A question I commonly get from inventors and start-up managers is “Why should I hire a patent attorney to draft an application instead of writing it myself?” For smaller companies, it is paramount that they protect their intellectual property assets because larger companies will more than likely have better distribution streams, be able to undercut the smaller companies on manufacturing costs, and may already have a built in customer base. By smaller companies sufficiently protecting their intellectual property, they may have a leg-up in the sector regarding their technology.
As such, patents are very technical documents that may be crucial to your business. Because patents are technical documents each word within the patent may be during licensing agreements, litigation, etc. and must be drafted to the standards set forth by the UPSTO.
Therefore, companies should hire a patent attorney to ensure the patent is carefully worded and to make sure that the application is drafted in accordance with the standards set forth by the USPTO, which if the patent isn’t drafted properly it may be held to be invalid.
Specifically, the MPEP (patent rulebook) and courts have determined the minimum and required standards a patent should be drafted in. Two standards that inventors may miss if trying to draft an application by themselves are the enablement standard and being tied to a “machine or transformation” standard (Bilski requirement).
Patents are required to be drafted such that one of ordinary skill in the art may make, use, or practice the claimed invention. As such, the patent applications must be drafted with specificity such that another person may read the patent and understand how the invention works. This may require a lot of additional background information that inventors may omit if trying to draft their own application because they may view this information as trivial. When drafting an internet/network based application, the application should state what element (client computer, server computer, etc.) is doing each process and what signals are sent where. As such, when individuals try to draft their own mobile application they discuss most of the elements as they are being processed by their phone. However, by doing this if a server is performing the operations then another company may not infringe on their patent. Further, if mobile applications are only described with relation to the smart phone then only your customers may infringe, which is something you don’t want to do because they are your customers! You want to be able to sue larger companies with deep pockets that are actually creating the infringing mobile application.
Furthermore, when dealing with software patents a relatively new patent case Bilski has been interpreted that software based patents are allowable as long as they are tied to a machine or transformation. As such, the processes/method that the patent uses should be tied to at least a processor, memory, display, etc. of the computer, without doing this your patent will be held to be invalid.
A further reason to hire a patent attorney to draft an application is to broadly describe the invention to cover simple design abounds while also specifically describing their invention. On numerous occasions, I have had inventors give me a couple of page description of their invention while telling me “the application is pretty much complete but just needs a review.” However, a patent that is only 10 pages long it will more than likely not adequately describe the invention to give much intellectual property rights.
Another reason to hire a patent attorney is because drafting claims is a tedious task where the claims much be worded in a specific format. The claims are the most important part of a patent because they will define the bounds of the intellectual property protection awarded to a granted patent. When inventors or non-patent attorneys try to draft claims for an application, they will typically draft the claims to narrow (such as their specific invention) so there are easy design arounds or claims to broadly that there is no way they will be allowed by the USPTO.
These are just some of the most prominent reasons to hire a patent attorney to draft an application. Others include making sure the application is filed correctly, keeping up with docketing dates, save hours if you don’t have them, etc.