An interesting question that comes up from time-to-time is: Do you need a patent attorney to draft and file a patent? This question is usually from first-time inventors and those who have little experience with the patent system.
A quick Google search seems to present a number of options and “self-help” books or videos to convince inventors to prepare and file their own patents (these books and videos are of course sold to their “victims” with a no-liability disclaimer for the loss of your patent rights).
So in this article, we will attempt to explore this topic (as objectively as possible!) as to why our profession exists and hopefully demonstrate that, yes – you do need a patent attorney.
According to IP Australia over 98% of patents prepared and filed without the assistance of patent attorney do not successfully make it through to a granted standard Australian Patent. More than likely, the remaining 2% are unenforceable or otherwise invalid.
This reflects my findings in our practice where we have never had a Client with a self-prepared patent that is in satisfactory condition. In fact, most of the time the Client is in a desperate situation in which they may have lost the rights to their invention.
Patent Attorneys, like myself, have a technical qualification, such as Engineering, and a legal qualification, such as a Masters Degree in Intellectual Property law. We then become registered under the Patents Act as Patent Attorneys. However, we’re not lawyers or solicitors, and in fact, Australian lawyers or solicitors are prohibited from drafting patents under the Patents Act.
We specialise in drafting patent specifications to ensure that your invention is protected from many different angles and someone will not be easily able to change your invention and escape infringement.
We also keep abreast of international patent law and incorporate those aspects into the patents we draft so that our Clients’ can also validly seek patent protection overseas in places such as the USA, Europe and China.
Can I draft and file my own Provisional Patent?
Provisional patents are often used to secure an early priority date for your invention and then other patent applications, including overseas patents, are “based” on the provisional patent. Accordingly, the provisional patent is the “base” or “foundation” on which all subsequent patent rights may come to depend.
A poorly drafted provisional patent application may therefore not be able to provide adequate “basis” for your invention later down the track and, in some cases, will result in all subsequent patent applications being potentially invalid.
In my opinion, the days of the “dodgy” or “self-prepared” provisional patent are over and anyone attempting to sell self-help books or videos is engaging in those activities to profit themselves rather than genuinely assist inventors to properly secure their inventions. In fact, some of these businesses profit by passing your details onto Patent Attorneys who then use this as a lead to sell their services to you to file the complete patent or review and “fix” the work you have done.
Also, it is very important to distinguish between “drafting a patent” and “filing a patent”. In most cases, 95% of the effort (and cost) is the “drafting” and the “filing” is simply an administrative procedure. Accordingly, you could “file” your own patent but it is what is written, claimed and disclosed in the patent specification that is really important.
Getting the Right Advice
My advice to any inventor or business is to get the right advice from an honest patent attorney practitioner (whether it is from IP&, or from another firm – just be careful of the firms that have “commercialisation” teams or are not true IP specialists).
You also can obtain some procedural advice from IP Australia – however, they cannot provide you with advice as to the best way to protect an invention or advice on patentability. IP Australia is simply a government body that administers the filing, examination and granting of patents. A problem we are facing is that with more information available (such as that from IP Australia) – it has being easier to “file” a patent. But, at the same time – the drafting of patents has become more complex and the law has become more stringent. So, using a patent attorney has become more critical than ever before.
We offer a free telephone consultation and a reduced fee initial in-person consultation to give inventors a rapid and frank assessment of their invention and the costs to properly protect their inventions. Accordingly, if you would like to know more – please give us a call.