lawyer”, “IP lawyer” or even a “trade-mark agent”. These are qualifications that are valuable to have in an IP firm, but may be sneakily used to gloss over the fact that the person is not a patent agent.

Who is doing the work?

Also, be aware that a law firm may say that it has patent (and trade-mark) agents, so long as a member of the firm is a patent (and/or trade-mark) agent. This does not mean that the patent agent will be the one doing the work on your patent application. If you are lucky, you might get the patent agent to “breathe over” the application before it is filed. There are even some law firms that have no patent agents. Like individuals who are not patent agents, they can skirt the requirement that only registered patent agents can file patent applications on behalf of an inventor by drafting the patent application and giving it back to the client to file with the patent office directly.

You should ensure that the patent agent you hire is a Canadian patent agent. Only a Canadian patent agent (and a very small number of US patent agents) will be allowed to represent you before the Canadian patent office. On the other hand, most Canadian patent agents are qualified as US patent agents and able to act on behalf of Canadian inventors before the USPTO. While our practice at DSL Patents Inc. is not to do so but to retain US patent agents for this purpose, the familiarity that a Canadian patent agent also qualified as a US patent agent has with US issues may be very useful to help you understand the issues.

Understand their technical qualifications

Finally, you should ensure that the patent agent you hire has the technical qualifications to understand the invention and explain it clearly in the patent application. As a general rule, there are three basic types of technology, which, for lack of better terms can be denoted high-tech, chemical/pharma, and mechanical. The “high-tech” group includes electrical, electronics, communications, computer, semiconductor, optical and possibly robotics technologies. The “chemical/pharma” group includes chemistry, pharmaceuticals and biological technologies. As a general rule, if your invention includes a technology in the “high-tech” or “chemical/pharma” group, you should look for a patent agent who studied one of the technologies in that group in university. Otherwise you may find that you will be spending most of your time explaining the underlying technology to your patent agent and paying him or her for the privilege. Also, especially for the” chemical/pharma” group, there are technology-specific patent principles at play that may not be well understood by a patent agent who does not have technical training in this specialty. The “mechanical” group generally includes everything that does not fall within the “high-tech” or “chemical/pharma” groups and includes civil and mechanical engineering. As a general rule, because “chemical/pharma” patent practice is so different than the other types, many patent agents working in the “chemical/pharma” group may not be very comfortable working with inventions in the “mechanical” group. However, most patent agents working in the “high-tech” group will probably be pretty comfortable working with invention in the “mechanical” group as well as their own.

Find a patent agent you enjoy working with

Once you have found a registered Canadian patent agent with the technical knowledge necessary to understand the intricacies of your invention, it really is a matter of finding the person with whom you can relate and work together closely with. You may also wish to consider issues such as the experience of the patent agent and whether the patent agent works in a large firm or a small firm or even on his or her own. In a large firm, there is a greater likelihood that a person with the necessary qualifications will be found, and there may be a greater capacity to handle your work. On the other hand, you will likely have less flexibility over who will be doing you work (you might initially meet with a partner but find that a junior agent or trainee is learning on the job on your invention and on your dime) and in terms of service. Many larger firms have considerable overhead and as a result charge more for their services with little or no flexibility to customize their service offerings to meet your individual requirements.

Do I need a patent agent?