Do I really need a professional to draft a patent application?

[businessor]

Hello

The IPO office says that only 30% of the professionally drafted applications gets patented and only 5% of non-professionally drafted applications.

However, they do not say why this happens. Is it because those who file non-professionally drafted applications are just overenthusiastic inventor-wannabe laymen who are not able to identify that their invention is not novel or that their invention is incomplete due to lack of or wrong scientific knowledge?

A patent agent advised me that they need to draft the application and not myself because they know how to draft it according to IP law conventions etc and that this will deter others from copying it.

My draft contains everything I know about the invention so I am not sure what the patent agent will do to increase the chance of patenting. If it is just re-wording or re-arranging the text I have already written, I cannot see how this will add value to justify their costs.

What is your advice?

 

[prophet01]

Do I really need a professional to draft a patent application?

No, but I would definitely advise using one.

I'm speaking from experience having been granted, by the UKIPO, a patent for an invention only last June and am now in the process of, hopefully, attaining US and European patent grant.

 

[DontAsk]

Have you looked at many patents? The are (in my experience) written in a quite particular way. I have a number of patents to my name and would not attempt to draft one myself.

A good Patent Attorney will now what they are doing and come up with all kinds of questions and ways to strengthen the patent.

It's not just what you know that matters. It's what other already know and what you have not thought of.

 

[Financial-Modeller]

"Do I really need a professional to draft a patent application?"

Yes.

Alternative question is how much of your time, energy and money do you want to spend protecting your IP?

 

[businessor]

No, but I would definitely advise using one.

I'm speaking from experience having been granted, by the UKIPO, a patent for an invention only last June and am now in the process of, hopefully, attaining US and European patent grant.

Thanks, I am interested in that, how is the process? You first get patented in the UK and then you apply for a patent in the rest of the world?

 

[Chris Ashdown]

The test is simple, imagine you have invented the traditional leather football, so on this forum write how you would describe the football

 

[businessor]

Well, it is both a device and a method so I would say first that it is a ball of various sizes that is made of a rubber balloon that has an air valve that allows the air to enter via exerting pressure through but not come out and via which it is filled with air using an air pump or other methods. Then leather pieces in octagons are placed on the balloon adjacent one to the other and their edges in proximity are sewn together with a thread made of cotton fibers or other materials. Its usage is to play football (I suppose this has already been invented) but also other sports or in other applications where a ball is needed that can bounce back.

 

[prophet01]

@businessor
Do you recollect the below respnse to you on your thread of last year?

@businessor
Less than four years ago I was in a similar positon as you with little idea of the intricacies surrounding patents and the patenting process and received much valuable guidance and information from members of UKBF, for which I will be eternally grateful.

It might be worth reading that thread at this link
Patent application drafting & filing costs

If you have confidence in your idea I suggest that you develop your invention sufficiently to be able to present it to several patent attorneys to obtain a definitive view of its patentability, patent robusteness and quotations for their services in attempting to secure a patent.

The UK Intellectual Property Office issued a Certificate of Grant of Patent for my invention a few months ago.

I don't think you bothered to respond.
Anyway, as I suggested in the above post to you do some legwork and go and speak with patent lawyers as I did. They are the experts and will provide you with expert advice for free... initially.

 

[Chris Ashdown]

Well, it is both a device and a method so I would say first that it is a ball of various sizes that is made of a rubber balloon that has an air valve that allows the air to enter via exerting pressure through but not come out and via which it is filled with air using an air pump or other methods. Then leather pieces in octagons are placed on the balloon adjacent one to the other and their edges in proximity are sewn together with a thread made of cotton fibers or other materials. Its usage is to play football (I suppose this has already been invented) but also other sports or in other applications where a ball is needed that can bounce back.

What you have described for the patent is wide open for someone to sell copies of that do not infringe on your patent

Your rubber balloon should read something like the inner membrane made of a air tight material that for instance could be made of rubber or any other material that will hold the air pressure at a constant pressure. It has a device that lets you inflate air or a similar gas to the inside of the membrane.

The outer skin of the ball will consist of a number of individual shaped pieces that may be in the any shape like for instance Octagonal made of a material that would normally be made of Vegetable Tanned Leather, but also other materials that are able to withstand a strong force applied to them such as kicking a ball.

And so on a description that stops people making copies by using say a bladder made of synthetic rubber, I will also use Bonded Nylon thread. That is where the expert knows how to cover all aspects of the description, if you right the size is 60 mm then whats to stop someone making on at 62 mm,

 

[Panoramix IP]

The value that the patent agent/attorney adds is not limited to just the re-wording of the information that you provide. It is more about the strategic guidance that would enable you to obtain patent protection in multiple territories, potentially with carefully crafted claims that differ for each country. It is the claims that are the really important part of the application. These provide the legal definition for the invention. The whole application should be crafted around the claims to avoid problems later. I would use a document provided by a client as a reference but then completely pull it apart and re-write it. This allows me to try and design around the patent to suggest alternatives and possible improvements.

I cannot stress enough how important it is to get the first patent filing right. If you screw it up it could prevent you from obtaining patent protection anywhere. The way that the content is drafted is important to provide sufficient basis for any other inventions that you might want to try and protect later through divisional applications. Different countries have different rules as to what is patentable so this needs to be considered in the original filing.

Your patent agent/attorney should also be advising you on freedom to operate. You may well get your patent granted but that doesn’t mean you are free to sell you product. There may be earlier patents that you would infringe.

If you speak with a decent patent attorney there should also be a discussion around whether patent protection is even going to be useful to you. This all feeds back into the strategy discussion.

The value add from having a decent patent attorney prepare, file and prosecute the patent application will far outweigh the costs.

 

[prophet01]

Spot on advice from Kevin.