Q: Is it necessary to hire a patent attorney to file a patent application?
Although the United States Patent and Trademark Office (USPTO) does not require a patent attorney to file a patent, there are many reasons it is in your best interest to hire one. Most entrepreneurs have a limited budget, but the startup’s intellectual property is critical to its success and cutting too many corners early on can have a lasting impact on the business. Still, good attorneys recognize that startups have budget challenges and keeping that in focus is similarly critical.
A patent application -- whether a provisional or non-provisional -- can be written and submitted by a non-attorney. Ignoring the complexity of filing the application properly at the USPTO, the primary concern is whether an inexperienced inventor can write an application which satisfies the myriad of rules, statutes and case law which are part of patent law. It is not a user-friendly area of law and, unfortunately, not conducive for DIYers.
File a “Provisional” or “Non-provisional” Patent?
A provisional application is a placeholder with the USPTO. It is not reviewed by an examiner but may help secure some benefits under patent law. There is no required structure to the provisional application -- including no requirement for claims (the clauses in a patent that define the scope of the protection being sought). A non-provisional application, which must be filed within one year of the provisional to which it applies, is reviewed by an examiner and could lead to an issued patent.
If an inventor is not going to work with an attorney, a provisional is a far more common approach. However, some of the dangers for the individual working without an attorney include:
- Not providing enough disclosure of the invention to permit use of the provisional’s filing date to the benefit of the non-provisional.
- Failure to monitor the one-year anniversary by which a non-provisional must be filed or not providing a patent attorney or patent agent enough time to properly draft a non-provisional application before the deadline.
- Relying on the provisional filing to protect your rights while publicly disclosing additional inventions or improvements after the filing.
- Seeking funds from angels, VCs and other sources but revealing a weak (or possibly useless) provisional during due diligence.
- Disclosing too much, including multiple inventions not particularly related to the primary invention or information not relevant to the provisional application.
- Making inaccurate statements such as incorrectly characterizing prior inventions of others.
How to Keep Costs Down.
There are possible opportunities to work with a patent attorney on a limited budget, including some attorneys who offer startup packages. Shopping for that right fit, while not fun, certainly is important for the budget and the long-term relationship needed for the patent process.
Creating a “white paper” describing the invention in substantial detail is another way to keep expenses down. Be sure to include pictures, drawings, charts and other information that can serve as a guide for the attorney preparing the application. There is no magic number of pages or drawings, but it becomes a great tool for the inventor to capture all of the ideas in one place and a useful guide for the attorney preparing a budget-driven application. Provisional applications often come out of a white paper with some minor tweaks.
Since most attorneys charge on an hourly basis, limit the number of new ideas thrown at the attorney while the application drafting process is ongoing. Certainly, all relevant information should be provided, but disorganized meetings and/or partially written white papers can result in lost time, rewriting by the attorney and more questions. All of this can lead to a higher than expected cost and disagreement about what the initial budget covered. Staying focused and avoiding piecemeal disclosures are important.
While it is possible to file a provisional application without hiring an attorney, it is important to weigh all the benefits and risks associated with doing so. While you may lack funds now, properly protecting your IP will help you make money down the road.