By Gene Quinn
A popular myth persists that patent attorneys and patent agents are not really necessary and inventors can file patent applications themselves and save money.
You also could save a few bucks by performing your own appendectomy.
The truth is patent attorneys are among the most highly trained attorneys you will ever meet.
In addition to having to successfully complete law school and take a state bar exam, patent attorneys must have a scientific background to take the Patent Bar Examination.
As fellow patent attorney John White has said, a person becomes a patent attorney when they lack sufficient personality and charisma to do tax work.
But when it comes to describing your invention in a document that will grant you exclusive rights with respect to only what is disclosed and claimed, isn’t that the exact type of person you want in your corner?
I often see cash-strapped inventors who want to save a few shekels by filing their own patent applications, known in the business as filing pro se. The first question inventors in this position need to ask is whether they should even be developing an invention. The cost of filing for and obtaining a patent is typically quite small compared to the amount of money required to create, market and distribute a new product.
So if you can only muster several hundred dollars to file your own application, what are the realistic chances you will be able to move forward in the commercialization process?
I know it’s prudent to proceed with care and not needlessly waste money, which is why I am happy to work with those who must start the patent process on a budget. But a couple hundred dollars is not a budget.
You might as well go to Vegas, put it all on black and let it ride. At least you have close to a 50% chance of winning, which is a greater chance of success than having only a few hundred dollars to spend on your invention.
Many inventors, armed with what they’ve read in David Pressman’s Patent It Yourself, often believe they have acquired as much skill and insight into the patent process as someone who dedicates up to 60 hours a week filing patents for a living. I have seen time and again pro se patents that have such narrowly granted claims as to be commercially useless. Skilled patent attorneys know how to wrest the broadest, and therefore more viable, claims from an application.
For more than 100 years, courts have marveled at how difficult it is to draft sophisticated patent applications.
In the 1892 case of Topliff v. Topliff, the U.S. Supreme Court explained:
“The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.”
More recently, Chief Judge Howard Markey of the United States Court of Appeals for the Federal Circuit noted in 1988 in Laitram Corp. v. Cambridge Wire Cloth Co.:
“This appeal again illustrates one of the many difficult dichotomies that lurk in the lacunae of patent law. On one side rests the very important, statutorily-created necessity of employing the clearest possible wording in preparing the specification and claims of a patent, one of ‘the most difficult legal instruments to draw with accuracy.’ On the other lies the equally important, judicially-created necessity of determining infringement without the risk of injustice that may result from a blind focus on words alone.”
In 2004, the Federal Circuit underscored the importance of choosing your words carefully in Chef America v. Lamb-Weston.
In this instantly famous case, the Federal Circuit had to interpret the meaning of the phrase, “heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F.”
What the patent should have been said was, “heat the oven to a temperature in the range of about 400° F. to 850° F.”
Because what was said literally required the internal temperature of the dough to reach between 400° F. to 850° F., the patent owner had a useless patent.
Inventors need to know that what they say will be interpreted literally. You get great latitude to define the invention, but because it is up to you to define the invention, the court will not fix what is said, even when everyone obviously knows what you most likely meant.
Independent inventors may be able to draft patent applications. A good patent attorney can always make those applications better.
Editor’s note: This article appears in the May 2011 print edition.
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