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How to Patent?

After number of posts on the topic of idea protection, it is about time to review all the articles to date, and put everything into a single picture to answer questions like 'how to patent?' or 'how to protect idea?'. Probably the most convenient form will be to list necessary steps with options, who can do each of those steps and how do these options stand with regard to cost, in other words patenting expense. For more information follow the links associated with some of the keywords.

1st step. Preliminary patent search.

This step can be done by:

  • the inventor him/herself (free of charge)
  • hired patent agent or attorney (agent fee will be involved)
  • Intellectual property office (official fee, usually the same as in regular searches made during patent prosecution)

2nd step. Specification drafting

It can be accomplished by:

  • the inventor him/herself, at least in part (free of charge, but might take significant amount of time and requires good command of patent language)
  • hired patent agent or (agent's fee)
  • hired patent draftsman (draftsman's fee, usually lower than that of the attorney, with the same or even better quality)

3rd step. Drawing drafting

  • the inventor him/herself (free of charge, requires skills of technical drawings)
  • hired patent agent or (agent's fee, usually expensive, because often it is further subcontracted to a draftsman)
  • hired drawing draftsman (draftsman's fee, usually lower than that of the attorney, with the same outcome)

4th step. Application filing

  • the inventor him/herself (free of charge, can consult with the intellectual office's personnel, if needed)
  • hired patent agent or (agent's fee, the best option here)
  • mass-filing companies (the best cost-quality ratio)

5th step. Prosecution before the intellectual property office

This shall be done by the person, who filed the application and whose correspondence address is indicated therein. In case no patent attorney was assigned at the time of filing, it can be done any time later. In that case a patent agent (attorney) can overtake the communication with the office.

If done by the attorney, it costs sometimes significant amount of money, calculated based on the hourly rate;

In case the applicant used services of a patent draftsman, he/she can also participate in this prosecution stage to amend specification/claims if such action is needed. This would be a more cost effective way.

6th step. Entry into national phase

Generally it has to be done by local patent attorneys in the countries, where the patent is to be validated. A slight saving might occur if the applicant succeeds to find local technical translators to translate the specification into local language. However that might be a risky way, because patent translators should rather know the patent syntax requirements according to the local patent law.

7th step. Payment of annuity fees

A great deal is to entrust a company, which is specialized in annuity payment (CPA - Computer Patent Annuity, among others). As a rule of thumb those companies have powerful software solutions to track deadlines, choose best partner's rates and proceed with payment in a very efficient manner. Also such companies have much better chances of negotiating lowest prices with local patent attorneys. Because of volumes they can form significant amount of orders, therefore patent attorneys tend to agressivelly compete between each other to get a contract.

8th step. Licencing, sales, transfer, etc.

Some patent attorneys are also lawyers. In that case they tend to offer licensing and brokerage services. Otherwise it is advisable to hire an experienced business lawyer possessing good negotiation skills or a specialized patent brokerage firm. At the end of the day it is very important to squeeze most of your intellectual assets. Therefore we do not recommend any DIY actions at this stage. Nevertheless marketing and sales of your intellectual property objects must be duties of the patent owner.

There are other certain steps of opposition, withdrawal, change of representative, change of applicant, but as they are not in every case scenario of a patent prosecution or litigation, we do not itemize it here. However most of such actions can be done by a professional representative.