Patent Applications without a Lawyer?

LawInventors have the right to prepare and file a patent application without the assistance of a patent lawyer. Inventors have always had this right, referred to as prosecuting a patent pro se, which is described in the Code of Federal Regulations (37 CFR 1.31) and in the Manual of Patent Examination Procedure (section 401). Well-funded organizations rarely seek patent protection without the assistance of a lawyer. However, when a Louisiana inventor with limited financial resources is seeking patent protection cost considerations can be paramount.

There are several items that the Louisiana inventor should keep in mind when deciding on whether to use a lawyer for patent work.  First, if the patent rights being sought are being pursued for profit, the patent application should be viewed as a business investment.  When evaluating even a relatively small investment you should consider the possibility that the investment could provide no return. Second, the original disclosure which may have the greatest influence on the quality of and ultimate value of a patent application becomes fixed when the patent application is filed. This means that in many instances inadequacies in the original disclosure of the patent application cannot be repaired later even by a skilled patent lawyer.  Finally, a patent application is a request to the government to grant the inventors and their assignees exclusive rights in the form of patent claims.  Patent claims, which set the critical boundaries of those exclusive rights, are viewed by many as being comparable to a foreign language.

While many other patent attorneys may share similar experience, prior to working as a patent attorney I served as a Patent Examiner for the United States Patent and Trademark Office. During that time I repeatedly ran across applications in which the most cursory review made me suspect that the applicant was a pro se patent applicant.  In each of those instances my suspicion was confirmed.  A quick read of the first claim consistently made it apparent whether the author was writing with skill and knowledge of patent claiming or was just borrowing words from another patent application he had read.  As a lawyer, I have had the opportunity to work with patent applicants who had drafted their own application and I have found that it is generally more expensive to repair a patent application that was drafted pro se than it would have been to do the original drafting on that application.

Although my experience makes me a skeptic of pro se patent applications, others have argued that a quality patent application is within reach of the individual inventor. The reference for non-lawyers that I have the greatest respect for is Patent It Yourself by David Pressman.  I occasionally recommend that book to inventors who for financial reasons have few other options.  However, the greatest potential benefit of “Patent It Yourself” may be as a teaching tool allowing inventors and others involved in patenting process to better understand the patent system.