Can I file a patent application without legal assistance?

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Republished from The Michelson Institute for Intellectual Property.

The cost of hiring a patent attorney can be prohibitive for many inventors, students, and startups. Although the patent application process can be long and complex, it is possible to file a patent application without a representative.

There are many pros and cons to consider if you decide to file a patent application without a lawyer.

Advantages :

  • You can save thousands of dollars in legal fees if you file your claim without a lawyer.
  • In addition, you can benefit from free or low cost resources to help you with the patent application process.

Disadvantages:

  • You will need to do some important research, including prior art searches, before you file.
  • It will probably take hundreds of hours of your time to file a patent application without legal aid.
  • You will need to stay current and meet the many requirements and deadlines of the application process.
  • Plus, you’ll need excellent writing skills to write a solid application.

In summary, you may to apply for a patent without a lawyer, but it will take a lot of time and effort. Let’s start by looking at the reasons why you might decide not to work with a lawyer.

Why you could apply for a patent without an agent

Most patent attorneys charge a minimum fee ranging from $ 5,000 to $ 10,000 to pursue a patent application. While you may have heard the term “sue” in other contexts, when it comes to patents, prosecution is simply the process of guiding a patent application through the Office. US Patents and Trademarks (USPTO). Of course, these are only minimal costs which can vary depending on the nature of the invention, the possibility of challenges and other factors that influence the time spent pursuing a patent. For many new inventors, students and individuals without corporate or institutional funding, the cost of legal representation can be prohibitive.

Fortunately, there is no rule that you must involve a patent attorney in the application process. If you have the time to personally engage in the process and the willingness to learn the requirements of the USPTO, you can file an application on your own. This is called a “pro” candidate. You can also work with non-lawyer professionals, such as certified patent agents, who can help you with the application process but cannot provide legal advice or representation.

When deciding whether or not to work with a patent attorney, consider the following:

  • If you will have time to conduct your own research and go through the application process.
  • The complexity of your invention. The more complex and advanced your invention and its technology, the more likely you will need a lawyer.
  • How likely is it that others will challenge your patent? If it is similar to other inventions or in a competitive field, you may need a lawyer to draft a patent that will stand up to legal challenges.

What are the chances of obtaining a patent without an agent?

According to the USPTO, only 4.22% of patents granted in 2019 belonged to individuals. In addition, officials have granted the vast majority of patents, over 93%, to US and foreign companies. While the data does not reveal how many people were represented, it may seem that the odds are against unincorporated candidates.

A 2012 study by Kate S. Gaudry, The Lone Inventor: Low Success Rates and Common Mistakes Associated with Pro-Se Patent Applications, sheds light on some of the possible reasons for this discrepancy. Specifically, the study found that more than twice as many pro requests were abandoned than those filed by a representative. Often this is because pro applicants end the review process early and miss out on interviews that may resolve application issues. Pro applicants also receive notices of deficiency at approximately twice the rate of represented applicants. The USPTO sends notifications when an application does not meet technical requirements. This probably means that pro applicants do not take the time to read or fully understand the requirements for patent applications.

While these statistics may seem daunting, they can be overcome. Let’s take a brief look at what it takes to get a strong patent with or without a lawyer.

Can you get a strong patent without a lawyer?

Strong patents present well-written claims, demonstrate utility, distinguish a new invention from prior art and anticipate legal challenges. Having a lawyer is helpful, but you can get many parts of a strong patent without it.

Strong claims are what really strengthen a patent. This is often the most important job for a lawyer, as the claims describe your invention in a way that will be used to determine if someone is infringing your patent. According to Gaudry’s study, the claims of pro seekers have often been narrower in scope and fewer in number. When writing complaints, you can ask the USPTO to write complaints for you. You can also draft your own claims and have a patent attorney or agent review them. before you submit the request. This is a cost reduction strategy that could get you both solid claims and minimal fees.

Non-lawyer professionals, such as patent agents and patent librarians, may also be able to assist with prior art searches.

One element of patent strengthening that might be difficult for you to do on your own is anticipating legal challenges. This is an area where patent agents cannot provide a lot of information, as it would be considered legal advice. To save money, you can try to identify the vulnerabilities on your own, then consult an experienced patent attorney to see if you’ve put yourself at risk. However, the level of risk will depend on the nature of your invention. What type of invention is it? Is it an innovative concept in a highly competitive field? Are there similar inventions on the market? A thorough patent search can help you identify other patent holders who might challenge you.

What free or low cost resources are available?

The good news is that there are a lot of patent strengthening tasks that you can do with free or low cost resources. Patent attorneys are not your only choice for professional help. Certified patent agents can help with the application process and generally charge a lot less than patent attorneys. There are also several free resources provided by the USPTO and associated organizations:

  • The USPTO Pro Se Support Program – The Pro Se Assistance Program offers free training and resources to help applicants through all stages of the patent application process. You can request individual assistance by video conference or telephone.
  • Pro bono patent program – The USPTO Pro bono program matches eligible inventors with volunteer patent practitioners. In general, inventors with an income of less than 300% of the federal poverty level, with an interim application already on file or the ability to prove completion of the certificate training course, qualify for the pro bono program.
  • Law Faculty Clinics – The USPTO Law School‘s Clinic Certification Program allows law students to assist applicants under the supervision of a licensed supervising lawyer. A list of participating law schools can be found here.
  • Patent and Trademark Resource CentersPTRC librarians can help you with research, explain the patent process and fee schedules, and help you keep track of ongoing research. Most PTRCs also offer IP courses to help you learn more about the patent process.

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Disclaimer: Nothing in this article should be construed as legal advice.

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The Michelson Institute for Intellectual Property, an initiative of the Michelson 20MM Foundation, provides aspiring inventors and entrepreneurs with access to stimulating intellectual property training. Michelson 20MM was founded with the generous support of renowned spine surgeon, Dr Gary K. Michelson and Alya Michelson. To learn more, visit 20mm.org.


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