The patent system protects inventors and innovators against the unauthorized use of their inventions. Preparing a patent application, however, is not easy. Some inventors, especially those with limited financial means, would choose to file a patent application by themselves, not knowing the considerable risks they are undertaking. While “do-it-yourself” (DIY) patent applications may seemingly cost less, the following pitfalls must be considered:
Loss of patent rights. Patent claims define what is legally protected by the patent. But what is a patent claim anyway? While the inventor best knows the technology of his invention, he may lack the experience and skills needed to properly describe his invention to obtain patent protection. Worse, the inventor may draft inconsistent claims. These can lead to costly mistakes resulting in the loss of some or all of the inventor’s rights.
Opportunity costs of DIY patent applications. A number of DIY patent applications are abandoned or refused because of the inventor’s lack of knowledge of the patent system. For instance, some inventors erroneously think that an objection from the Intellectual Property Office cannot be overcome and abandon their patent applications upon receiving office actions. By the time these patent applications are abandoned, the inventor may have already incurred significant financial costs, such as government fees for filing and examining the patent application, and non-financial costs, such as the time and effort spent in preparing the application and the response to the patent examiner, which the inventor could have instead allocated to creating new inventions or conducting further research. In some cases, these costs may outweigh those involved in hiring a patent lawyer at the outset as the former can provide an initial assessment of the invention and suggest revisions before filing it to avoid the issuance of subsequent office actions or even the abandonment or refusal of the patent application.
Time consideration. Most countries require novelty for an invention to be patentable. Novelty is a technical concept and may have nuanced requirements in different countries. When is an invention deemed not novel or new? Can an invention be made available publicly and still be considered novel? Does publication render an invention non-novel? Because of the novelty requirement, time is of the essence in filing patent applications.
Multi-country filing. Patent rights are territorial. An inventor filing a DIY patent application may be overwhelmed with the various requirements in different jurisdictions. Even if the inventor is able to file the corresponding application in other countries, he would be talking and responding to multiple intellectual property offices, instead of communicating with a patent lawyer who will manage his applications and keep track of deadlines.
Commercial value. Intellectual property can be among the most important assets of an inventor. Entrepreneurial inventors understand the importance of having a roadmap in the course of their journey to scale up their technologies. This requires auditing intellectual property assets early on – even before the actual filing of patent applications. In this sense, there are significant advantages to having a patent lawyer onboard at the outset to advise on patent drafting and commercialization, as well as how to ensure protection against copycats and minimize the risk of infringing the patent rights of others.