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How Hard Is It to Patent an Invention Without a Patent Attorney?

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Undertaking the process of securing patent rights can be very demanding. For many companies, their intellectual property assets are their most valuable asset. As such, it is important to be familiar with all aspects of intellectual property law. Notably, understanding patent law can be a major benefit for a company. Patent protection allows the holder to prevent others from copying the covered matter for commercial purposes.

In this article, we discuss the process for securing a patent. While it is certainly possible to undertake these steps without the assistance of a patent attorney, hiring a patent attorney is advised. Messing up any part of the process can cause the individual or company to lose important protections afforded them under the patent laws.


Types of Patent

There are three broad categories of patent:

  • Design Patent
  • Plant Patent
  • Utility Patent

The utility patent provides protections for machines, processes, articles of manufacture, and compositions of matter. The plant patent protections new genetic combinations of asexually produced plants. The design patent is used to protect the ornamental or aesthetic attributes attached to an article of manufacture.

The utility patent is used to secure rights in an invention.


What is Required to a Successfully Prosecute a Utility Patent?

The first step is determining whether the invention is patentable subject matter. This means that the matter must be capable of patent. The categories of patentable subject matter are: Machine, Process, Article of Manufacture, and Composition of Matter.

The next step is to make certain the item meets the various requirements. A invention must be novel, non-obvious, and useful. An item is novel if it has not been widely introduced to the public, and it has not been the subject of a patent application in the US or abroad. It is non-obvious if a person having ordinary skill in the art (PHOSITA) would not deem the invention to be common knowledge. That is, experts in the field cannot readily know or employ the subject matter of the patent. Lastly, the invention must have some recognizable utility. The value of the utility is not measured. It must simply serve some function or purpose. This limits the ability to patent abstract processes that have no identifiable function.

The next step is to research existing inventions and patents to make certain the invention (or claimed elements of the invention) do not already exist.

Lastly, the inventor must file a patent application with the United States Patent and Trademark Office (USPTO).


Elements of the patent application

A non-provisional patent application must include the following information:

Application forms identifying the filing as non-provisional,
Names of all inventors,
Residences of the inventors,
Name or title of the invention,
Patent agent or attorney and registration number (if applicable)
Address for correspondence,
U.S. Government agency with rights in the invention,
Specification identifying the function or use of the invention,
Claimed elements of the invention,
Oath or Declaration of the Inventor, and
References to any prior Art.

The most demanding aspect of the application is crafting of the claimed elements of the invention. These are the elements that are novel and non-obvious. Thus, they are the elements that are protected from copy and commercial distribution. It generally requires some degree of technical or scientific understanding of the subject matter to identify these attributes of the claimed elements. Plus, writing out these elements requires the ability to write technically and precisely. The claims generally are referenced in detailed drawings of the invention. The drawings are numbers with lines and reference points identifying aspects of the invention that are novel and non-obvious.


Should I File My Utility Patent Myself?

The answer is probably, “no”. The purpose behind filing a utility patent is to secure rights that are capable of being protected if a competitor employs your claimed elements in a commercial invention. This is extremely difficult if you do not have expertise in the patent filing process. Even if you are able to successfully prosecute a patent application and secure patent rights, those rights may be far too difficult to protect. That is, a poorly drafted patent may establish certain rights, but it may not protect against very similar elements that achieve the same function or purpose. This would allow competitors to easily copy and exploit your invention without actually infringing upon your patent rights. A knowledgeable patent law professional can help you identify the broadest rights capable of protection. This increases the likelihood that you will be able to fend off competitors who attempt to copy your invention.

In some case, however, the company may have a strategic purpose behind the patent application. This is often the case when a company realizes that it will be difficult to defend or enforce its patent rights. Securing patent rights may allow the company to threaten or intimidate competitors for a certain period of time. That is, the competitors are scared to copy the protected invention too closely. They will need to work harder to differentiate their invention from the patent holder’s invention. This can buy valuable time needed to secure a market presence for the new invention. Further, simply having some form of patent protection greatly increases the likelihood of third parties licensing your patent rights for use or production.

LawTrades can help. We can connect you with a patent attorney through an on-demand hiring platform that connects patent clients like yourself with attorneys. We offer free consultations, fast and direct communication, and not to mention it’s much more affordable than going through a traditional law firm.