Tuesday, July 17, 2012

Should I File My Own Patent Application?

Dear Rich: I read the article about doing one's own patent application and not needing an attorney. I have an invention for a product that I know will generate great interest. It's a method for treating metal surfaces that greatly will improve material strength at high temperature applications. Based on the article I assume that once I obtain a patent I will not have to worry about enforcing the patent. I have read how so many issued patents become invalid or that a court determines that the application is not broad enough to cover all aspects of the invention. I assume that cannot happen if as you say the patent office will help me with my claims. Is that correct? In the meantime, based on the legal advice I have read on your site I will prepare and file my application and save on legal fees. Assuming that this is the article to which you refer, the following info may help you.
You will have to worry about enforcing your patent. Having a patent doesn't relieve you from the obligation of enforcing it, just the opposite. As this article (and as David Pressman explains in his book Patent it Yourself), a patent is merely a license to go after infringers. Unfortunately, you will have to finance that enforcement out of your own pocket.
Don't rely on the patent examiner for your claims. Patent examiners have an obligation to assist applicants and the article includes two first-person accounts: one in which the applicant dissed the competency of the examiner; and the other in which the applicant was assisted in claims drafting by the examiner. (You can probably find many other comments about patent examiners by trolling the web or reviewing sites such as bustpatents.com.) In any case, though examiners can and may assist, you should draft and understand your claims before and after any modifications by the examiner. It would be best if you can have your patent claims reviewed by a patent expert (although practically, most patent attorneys will want to review the whole thing).
No matter who drafts your claims, it's always possible that a patent may be declared invalid.  Don't assume that your patent will survive all attacks just because an examiner helps you with your claims. (By the way, the same is true even if a patent attorney drafts your application; the difference being that you can sue the attorney for malpractice but not the examiner). Nobody can guarantee that an issued patent won't be later determined to be invalid, or too narrowly drawn to cover infringements. That often depends on the evidence that's uncovered, the tenacity of each party in the dispute, and the whims of the legal system.
"Based on the legal advice I have read on your site ..." Not to put too fine a point on it, Nolo and the Dear Rich Staff shy away from providing legal advice. Whether or not you should handle your own patent application depends on your resources -- time, money, and technical abilities --  as well as your personality (are you the type of person who can manage a fairly complex project?) If you need further information on whether you are suited (or whether it's worth pursuing a patent), check out Pressman's Patent it Yourself.