So you think you need a patent, but you don’t know whether to get a patent attorney or go it alone. This post will help you make that decision, and the next post will help you select the right representative for you, if you decide you need someone to represent you before the patent office.
I do not suggest you represent yourself
First things first- should you represent yourself? There is only one good reason to do so- cost . Filing yourself will save you attorney’s fees which can range from $5,000 to $20,000 or more over the application process. But there are many reasons not to go it alone. First, those cost savings may not be as great as they first appear. You have to account for the cost of your own time. At the minimum, you have to value your time at a lower value than the hourly rate of a patent attorney (generally $200 and up) to make it worth your while.
But you also have to take into consideration that patent attorneys are specialists in patent prosecution who may work on hundreds of applications in a year and as a result are more efficient than a lay-person. Unless you are very familiar with all aspects of patent prosecution, including necessary forms and submission procedures and relevant case law and MPEP guidelines, it will probably take you at least twice as long as it would take a patent attorney to do the same amount of work.
Furthermore, it is not reasonable to expect that you will manage to obtain the same results as a good patent attorney. As with any legal matter, familiarity and experience are critical. It may be true that you know your invention better than anybody else, but you probably do not know the law better than anybody else, and knowledge of the law is critical to obtaining solid patent protection.
Any statement you make over the course of prosecuting your patent application can be used against you in the future, not just by the patent office, but also by infringers who seek to invalidate your patent years later. If you do not draft your claims correctly, or follow the suggestion of an Examiner and amend them too narrowly, you may find your patent provides you with little protection and is of no use to you other than as a decoration. A single word may be the difference between protection and a lack thereof.
Worse, there may be no way of knowing whether you have made such a mistake or not. Any test by an infringer may come years after your patent has issued. Imagine the following scenario: you draft and file an application, successfully prosecute it and obtain an issued patent, and begin building your business in reliance on the protection your patent provides. You bring in investors, sink your capital into manufacturing capcity, ink deals with distributors, and begin a marketing campaign.
Then you find a large corporation has stolen your idea and is marketing it in an identical fashion. You threaten to sue and they refuse to negotiate, saying your patent is invalid. The company sues you preemptively and the court declares your patent invalid. In the meantime, you have gotten several more patents the same way. Are they invalid as well? Suddenly, the solvency of your business is in question.
When you invest in a good patent attorney to prosecute your patent applications, you pay a little money up front to potentially save you enormous amounts of money down the road. I would rather pay a good patent attorney to get me valid patents that stand up to scrutiny than pay a great patent litigator to save my butt in court after my patents are challenged. As in many legal matters, you can pay a lawyer a little up front, or a whole lot down the line.
When should you do-it-yourself?
So, you get the idea. I do not think it is a good idea to prosecute your own patent applications. When might it be okay to do so? Well, when you are not worried about the problems I outlined above. Maybe you are a patent attorney yourself. Maybe you are not interested in going into business and only want official acknowledgment of your invention that you can hang on the wall. Or, maybe you just don’t have any money and have no choice. But unless you really are flat broke, in which case I wonder if you should be spending your money on government fees, you might be surprised how affordable good representation can be.
Alternatives
Find a good solo practitioner or small firm to that you are comfortable with (more on making this selection in the next post) and let them know that money is a concern. Do as much of the work as possible yourself, but make sure everything is reviewed and submitted by your lawyer. By doing this, particularly if you are familiar with the patenting process, you can cut costs a great deal. You might be able to cut your costs to $6000 or $7000 over 5 or 6 years.
If you cannot afford that, you might be better served to get a provisional application filed. This is relatively inexpensive, and may cost $1500 or less. If you prepare the application yourself, it might cost as little as a few hundred dollars. There is risk in this, though (more on that in a later post). Once your provisional application is filed, you have a filing date and a pending application and can talk to others about your invention without worrying too much about your idea being stolen. Investors will also take you more seriously with a pending patent.
Now, make the rounds. Try to get someone interested in your invention. You have 12 months from the date your provisional application was filed before you need to file a full utility application. If you can bring investors on board before that time, you can use their money to pay for the application. And more than likely they will recognize that this is a good use of their money and a solid investment.
In the next post, I will discuss the factors to consider in selecting your representative. If I have overlooked anything in this post, let me know by email or in the comments.
{ 1 trackback }
{ 0 comments… add one now }