Inventors should use the information provided in this section to review a patent application prepared by patent counsel. It should not be used to prepare a patent application without legal counsel. This section explains the anatomy of a design patent application (Chapter 8) and a utility patent application (Chapters 9– 12), which can be filed as either a provisional or nonprovisional application. Since more utility patents than design patents are sought, most of this section is devoted to utility patent applications. This section also includes tips for helping the inventor review and understand a patent application written by a patent attorney (Chapter 12).
I have rarely seen a well written patent application prepared by someone who was not mentored by a senior patent attorney over a period of years. This is one of the reasons that it is my belief that only with proper guidance can an inventor be prepared to write a well-crafted patent application. Nonetheless, some inventors attempt to draft their own patent applications. While I do not advise prosecuting your own patent application, examiners at the USPTO will help pro se patent applicants (i.e., inventors that file and prosecute the patent application without the help of a patent attorney) to a limited extent. However, relying upon the help of the USPTO examiner to prosecute a patent application has limited benefits. First, the USPTO is not required to advise the applicant as to the breadth of the claims or whether the claims suit the inventor’s needs. A patent attorney, however, though not able to guarantee the issued patent is sufficiently suitable for your purposes, does help inventors secure patents with claim scopes aligned with their needs, whereas a patent examiner will not. Secondly, an examiner will not help a client secure a broad claim, which increases the potential for others to avoid patent infringement liability with a design around. As such, it is highly recommended that patent prosecution be handled by competent patent counsel who can successfully advocate meaningfully broad claims on behalf of the patent applicant and one that is more aligned to your purpose. However, please be advised that retaining a patent attorney to assist you through the patent process does not guarantee a mistake-free patent, but only mitigates potential mistakes.
Again, to avoid complications, I recommend that inventors retain competent patent counsel to prepare and file the patent application, which is an intricate, difficult document to prepare and must comply with numerous government regulations, laws, and case decisions which interpret those laws and regulations. The United States Supreme Court once stated that “the specification [i.e., the actual text and drawings of the patent document] and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy.”9 A patent attorney undergoes years of education and training under the supervision of a senior attorney to become proficient in preparing a patent application. Furthermore, patent attorneys are expected to keep up with current patent case law. Preparing a patent application without professional help risks difficulty and disappointment.
Many complicated legal principles are applicable when drafting a patent application. A self-help book on drafting a patent application may, for example, expose the inventor to these rudimentary principles, but a layperson will have difficulty assimilating these principles with their own writing styles in an application. Mistakes in an application prepared by an inventor may not be noticed until the USPTO’s examination has started, or after the patent issues, which might blind side inventors and startups with potential invalidity attacks by defendants.
Inventors should use the information in this book to better understand the patent document, which merges information about the invention and the legal requirements for drafting of a patent application, and to facilitate discussion with patent counsel. Inventors should also use information in this book to double check patent counsel’s work. The inventor and attorney cannot, without each other, create an effective patent document.
A patent attorney assimilates the technical details of the invention only after a short discussion with the inventor. Miscommunication may occur and details may not have been conveyed properly or may have been misunderstood. The patent attorney may therefore need clarification regarding the technical details of the invention. Ultimately, inventors should read the draft of the patent application provided by patent counsel thoroughly to be sure that the technical aspects of their invention are correctly described and then bring up any questions they might have with the patent attorney.
9 Topliff v. Topliff, 145 U.S. 156 (1982).