The first question a person has to ask himself or herself after the “Eureka” moment is why file a patent application at all. This is not an idle question. Many of us have ideas for new products or services, some of them may even be “the real thing”, but the question still has to be asked why file a patent application. 80-90% of patent applications filed with the US Patent and Trademark Office (USPTO) are rejected. Of those that do get through, maybe 10% represent money-making inventions, while the rest oftentimes are remainders of ideas that did not pan out, get funded, or got left behind for something else. And while only a small percentage of filed patent applications in the end represent money-making inventions, patent application preparation and filing and further prosecution and upkeep all cost thousands of dollars; if one goes for coverage beyond the US, say through a Patent Cooperation Treaty (PCT) filing, the expenditures can run into the tens of thousands of dollars—or more. So why file?
Before a person converts an idea into a patent application, an inventor should ask himself/herself a couple of questions:
If you decide to file a patent application to cover a new invention, then your next big decision is with whom to file. The two most important traits for any patent attorney or patent agent are honesty and knowledge within the field. The first quality, while it might seem obvious, is critical. Patent work and associated costs are fungible. You may need to file in multiple jurisdictions and/or you may need more or less claims. You want an honest patent preparer so that you are confident that whatever expenses you incur are real expenses. You do not want to be filing unnecessarily or filing bloated applications simply to help pay for the staff of the office which you use. You also want someone who can tell you that prior art exists and/or there are significant risks in getting the patent that you are sure that you deserve.
As to the second quality, one of the greatest challenges is finding a patent preparer who understands the subject matter almost as well as the inventor himself/herself. You have been spending months, maybe even years, on this topic and you know the literature inside out; you also may be the only expert in your particular invention anywhere in the world. While one may not expect a patent attorney or the like to be such an expert, that person must be well-enough versed in your invention to allow him/her to understand the invention, compare it to the art, and write cogently claims and the full application. If the patent preparer does not fully understand the invention, then he/she may simply write a somewhat vacuous application that does not fully develop the concepts and embodiments of the invention. If a person does not understand a client’s invention, then he/she should suggest someone else to write the application.
The costs can range significantly but reliable low-cost services for professional patent writing do exist. One of the best services available is www.PatentTank.com, a virtual Think Tank for Patents. The Company offers a free prior art search and free advice on how to strengthen the claims to increase the likelihood of an issuance, followed by a one-time fee of $5500 for the full patent writing including all claims, figures and assistance with filing to make sure the application forms are properly completed and submitted. The one-time fee also covers the response to the first office action which typically addresses issues of obviousness. For more information and a sample of work, visit www.PatentTank.com.
THE AUTHOR OF THIS BLOG ARTICLE IS NOT A LAWYER AND HARVARD BUSINESS SERVICES, INC. IS NOT A LAW FIRM. THE ARTICLE ABOVE IS NOT INTENDED AS LEGAL ADVICE AND SHOULD NOT BE TAKEN AS LEGAL ADVICE. THIS SHORT ARTICLE IS STRICTLY TO MENTION SOME ASPECTS OF DELAWARE’S CORPORATION LAWS AND/OR LAWS RELATING TO OTHER FORMS OF ENTITIES WHICH YOU MAY NOT BE FAMILIAR WITH. WE RECOMMEND THAT YOU CONSULT WITH A LAWYER BEFORE FORMULATING A STRATEGY WHICH WILL BE SUITABLE FOR YOUR SPECIFIC CASE.