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Should I Patent It Myself?

January 5, 2018

The first question that most inventors ask is "how much will this cost?"  Typically, by the time an inventor calls a patent attorney they have already committed to using a professional.  Some, however, ask about costs as part of a larger investigation of whether they can save money by doing it themselves.  The urge to "do it yourself" is strong in this case as the average inventor is bright, resourceful, and a quick-study.  A good number of inventors are also cash-strapped.

 

If an inventor wants to represent themselves before the USPTO--that is to proceed "pro-se"--there are many books and online resources that can help and I am happy to direct them.  I caution inventors, however, that this is a pivotal decision--certain mistakes in patent drafting and prosecution cannot be undone, and it may be too late to seek professional advice once those mistakes are made.  There may be a temptation to do it yourself and only hire a patent attorney when the wheels get stuck, but it would be prudent to understand that your patent attorney will be limited by the contents of the application as originally filed.  A poorly-written specification with insufficient detail, harmful statements or lack of fall-back positions will be difficult to prosecute even for the most experienced patent attorney.  A patent attorney may try to get the most out of a bad specification, but this salvage mission will typically be a cumbersome and expensive exercise.  Thus, the decision to proceed pro-se is a pivotal one that should be made only after careful consideration.  In addition to this advice, I often provide two additional factors to consider before proceeding pro-se.  

First, be prepared to spend hundreds of hours learning the patent system.  That is not an exaggeration.  A potential client recently balked at the idea that it would take twenty hours for a patent attorney to properly draft a patent application on his device.  He explained that he had read many resources and produced a rough draft.  When I asked him how long that took, he answered that he had already spent approximately 100-150 hours to do so.  This was the time that he had spent to get to a rough draft of an application, and did not include time that will be spent correcting filing errors, understanding the examination system, and learning how to respond to office actions in a manner to gain allowance without compromising the integrity of allowed claims.  Thus, regardless of whether a task can be successfully completed, it is often prudent to delegate certain tasks to professionals simply because it would be highly inefficient to not do so.  This is as much a communal confession as it is advice--many patent attorneys spend years mentally taking devices apart to understand how they work, and begin to (falsely) believe that they are capable of fixing anything themselves.

 

Second, at the risk of sounding boastful, regardless of the amount of time learning the patent system, the quality of the work and the chance of success of a pro-se applicant will not rival that of a competent patent attorney.  This is simply a reality.  From experience, I believe that a patent attorney with three years of relevant experience can work independently with minimal oversight.  After five years of practice, I would deem an attorney to be skilled or highly-skilled depending on his exposure and training.  Many readers may recall Malcolm Gladwell's 10,000 hour rule, which posits that it takes 10,000 hours of deliberate practice to master a skill.  Some may disagree with the 10,000 hour rule, but without getting into the merits of Gladwell's rule, and using it only as a guide, it seems to align with the accepted belief that a fifth year associate at a large firm, who may be approaching the 10,000 billable hour mark is competent.  This is reflected in the fact that most corporations will not hire patent attorneys with less than three years of experience.  Regardless, the point is that it would be unfair to expect an inventor to get up to speed on the patent system, avoid all the pitfalls and produce the same quality of work as someone with a 10,000-hour head start.

 

A study at Harvard Law School entitled "The Lone Inventor: Low Success Rates and Common Errors Associated with Pro-Se Patent Applications" adds some much-needed context and data for this discussion.  The full study is not long and is certainly worth reading.  In it, the prosecution history of 500 patent applications were examined, the 500 patent applications being divided into two groups: 250 pro-se inventors, and 250 inventors represented by a patent professional.  A few findings are of note.  First, 76% of the pro-se applications were abandoned, while only 35% of the represented applications went abandoned.  Additionally, the study notes that "among applications that issued as patents, pro-se patents' claims appear to be narrower and therefore of less value than claims in the represented patent set.  Case-specific data suggests that a substantial portion of pro-se applicants unintentionally abandon their applications, terminate the examination process relatively early, and/or fail to take advantage of interview opportunities that may resolve issues stalling allowance of the application."

 

Table 1 of the study has been reproduced below and it provides a useful comparison between the two groups:

There are some confounding factors at work here.  For example, pro-se applicants are much more likely to be unable to afford the cost of  seeing prosecution all the way through to allowance.  Thus, some of the differences may be attributable to simple economics and not to competency of the prosecuting individual.  Additionally, larger corporations represented by counsel typically file many applications in a given space, and thus may make better initial decisions on whether to file at all.  This may explain some, but not all of the data.

 

The reason to hire a patent attorney is to leverage the thousands of hours of experience.  For example, patent attorneys will have a better understanding of the law and can quickly maneuver an application, while pro-se applicants are surprised to learn that patentability often hinges on obviousness rather than absolute novelty.  Thus, pro-se applicants unsuccessfully argue "but it's not the same," while misunderstanding that the rejection is predicated on obviousness and not novelty.  Conversely, every patent attorney has a dossier full of arguments that they have used from time to time to overcome obviousness rejections.  Many even have templates for arguments based on the type of rejection in front of them, and keep track of the success rates of those arguments.

 

Finally, it would be helpful to comment on the study's conclusion that "among applications that issued as patents, pro-se patents' claims appear to be narrower and therefore of less value than claims in the represented patent set."  Because it would be impossible to study each patent individually as well as all the relevant art, he study looked at word count and the number of claims per patent in order to make this assessment, and thus reached the conclusion that pro-se patents appear to be narrower based on these factors.  Most patent attorneys would agree that claim drafting is more an art than a science.  "The name of the game is the claim," as Federal Circuit Chief Judge Rich once proclaimed.  A perfectly written specification may be worthless because of mistakes in the issued claims, and it takes years of training to master claim drafting and prosecution.

 

In sum, inventors are advised to proceed at their own risk.  If the expectation is that a patent will be the only thing preventing  competitors from pushing an inventor out of business, and that claims of the patent must withstand scrutiny whether through inter partes review or litigation, there is no choice to be made.  A competent patent attorney is absolutely necessary in that case.  If, however, the patent application is a moonshot that has no funding, then proceeding pro-se may be better than not proceeding at all.  But even then, the question hinges on the facts.  Sometimes it is better to not file anything at all.

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