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Who can help with Idea Protection?

After a technical idea is developed, it is time to discuss, who should help an inventor or a company to prepare patent description, claims, drawings and what is the right person to do all patent prosecution work. For budgetary patenting strategies it is important to answer, which tasks can be done by the inventor him-/herself when seeking idea protection.

In this chapter you will list key tasks together with indication of difficulty level indicating if the task is better to be trusted to an experienced Patent Agent or it is also possible to DIY.

Background art patent search

Preliminary patent search is an important step, which reduces the risk of applying for a patent. The more skillful the searcher is, the more the risk is reduced. Said risk might contain cases when some relevant prior art patents where not found, which leads to higher cost and troubles during international search and examination stage. Amending patent claims after adverse ISR (International Search Report) has several negative consequences: it consumes time, might inevitably need a help from a patent attorney to put a convincing statement, might influence the further strength of the patent (your statments are not published, while your competitors seeing an unfavourable ISR might think that the patent is weak and therefore be tempted to infringe it). The second possible occasion is total withdrawal of the patent application if there will be no ground for reasonable amendments and the patent will seem too similar to its predecessors.

So, answering the question 'if you need help?', I would say YES. BUT, the initial search which you can carry out by yourself could save you some money if they will seem useful for the professional to start from. I give yellow light for this.

Patent specification drafting

The amount of work involved in specification drafting corresponds to around 60% of total patent work before filing of an application. Most patent agents ask for a description about the idea to be protected or invite the inventor for an interview. Sometimes applicants provide slide-show type explanations, which are very handy for understanding the idea, but unfortunately can not be used as a raw material for patent specification. Most valuable are drafts of scientific articles (but not published articles!), because the text of the article can be readily inserted into the section DETAILED DESCRIPTION OF PREFERRED EMBODIMENTS.

For patent specification drafting I would give green light for inventors who are willing to write some part of the patent. It is efficient both time-wise and cost-wise.

Claim drafting

Claims is the key part of the patent description. It's strictly a legal language, where every word is important an influence the scope of protection. A good combination of patent claims is sometimes really tangled - with multiple independent claims, describing a product, a method and a novel use and a bunch of dependent claims.

For beginners I recommend not to rely on their own. You can always practice, but be sure to give it for a review to an experienced patent draftsman. I give red light.

Patent Agent vs. self-employment

Beyond ones capabilities to write a technical text or technical patent description, there are also other arguments which could and should influence the decision 'whether to use the service of a professional patent drafter?'

First of all you have to evaluate the time it will consume you to write a description. In my experience I have met few individual inventors, who have done this - they wrote everything by them selves. One particular story:

An inventor has a wife, which is a lawyer of business specialization with just a general knowledge about the intellectual property. Ones he comes to me and says: "My wife and me we have spent two months each day after work to draft this patent specification. I am sure it is 100 % correct, now I need just your representation service to file the PCT application with WIPO."

Ok, now I agree that in two months he could have enough time to study everything, to read dozens of patents and draft everything more or less correctly. In fact, I don't really know, I have not read it, because later he has figured out how to file the PCT application by him self. I'm not saying the person did something wrong. But if he really had his another job, I guess he could rather put some additional effort to earn more from his everyday job, like overtime or something. Working 2 or 3 hours everyday for 40 days he could have earned 1 kEUR or something (Ok, this is a salary in Lithuania; in UK it would be 2 kEUR).

Experienced patent drafter needs typically 6-10 hours to draft a complete patent specification with claims, etc. According to our charges it corresponds to around 200-300 EUR and takes less than 2 weeks to complete. Until the said inventor will reach the same work effectiveness he should write at least 20 patents. That means he should be a very productive inventor!!!

Conclusion: unless it is your passion two learn new things, like writing of patents, trust this to professionals.