Reviewing a Patent Application Drafted by an Inventor
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Mar 10, 2012 @ 9:30 am
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Lately I have received a lot of requests from independent inventors who have drafted their own patent application and want me to review it prior to them filing it with the United States Patent and Trademark Office. The reason for having an attorney review a patent application drafted by an inventor are obvious — they want to make sure that they did everything properly.
The requests I have received lately go something like this: “I have drafted a patent application that is 30+ pages of text, plus claims and 10+ drawings. I would like to have you review the application before I submit it to make sure I haven’t made any mistakes. I also hope this review doesn’t take you more than 1 hour to complete.”One hour to complete? I don’t even believe it is possible to carefully and critically read and absorb an application of that length in 1 hour or less. This is an unrealistic request and one that is sure to turn off an experienced patent attorney who might otherwise be willing to help.
The first time an inventor told me this recently I thought it had to be someone who was out of touch, but then I have had no fewer than 3 other inventors in recent months present with nearly the same request, each wanting to pay me for no more than an hour of time to review their application. Where is this coming from? I really don’t know, but I thought I would take this opportunity to explain things from the attorney perspective.
It is certainly a fine for an inventor who has drafted their own patent application to request an attorney to review the application prior to submission, but a patent attorney who is asked to do this will likely have many things in mind. First and foremost is that if something does go wrong with the patent application the inventor will blame the patent attorney who said “it looks fine to file.” So there is a tremendous amount of risk involved on the part of the patent attorney reviewing an application drafted by an inventor.
What could go wrong? The patent process is a long and often unnecessarily complicated process. The rules are rather archaic and even counter-intuitive at times. There are a great many things that can go wrong even with an expertly drafted patent application. When an inventor is going to try and navigate their own application through the USPTO maze the likelihood that an adverse outcome will be the result goes up dramatically. For better or for worse when many people have an adverse outcome the first thing they want to do is blame someone else rather than blame themselves, or just blame fate. No where is this more on display than in medical malpractice lawsuits. Severely negative outcomes can happen even if a doctor does everything properly and by the book, that is why if you go into the hospital you sign all kinds of disclosure statements that get you to agree that you have been explained what can happen. Negative outcomes lead to complaints and sometimes to litigation. No attorney needs that kind of nightmare when all they did was spend an exceptionally small amount of time reviewing an application.
Even if you do the best patent search money can buy there will be prior art that you couldn’t have known about. Patent applications are maintained in secret for at least 18 months and no one can find applications filed within that 18 month period. They are required to be kept secret and unfindable by law for that 18 month period. So it is extremely likely that by the time the patent examiner starts to examiner your patent application there will be more prior art available for use by the patent examiner than there was available to be found at the time you file a patent application, thus increasing the likelihood of a bad outcome. Of course, this is true when a patent attorney drafts a patent application as well, but when a patent attorney drafts a patent application there are all kinds of nuances included in the application that can be added to claims to overcome examiner rejections, both the ones you can envision and the ones you know you will get but can’t possibly conceive of. Inventors are terrible about including those absolutely essential nuances.
Of course, when an inventor is drafting their own patent application it is almost universally because they want to save money, or perhaps they just don’t have the funds to hire a patent attorney. That is understandable as well, and I am an advocate of doing what you have to do given your circumstances to responsibly move a project forward in a reasonable manner. Having said this, in all my years whenever I deal with an inventor who wants to do it themselves or wants to do it with some modest assistance they NEVER have what I would characterize as a comprehensive patent search. Frequently inventors will only search using Google Patents, which is enormously risky given that Google Patents has some significant holes in their collection. Every patent attorney I know knows of one or more patents that they tried to look up on Google Patents and they just weren’t there. So relying on Google Patents is fraught with risk.Furthermore, if you are only doing a keyword search you are absolutely, positively going to miss highly relevant prior art that could have been found by a professional patent searcher. The patent searchers I use are SP Attorney Services, and they do also provide searches for independent inventors and companies as well. They have their own proprietary system on which they have a patent pending. They start with the most comprehensive keyword search you can imagine and suck in all kinds of patent data that is shifted by their system. They identify the patent classifications where the patents are categorized by the USPTO and identify the most common patent classifications. Then they go by hand through every patent categorized in the most common patent classifications. They then go through an iterative process to make sure they have found everything. There is no way an independent inventor could do such a thorough search, and frankly no way a patent attorney or patent agent could do a comparable search either. Their searches range in price from $450 to $800 (generally speaking), which gets you a patent search report without analysis. A very good price really for the level of detail and comprehensive nature of the search. In fact, this is the best money you will spend because it will tell you whether you are wasting time and money to move forward.
Let me say this as simply as possible: A good, comprehensive patent search is absolutely essential. There is nothing any patent attorney can do or say without knowing what your invention is and what the prior art holds. A patent application needs to identify the invention and assistance can be given without knowing about a search to a certain extent. If you are woefully inadequate in your description an attorney can help even without a search. If you have a half decent description and you want the patent claims reviewed and the detailed description reviewed for sufficiency the only way to do that is to know what is in the prior art. A patent application needs to describe what is new and nonobvious. You need to focus the vast majority of your attention on those aspects of the invention that are likely to be viewed as new and nonobvious by the patent examiner. You simply cannot have any reason to know what is likely going to be new and nonobvious without a patent search.
Even assuming a do-it-yourself individual has a good patent search that search needs to be reviewed. The patent searches that I receive from SP Attorney Services have anywhere from 40 to 100 references. They do separate the references into an A, B and C list based on what they believe to be most relevant, but there can easily be a great reference on the B or C list that teaches one small piece of the invention, so you have to review everything. That takes time, not only to review but to internalize and evaluate. I have yet to figure out how to thoroughly and honestly go through a patent search in 1 hour. Sure, anyone can flip through patents and say it looks good or it looks bad, but if you want input you need to spend time. The search assessments I do are not only for the client, but also for whoever is going to draft the application. This is what I see, this is how we can distinguish this reference and this is what I think the broadest articulation of the invention can be that has a realistic opportunity to be patented. Reviewing and writing that up takes multiple hours.
Once you have figured out what the prior art is and what aspects of the invention are likely unique, then you have to go about articulating that in patent terms. Again, this takes time. Perhaps more time than you might imagine since there is not a blank slate to begin with, but rather the do-it-yourself inventor is asking for a critique of their patent application. That means the reviewing patent attorney not only has to go through the claims much the same way that a patent examiner would, but they also have to go through the written disclosure and drawings to see if there is support for everything that is necessary and required to describe the grandiose invention, as well as the specific nuances that are necessary to understand the intricacies and support the claims that are filed. Furthermore, there needs to be more nuance in the application than in the claims because you can rest assured you will get your claims initially rejected and will want or even need to add additional features and nuances into the claims to get them allowed. Do-it-yourself inventors and the bargain basement patent attorneys and agents that draft applications are awful at this, they frequently only have enough in the written disclosure to barely support the claims they have filed. I see cases like this all the time and it is a tragedy to see something that is new and nonobvious but where the patent application just doesn’t articulate it.
With all of this in mind, like many others I tell inventors that if they are going to do it themselves they should consider getting a patent attorney to review their application before they file. Having said that, it is unrealistic to believe that a patent attorney can review what you have done in 1 hour or less. Furthermore, it is foolish to believe that an application reviewed for 1 hour or less will result in a work product that will be as good as if it were drafted by the patent attorney in the first place. If you want to do it yourself and have a qualified, experienced patent attorney review your work you should budget at least 6 to 10 hours of their time to review everything, critique what you have done and provide feedback and guidance for you to continue to build upon.
For those who are going to do it themselves I also recommend not waiting until the end of the process to start to work with a reviewing patent attorney. If you have 40 pages of written disclosure, 15 pages of claims and 10 sheets of drawing you have put in a lot of time to get there. I can say with great certainty that out of those 40 pages of written text you likely have no more than 20 pages that will be considered useful, likely even less. Truthfully, in the applications I review about 25% of what is there is useful and appropriate, with the other 75% being various levels of not useful and even potentially harmful. A patent application is not a marketing document, so having your sales pitch there for 10+ pages isn’t useful. Likewise, discussing competitors and how your business model distinguishes you is for a business plan, not a patent application.
With this in mind, if you want a reviewing attorney involved the best thing you can do is engage them sooner rather than later. Consider getting a professional patent search and a detailed assessment of that search with suggestions from an experienced patent attorney prior to starting the drafting process. Knowing what the prior art is and what is most likely going to distinguish your invention gives you a target. You might also be able to obtain a patent template to use from the attorney, or you can consider starting out with the Invent & Patent System, which leads you through important questions and provides a template use can use at the end. This structure can be extremely valuable to will likely prevent wasted time and effort, particularly if you are willing to engage a reviewing attorney for 1 – 2 hours several times during your drafting process.
The moral of the story is this: there is a way to get from invention to filing your own patent application with the assistance of a reviewing patent attorney. Placing unrealistic expectations on a reviewing attorney will not lead to the type of professional help you need. When someone asks me to spend 1 hour reviewing their application I politely decline. There isn’t enough money for the risk and there is little or nothing I can do in 1 hour anyway. So be realistic and don’t wait to the last minute to get help.
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Fools™
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.