Don’t Try This at Home

At a recent networking event I met some scientists from a new biotech startup. They told me about several provisional applications in their pipeline. They were so proud they had drafted and filed them on their own. They saved “a ton of money.” But did they do more harm than good?

From our discussion I could tell they were very intelligent scientists. And I know they were operating on a limited budget. But they didn’t see how their actions might have been penny-wise and pound-foolish.

When I asked the scientists if they thought they wrote high quality applications, they exclaimed, “Yes! They were based on issued patents and published applications.”

As you can imagine, we had a lively discussion after that.

Why Not Write Your Own Patent Applications?

Using issued patents as a model is not a smart strategy, especially in cutting-edge technologies. Issued patents contain claim sets that are, at best, several years old. With the courts constantly refining the meaning of the statutes, what was once valid and common practice may now be invalid and clearly ill advised. Your IP professional makes it their business to know the current best practices in light of recent court decisions.

Using published applications may be even worse. While they are fresher than issued patents, one would need to examine the file history of the applications to ascertain if the patent examiner had objections to the claims, or if they had even been examined yet. I know the scientists I spoke with did not read the file histories of the published applications.

The bottom line is you may think you are saving money by filing your own provisionals and handing them off your attorney or agent a year later. But having to rework your application may be more expensive than writing it from scratch. Plus, you are betting that you did not make any fatal mistakes that will result in loss of rights.

Seven Things You Can Do to Save Money

Start with an IP strategy and file applications that fit your strategy.

Seek out an IP professional with background and experience in your technology.

Prepare clear technical descriptions of your inventions and provide those to your attorney or agent. Tell him or her about the breakthrough features and how they fit your product and business strategies. This will make it easier to draft the most comprehensive application.

Provide detailed examples with experimental data if you have them. Comprehensive examples increase your chances of capturing broader claim scope.

Provide supporting references and documentation. This will save time and money for preparing and filing information disclosure statements. And be sure that you do not hide references that potentially disclose elements of your invention. (More on this in a future posting.)

Thoroughly review the application before it is filed. This means more than looking for typographical errors. Be sure the essence of your invention is captured in the claims. But also check that it is not projected too far beyond the limits of your examples. Many patents have been invalidated years after issuance because the claims lacked adequate support.

Finally, listen to the advice of your IP professional. It’s why you are paying them.

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