Many a times I have come across inventors who believe they have the necessary skill sets to write and prosecute their own patent applications after reading patent-it-your-self guides. After all, most patent attorneys were once engineers themselves, hence no reason for a bright engineer to not go ahead and file the application himself. Also, who better understands the invention besides the inventor himself, right?
Well-usually not. The important thing to consider are details in a patent application. In many instances a patent prosecutor must not only have the technical skill set but also the legal back ground. Any errors and omissions can count heavily against you and make the difference between getting a granted application or refusal upon refusal in the prosecution stage.
Furthermore, the most important focus on any application is upon the claim set. The claims are where a patent’s protection comes from. Claims that are too narrow may be worthless, whereas, claims that are too broad may infringe on other patents. Patent claims are one of the most essential element of any application, and – as being a hybrid of technical and legal language -- are significantly difficult to craft. It is an art mastered only after a great deal of experience, and only with a continuous monitoring of the ever-changing landscape of patent law. Experience in writing patent claims is a key difference between a good patent attorney and a DIY inventor.
From a legal stand point, as well as from an investor/competitor stand point, claims are heavily focused upon. The USPTO reviews the claims to determine novelty/non-obviousness. The courts look at claims to determine infringement. Potential investors look at claims when deciding whether the invention is worth investing into. Competitors looks at claims when deciding if their invention would be too similar.
Therefore, the next time you are thinking about drafting your own patent application, after reading a few DIY guides, remember that a little knowledge is never sufficient to become an expert. It is best to seek the guidance of someone practicing in/familiar with the field to attain the most favorable results.
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