Over the past several months I have received a number of inquiries from inventors who set out to draft their own patent applications. The inquiry typically goes something like this: “I have a draft patent application and I would like to get an attorney to review and make any necessary changes before I file.” This is quite a reasonable request, and in fact a very good idea. I have encouraged this myself on numerous occasions, but now find that a bit of clarification might be useful.
It is certainly true that once you file a nonprovisional patent application your ability to make additions to the application has largely ceased (although you can add claims if the original filing describes what you seek to add). Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed. Taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical. Therefore, having a professional review your patent application before you file is definitely wise. The question, however, is when do you seek the assistance? Frequently many inventors wait too long before they seek help, which means much of what they have done is unusable and various levels of difficult (or impossible) to work with.
It is important for inventors to understand that there is a point at which the work they do on their own ceases to make the entire process cheaper. In fact, if inventors do too much on their own they may find out that it is quite expensive to obtain assistance to work with what has been drafted. Sometimes a draft by an inventor cannot realistically be edited and improved upon with a reasonable amount of attorney time, which means that the attorney might as well start over. That means no savings whatsoever for all the work done and your project timeline unexpectedly grows.
In at least several situations I have been provided draft patent applications of upwards of 40 pages single spaced. Just reading such a document and figuring out what the invention is will take time, at least several hours, perhaps more. This doesn’t include the time that will be spent reviewing whatever prior art search has already been done and reading the relevant patents. By taking the time to create a 40 page draft patent application and already having a prior art search many inventors think that they will be able to pay an attorney for 1, 2 or maybe 3 hours to review everything and put it in condition for filing, including drafting claims for the invention. I can understand why that would be desirable, but it is simply unrealistic. Let me explain.
For our firm I am the one that is primarily in charge of the patent search phase. I typically spend quite a bit of time on the patent search phase because by doing so we really get to understand the core invention. We also learn what the prior art covers and then collaboratively work together (i.e., me and the client) to identify what is missing in the prior art and how best to characterize the invention so as to capture the broadest coverage possible. By doing this I am in a position to help the inventor determine whether the likely available patent claims are worth pursuing given the time, money and energy required.
This patent search process takes time, and without the assistance of a willing inventor the cost would be quite high because essentially I engage in a mini patent mapping project. So when an inventor appears with a patent search and a draft patent application none of that effort has been undertaken to appreciate the invention and what the prior art will allow. To meaningfully assist in a patent application I then have to spend the hours necessary to find the space available before ever starting to edit and supplement a draft patent application.
Once we have a good understanding of what the invention is and what the prior art covers we can identify what space is available. By doing this we can then articulate what features we think will be necessary in order to have a realistic possibility of obtaining a patent claim. This basic feature set becomes the textual description of what will be turned into claim 1, the broadest claim we think we can reasonable seek and obtain. Once we have that then we know how to write the patent application, what to focus on and what other features need to be disclosed as permissive, but not mandatory. In essence, the time spent with the prior art and understanding the intricacies of the invention identify claim 1 and once that is accomplished you now have a road-map to the patent application.
Without the effort to thoroughly understand the intricacies of the invention and the prior art what happens is you just start writing and describing the invention as if everything is equally important. The truth is not everything is equally important. Writing page after page about things that are well known to exist is a waste. No matter how many well known things you try and combine the patent examiner is going to issue an obviousness rejection. This is true now more than ever given that so many patent examiners throw around “common sense” rejections without a whole lot of analysis or substance.
I am not trying to disparage patent examiners, but not honestly appreciating the way that obviousness rejections are handled in the first instance leads to bad decisions. Indeed, patent examiners take their queue from the Federal Circuit, which has been known to say Patent 1 shows X, Patent 2 shows Y, therefore it would be common sense to combine X and Y. Of course it would be helpful if they explained why, but there was no such explanation in Wyers v. Master Lock. The Federal Circuit has also been known to say Patent 1 shows X, Patent 2 shows Y-Y, therefore it would be common sense to combine X and Y. In Tokai v. Easton this was done without any logically satisfying reasoning. So merely combining all kinds of functions and features known to exist doesn’t get the job done any more. There needs to be some kernel that is unique. Finding and describing that kernel of uniqueness takes time.
In my experience, an inventor typically manages to create a 40+ page single spaced draft patent application by describing a good number of things that are largely irrelevant, or which are not likely to help distinguish the invention over the prior art. So having such a long draft patent application that meanders and doesn’t provide the critical information can actually raise the cost of filing a patent application. First time is spent reading a lot of superfluous things and then the project needs to largely start over from scratch.
Certainly there are times when I see a draft patent application from an inventor and it is a good start. Early on in the drafting process is really when the largest amount of useful and economical assistance can be provided. Before you have a gargantuan draft consider paying a patent attorney for an hour or two to take a look at what you are doing so they can point you in the right direction. It will save a lot of unnecessary time on your part and let you focus on providing the work that is necessary on the key areas required. That is how you save money in the drafting process.
I have created something I call the Invent & Patent System, which allows inventors to create a draft patent application, minus claims, so it is many times best used to prepare a provisional patent application because claims are not required. There are 10 questions and the user is given a suggested answer template to fill in the blank on each question, as well as information about how the answer to the question will be used and an illustrative model answer from a variety of different technologies. The answers are then intended to be put into a patent template, smoothed out so that the document flows, and text added describing what the drawings show. When inventors do this they create a very good early draft patent application. At this point it would be perfect to have a patent attorney look over the document to provide feedback and guidance. When I am asked to do that I can typically spend an hour and provide quite pointed feedback. However, in some cases the inventor will take that simple draft patent application and start to add all kinds of superfluous information. The result is the same problem as described above.
At the end of the day the inventor knows the invention best. The question is how do you leverage that information you have in a collaborative fashion so that the cost of preparing and filing a patent application is as economical as possible. If you are not in a position to just hire a patent attorney to do everything from start to finish then you absolutely have to do a little work, get a little help, do a little more work, get a little more help and so on. Frequent touches by a patent attorney to give you direction will keep you on track and make your contributions more likely relevant.
The moral of the story is this: When setting out on a new endeavor it is not wise to pursue a path to the end and then ask whether what you did was correct. You should seek help along the way to make sure you are doing what is required. Otherwise you are likely to get to a point where the most economical solution is simply to start over.
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6 comments so far.
Gene QuinnOctober 31, 2011 11:52 am
Ron & Alan-
You guys are not out in left field on this. Harry Moatz did tell my firm at one point that it violated the ethical rules to ghost write. Harry was not able to point to any particular rule that would be violated, so it was more of an aspirational thing. Out of an abundance of caution, and not knowing how the USPTO would interpret the then new 11.5(b) would be interpreted, we decided not to do any ghost writing. I also dramatically cut back on the review services I provided.
The USPTO has never used 11.5(b) to stop those openly engaging in the unauthorized practice of law, who themselves are not admitted to the patent bar and who provide ghost writing and filing services. Since 11.5(b) is a paper tiger at best, and since there is no rule that prohibits doing legal work for a client, I have no problem reviewing patent application and/or providing ghost writing services. I don’t do ghost writing any more myself though.
The USPTO cannot through a non-existent rule require patent attorneys and patent agents from engaging in the practice of law. It is well established in both the USPTO ethical rules and State ethical rules that the attorney or agent needs to follow the requests of the client and zealously represent. There is absolutely nothing wrong with limited scope representation. In fact, the only place in the law where there are ever limited scope representation issues is in workers compensation. Those cases revolve around only taking the workers comp portion of the case and never mentioning the possibility of a third-party action.
Alan StewartOctober 31, 2011 10:06 am
I was given the same impression at one point, that I could provide guidance and general comments, maybe minor edits, for a pro se applicant and the person could then file the application over his/her own signature. If I provide more than nominal help, the application should be filed over my signature. I never went and looked for a rule to support this idea but I do use it as a tool to enforce that I really don’t want to get too deep into assisting an inventor with the drafting of an application. If they want my help, I would prefer, like you describe above, to be involved enough to feel that I have a good grasp of the invention and how it is presented. By the time I get up to speed on this and get substantive work done on the application, we have probably spent as much time (and therefore money) as if I had drafted it myself.
Ron HiltonOctober 30, 2011 01:19 pm
P.S. In my post above maybe I should have used the term “filer” rather than “applicant” since the latter can include both the filer and the inventor, pro-se or not.
Ron HiltonOctober 30, 2011 01:10 pm
My understanding of OED’s concern was that by ghost-writing a pro-se application, the applicant would be made to appear more sophisticated to the examiner than was actually the case, perhaps causing the examiner to provide less guidance to such and applicant than they might otherwise have done. I’m not agreeing or disagreeing with that, it’s just what I was told. Regarding ghost-writing by one registered agent or attorney for another, they cited the rules about fee-splitting to say that ghost-writing was okay in that case as long as the client was aware and had no objection, although even seems to be one step removed from the actual rule. They also reasoned that the concern regarding the difference in expertise between the writer and applicant would not be as problematic as in the pro-se scenario. I’m not agreeing or disagreeing with any of this, just conveying how I understood the feedback I got from OED, for whatever it’s worth.
Gene QuinnOctober 30, 2011 12:51 pm
There is no ethical prohibition against ghost writing, although OED has always wanted there to be such a prohibition. To constitute an ethical violation there needs to be a rule that addresses the situation and there is no rule that makes ghost writing a violation. The fact that OED wishes it were true does not make it true.
OED really ought to spend its time going after those openly engaging in the unauthorized practice of law rather than scaring attorneys from providing legal advice.
Ron HiltonOctober 30, 2011 12:24 pm
I have been given to understand that the USPTO considers it unethical for a registered patent agent or attorney to ghost write an application for a pro-se applicant. I called the OED about it once and they confirmed that. However, as an independent patent agent, I routinely write applications and other filings for IP law firms which get filed under a lead attorney’s name, which I understand is kosher as long as the client is aware of the fact. My question is, at what point does one cross an ethical line from reviewing, to editing, to ghost-writing?