Hiring An Attorney V/S Self-filing A Patent Application: Which Is Better?

May 2, 2023
- Patent Prosecution

Are you tempted by the relatively cheaper option of self-filing for a patent? Well, the thought has crossed every patent applicant’s mind. After all, it would eliminate the considerable expenditure of attorney and legal fees involved! But when it comes to the crucial decision of filing, is it wise to bypass the legal experts and do it yourself? Let’s find out.

Which Patent Are You Filing For?

Provisional patents do not have a specific format, nor do they have strict guidelines. It is a temporary patent with a broad scope that businesses can apply for while they work on their invention or patent strategy. Given the simple nature of provisional applications, they can be easily filed without assistance from an attorney.

Non-provisional patent applications, on the other hand, are the opposite. They are detailed applications with claims, specifications, drawings, and other parts that need to be drafted carefully and in consonance with the rules of the United States Patents and Trademarks Office (USPTO). Given the complex nature of non-provisional patents and their criticality, it is usually not advisable to navigate the tricky waters yourself.

Another consideration could be the type of patent you are filing for design or utility. Design patent applications are relatively simpler and focus more on drawings rather than writing. If the drawings are illustrated properly and in adherence to the USPTO design drawing rules, then one could attempt self-filing.

A similar approach, however, is not possible with utility patents. They require meticulous claim drafting to protect the scope of the patent as well as satisfy the examiner, besides being accompanied by precise drawings and illustrations. The claims need to be worded in such a manner that they are neither too narrow nor too broad. The claim language too is very unique and specific and requires expert support. Besides the filing, there are the office actions sent by the examiners that almost every utility patent application attracts. Overall, utility patent applications are definitely not something that first-time applicants should aim for.

Self-Filing a Patent

Cost is the biggest advantage when filing a patent yourself. The average attorney fee ranges from $8,000 and $10,000 but can go up to $20,000 depending on the level of complexity of the patent. This can be a huge sum for small and medium businesses that operate on limited budgets. But that’s where the advantage ends. Besides the cost factor, there are no other significant benefits of self-filing a patent application.

Instead, self-filing opens a Pandora’s Box of tasks that can be overwhelming for those without prior experience. Some of the obstacles that one may encounter are as:

Investing considerable time and resources in understanding the patent drafting process and requirements.
Drafting errors that may result in patent delays or refusal of patent rights.
Inability to handle office responses due to no prior experience.

While you might be well-versed with all aspects of the invention, presenting it in the format required by the USPTO and dealing with legal angles may not be your forte. A poorly drafted application puts your invention at risk of patent refusal. Even if a patent is granted, the written language of the claims may not be able to protect it from infringement. Each section of the application requires tremendous precision to be able to satisfy the stringent mandates set by the USPTO. And an understanding of the legal aspects can only come with experience.

Hiring a Patent Attorney

If you choose the patent attorney route for filing a patent, you have experience and expertise on your side. Both are extremely useful assets when dealing with the often-confusing requirements of the USPTO.

When you hire a patent attorney for the patent prosecution process, their services include:

Preparing the patent application
Client representation in all matters relating to law and practice.
Advising throughout the patent application process.
Drafting robust claims that offer the strongest protection to the invention.

The advantages of hiring an attorney include:

Their familiarity with the patent prosecution procedure can help expedite the process.
Awareness of the latest developments in patent rules and regulations.
Increased chances of securing a patent courtesy of a thorough application that fulfills all technical and legal parameters.
Little to no common mistakes that one might make if self-filing the application. This helps reduce delays and minimizes risks.
Legal advice and representation if the patent is infringed upon by a third party.
Knowledge of other business aspects of owning a patent obtained through an experienced patent attorney.

Choosing A Patent Lawyer

There are two types of patent law firms- one that deals only with the limited aspects of patent prosecution, and the other which has a broader expertise in IP laws and litigation. It is recommended to choose an experienced attorney from the latter because such firms can offer valuable advice not just in matters of filing but also in IP management. The technical knowledge of the attorney could also be considered for patents with highly niche subject matters.

Conclusion

Ultimately, the decision to self-file a patent or hire an external agency depends on the applicant. If you are well-versed with patent laws and can handle legal requirements, then self-filing can definitely save you some expenses. But given the low success rate of self-filed applications, it is suggested to take the safer path and seek the services of an expert professional who can considerably increase your chances of securing a patent.

About TTC

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Our team comprises skilled professionals, including experienced IP professionals, who are passionate about constant innovation and development. We take pride in our ability to IMPROVISE, ADAPT, and IMPLEMENT customized and strategic solutions that cater to the unique needs of our clients.

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