Not paying an attorney to represent you at the USPTO may save you some money initially, but it could really cost you in the end.  While the USPTO does have a Pro Se Assistance Program to help inventors who choose to go it alone, going pro se has serious risks.  When considering the challenges of drafting a successful patent, consider these two points. First, poor draftsmanship of the patent application and lack of experience in prosecuting patent applications can result in significant delays and potentially provide grounds to preclude issuing the patent.  For example, before a patent examiner will allow a patent application to issue, he or she must confirm that exacting standards in the patent application have been met.  Not knowing when the word “the” should be used” instead of the word “a” can often result in a rejection to a claim.  Improperly drafting a background section could result in an examiner rightfully telling you that none of your invention is new, because you have, albeit inadvertently, admitted so in the background.  Not knowing that a patent examiner’s second response to you during prosecution will likely be a final one can result in either more fees being paid, or a time consuming and costly appeal to occur.  Not knowing the difference between a claim rejection and a claim objection can result in you not understanding some potentially very good news, and also you not knowing how to properly respond to that potentially very good news.  These are a few challenges that you might encounter should you go without representation.  

Second, the quality of an issued patent is only as good as the efforts that went into its preparation. Specifically, the size of the scope of protection allowed by a patent examiner, if any, depends upon the language presented in the patent application to describe the invention. As a result, there are many patents that provide less than optimal protection because the language presented is relatively limited.  Many inventors often believe that they have been successful before the USPTO, because they have secured a patent, only to later find that their competitors are copying their invention in the marketplace, but doing so with a trivial distinction that removes the competing product from the scope of the issued patent.  In other words, though this inventor has secured a patent, because the language in it wasn’t exacting, his or her competitors can all but disregard it.  To secure a patent that makes coming up with trivial variations difficult, the drafter needs to choose every single word in the claims with exacting purpose.  While the long detailed description of the invention can flow nicely and be easy to read, the claims generally do not allow for this.  For more on this, please see my post entitled Why is drafting the claims of a utility patent so challenging?

If a drafter attempts to draft claims without anticipating as many possible design arounds as possible, the drafter will not properly protect the invention in the patent.  Doing this is not a talent that patent attorneys have.  It is a skill, a learned skill that has been developed through significant repetition and study of patent prosecution dealings.  Of course, anyone can learn anything.  However, not many people who are not mechanics can take all of the individual pieces of a car, lying disconnected on the ground, and connect them in the right manner to put the car together.  Some can, but even amongst those who can, very few would be able to do it for an expensive car.  For the others, they would rely on a mechanic to perform this task.  If a patent is a car, then putting the patent together is not a simple task to someone who is not a patent professional.  It does not mean they are incompetent, it just means that patents are not often understood by people who don’t regularly deal in them.  And if the patent is to protect a truly special invention, then engaging a patent attorney is probably the best course.

In summary, while legal representation may seem costly in the beginning, the costs of having an improperly drafted patent can ultimately be higher in the end. A good patent attorney can assist the inventor in defining and describing the invention so that it is protected to the greatest extent possible. It’s usually in the inventor’s best interest to work with an attorney when seeking a patent, rather than learning the hard way.

This article was authored by John P. Powers, is intended to keep readers current on matters affecting intellectual property, and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2021, all rights reserved.