When you run a small business, protecting your unique inventions and ideas is crucial to maintaining a competitive edge. You need tools to help fend off copycats who would love to use your own ideas to steal your sales and compete against you. One of the most effective ways to safeguard your innovations is by filing for a patent.
You might think that you can file a patent application on your own. You certainly can. But remember the old adage: those who represent themselves have a fool for a client. You can run a business. Can filing for a patent really be that hard?
Yes, it can. A study of 2.15 million utility patents published in the Yale Journal of Law and Technology found that the U.S. Patent and Trademark Office initially rejected 86.4% of patent applications. The numbers were even worse for small businesses (with fewer than 500 employees): a 90.7% rejection rate. A good patent professional (who can be either a registered patent attorney or a registered patent agent) knows that rejections are opportunities to strengthen eventual rights. But an inventor without such help might get unnecessarily discouraged.
Navigating the process of filing a patent is more complex than it may seem at first blush—and you have too much at stake to waste on failed, expensive processes. So, let's consider seven reasons why your small business should consider hiring an attorney to help you file for a patent.
1. Leveraging legal expertise
Experienced patent attorneys and agents possess specialized knowledge in intellectual property law. They are well-versed in the intricacies of patent applications, from conducting thorough patent searches to drafting precise claims—as broad as possible to secure protection in view of the known prior art, with a "claiming strategy" that uses dependent claims as insurance against the unknown. Prior art is shorthand for the store of knowledge that existed before you file a patent application. This might include existing patents, published patent applications, scientific papers, technical journals, books, websites, public demonstrations, or any other forms of written or oral communication. A lawyer's expertise ensures that your application is comprehensive and meets all legal requirements, significantly reducing the risk of an unfixable final rejection.
Moreover, if your patent is rejected, seasoned lawyers and agents can handle communications with the patent office, including responding to office actions. They can argue against rejections, amend claims, and provide additional information as required.
2. Conducting exhaustive patent searches
Before filing a patent application, it's usually recommended to conduct a thorough patent search to ensure your invention is novel, called a search for prior art. This step might be crucial to avoid wasting time and resources on an application that is likely to be rejected.
While it is possible to conduct a prior art search independently, working with a law firm can provide more comprehensive and accurate results. Patent attorneys have access to advanced databases and tools and the expertise to interpret the search results effectively.
3. Drafting precise, detailed patent applications
The success of your patent application largely depends on the quality of your patent claims and adequacy of your specification. Claims define the scope of protection your patent provides. Drafting these claims requires a deep understanding of your invention and patent law. Patent attorneys and agents are skilled in drafting claims and specifications that accurately and comprehensively cover your invention while reducing the risk of ending the process without secured rights.
For example, your patent application must thoroughly and clearly explain your invention, including enough detail to allow someone of ordinary skill in the art practice your invention without undue experimentation. The application should often include specific examples of the invention that illustrate how it can be made and used. The claim section must clarify the legal boundaries of the patent protection. Any drawings included must be detailed and accurate and comply with the specific formatting and quality standards set by the patent office.
4. Navigating the complexity of the patent application process
The patent application process involves several stages, including the initial filing, responding to office actions, and possibly challenging patent office rejections in court. Each of these stages requires specific legal knowledge and strategic decision-making. A patent attorney can guide you through each step, ensuring that all deadlines are met and that your application is as strong as possible.
For instance, a patent lawyer or agent can ensure that all formalities are met for the submission to the USPTO, including proper formatting, required documentation, and fees. A lawyer or agent can also respond to an office action from the patent examiner, amend claims to overcome objections, argue against the examiner's conclusions, marshal admissible evidence demonstrate the patentability of the invention, and interview patent examiners to clarify issues and negotiate claim language.
5. Avoiding common pitfalls in patent applications
Common mistakes in patent applications include insufficient descriptions, improper claims, and missed deadlines. These errors can lead to the rejection of your application or, worse, the loss of your patent rights. Patent attorneys are experienced in identifying and avoiding these pitfalls, increasing the likelihood of a successful application.
More specifically, attorneys can help you avoid problems like these:
- Using an insufficient description of the invention or failing to describe the best mode of carrying out the invention
- Articulating the claim in a way that is so broad that it is unclear and ambiguous or so narrow that it will not provide sufficient protection
- Failing to conduct a thorough prior art search and identify existing inventions that might affect the patentability of the new invention
- Providing inaccurate or incomplete information in the application
- Missing critical deadlines, such as those for filing the initial application, responding to office actions, or paying maintenance fees
- Including low-quality or unclear drawings
- Failing to comply with formatting, required sections and documents, or submission procedures
- Disclosing the invention publicly before filing a patent application, which can jeopardize patentability
- Failing to adequately respond to office actions, such as rejections or requests for additional information
6. Developing an intellectual property strategy
A patent attorney can help your small business develop a comprehensive IP strategy that covers patents as well as trademarks, copyrights, and trade secrets. A holistic IP strategy can provide robust protection for your business's innovations and brand, helping you to maximize your competitive advantage.
As an example, an attorney can audit your IP portfolio to ensure that your company's IP assets are properly protected and maintained. This includes paying maintenance fees and updating registrations as needed. An attorney can also help you assess the value of your IP assets, so you can make informed decisions about licensing, sales, or joint ventures. They can also help you identify and prune assets that are no longer strategically valuable, so you can reduce costs. Finally, they can ensure your IP is integrated with your overall business strategy and aligned with market conditions.
7. Saving you money in the long run
While hiring a patent attorney involves an upfront cost, it can be cost-effective in the long term. A well-prepared patent application reduces the likelihood of costly rejections and appeals. Additionally, strong patent protection can lead to lucrative licensing deals or deter competitors, providing a significant return on investment. Patent attorneys also offer alternative dispute resolution methods to avoid expensive litigation and build robust IP foundations that attract investment and support business growth.
How to expedite the patent filing process
Filing for a patent is a critical step in protecting your small business's innovations. However, the patent process is complex and requires specialized knowledge.
By working with a patent attorney or agent, you can ensure that your patent application is thorough, accurate, and strategically sound. This increases the likelihood of securing a patent and protects your business.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.