Drafting a Patent Application: Role of Inventors

Drafting a Patent Application: Role of Inventors

It is a common mindset of the inventors to draft, file and prosecute the patent applications on their own, especially in India. This is mainly thought with a view to save costs of hiring the professional services of a patent agent. I have come across so many inventors who claim that they successfully drafted their patent applications and filed those on their own with the help of patent office.

I completely agree that Indian Patent Office always welcomes inventors and helps them understand the procedures followed therein, but how exactly can patent office assist in drafting a patent application is unclear. Even after filing, there are so many statutory formalities, including drafting and filing a response the  examiner patent report, which can make the life of the inventors difficult.

The inventors should realize that drafting of a patent application requires consideration of patent laws and rules, in addition to the technical details. If an inventor is not knowledgeable with respect to how the patent office will interpret the patent claims while patent prosecution, or with respect to how a potential assignee / licensee will value the claims in light of prior art, he is merely guessing that he is giving it a best shot, which is seldom successful.

As an example, I would like the inventors to see a recent WIPO publication, WO/2009/044411, which is drafted and filed by the inventor himself. The claim reads as follows:

PATENT CLAIMS:
1. I claim this way of generating Electric Power in the Ocean (or) where heavy water stores through these models only.

Although the specification describes few embodiments, but with all due respect to the inventor, what all he has achieved by filing a PCT could have been achieved by simply mentioning the same details on a blog, without spending a single penny. The amount inventor spent for paying filing fee for the PCT application could have been spent wisely to hire a patent agent, file an application in India, and then look for potential partners to take the process ahead. Also, if the countries where the protection is desired are limited, the entire route (not to mention, the expense) of PCT could have been avoided by entering those countries under Paris Convention.
I do not know whether this was advised by the patent office or not, but I am sure that limited funds can also be used strategically to initiate and proceed with the patent process.

Instead of making numerous visits to the patent office and taking advice of people who can do nothing more than making a mockery of the invention, the focus of the inventors should be on the commercial aspects of the invention, including a detailed analysis of the prior art, which may help them decide whether to go for the patent protection or not.
To conclude, I would like to mention that profession of patent agents is a statutory profession, created with a definite purpose, similar to a medical practitioner, advocate, architect and the like.

Advertisements

4 thoughts on “Drafting a Patent Application: Role of Inventors

  1. Hi Rahul,

    I agree with your thoughts & suggestion on getting a patent application drafted only by a dedicated patent professional. However, it is worth mentioning a point that it is always better to get at least the drafted claims, if not specification, vetted by the inventor(s).
    The reasons being, first,they are the ones who have invented something and they are a resource of immense knowledge about their subject and in a better position to understand whether their inventive concept, which diffrentiates their invention with a piece of prior art, is captured in the claims.
    Second, the inventors are in a better position to understand which are the commercial embodiments they would like to focus on and accordingly, guide professionals like us to draft appropriate claims (after all, an infringer would only be caught on a claim directed towards the commercial embodiment product of the invention).
    I work in tandem with a US based inventors and have an experience that sometimes, in the process of drafting claims or claim amendments during prosecution, the language of the claims are not in sync with the commercial embodiment and that could severely lead to adverse results during infringement proceedings later on.

  2. Dear Samir

    Thanks for the comment. The main object of the post is to focus on the importance of the involvement of a patent agent in the patent process.

    Moreover, as a patent agent, it is our responsibility to get the inputs from the inventor before representing them at the patent office, at each and every step of the process.

    Regards

    Rahul

  3. Hi Rahul,

    I completely agree with you that the inventors should realize that drafting of a patent application requires consideration of patent laws and rules.

    Drafting a specification does not only require the technical aspects of an invention, but also the language, the words used in drafting. Patent claims are the legal basis for your patent protection. They form a protective boundary line around your patent that lets others know when they are infringing on your rights. The limits of this line are defined by the words and phrasing of your claims.

    Regards,
    Neha Manoria.

  4. Pingback: Writing / Drafting a Patent Application /Specification: Role of Inventors « Biotech Patent Expert India IPR Attorney l TM Lawyer

Leave a Reply

Please log in using one of these methods to post your comment:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s