For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Thursday, 6 January 2011

Unrepresented patent applicants: a little thought

Babes in the Wood? Or can
unrepresented patent
applicants manage alone?
Last Friday, in "Rule 141 and UK IPO spin" (posted on the IPKat here), a sensitive topic that was raised was the issue of professional representation for patent applicants. It is clear from Article 133 of the European Patent Convention that patent applicants may file applications on their on behalf; even legal and natural persons not having their residence or principal place of business in a Convention state -- who need representation for other purposes such as oppositions -- can file their own applications.  Applicants can file their own patent applications in the United States too, though the US Patent and Trademark Office (USPTO) advises independent inventors that
"The patent application process is complex. The USPTO cannot assist in the preparation of patent application papers. If you are ready to apply for a patent, we strongly advise you contact a registered patent attorney or agent"
and, since the US makes no distinction between domestic and foreign applicants, the same applies for them too.

This member of the IPKat is intrigued by the phenomenon of the unrepresented applicant.  He has no facts and figures at hand, but he surmises as follows:
(i) applicants who wish to apply without representation do so either because they believe that they are competent to do so and therefore need no representation, or because they would like it but cannot afford it (or assume that they can't);

(ii) at the point at which they take the decision to process their own application, certainly if they are doing so for the first time, they may not have understood clearly the difference between a professional representative's role on the one hand in preparing the application, in terms of framing the description in patent-office-friendly terms, drafting the claims and checking for compliance with formalities, and on the other hand in dealing with responses and communications between himself and the examining office;

(iii) the amount of assistance which patent offices can give to unrepresented applicants, both before and during the application process, is restricted by one or both of two factors -- legal criteria as to their powers and limited resources;

(iv) the cost to the examining office, in terms of effort and manpower, in processing an application in respect of an invention for which no professional assistance has been available at the preparation stage is likely to be greater, and the likelihood of grant is lower, than in respect of an invention where professional assistance has been provided.  There is therefore good reason to encourage an applicant to obtain professional assistance at the preparation stage, even if he does not use them later.
If all of this is correct -- and the IPKat hastens to say that this is based on his own surmise and impressions gleaned from sporadic anecdotal evidence and not from experience -- it suggests that professional representatives should be making every effort to market their drafting and preparation skills as a stand-alone service that can be purchased for less than the cost of an ongoing relationship with a representative in a situation where, however well the latter's duties are discharged, it is difficult or impossible for the applicant to budget for it.  A brief, random and possibly unrepresentative visit to a few patent attorney websites suggests that this is not being offered, at least, via the website, and there may be important professional or other reasons why it can't be done.

This Kat would love to hear from patent attorneys, in the UK and beyond, as to what they feel about all of this -- and he apologises if he has wasted readers' time if he is under a misapprehension as to the current position.

25 comments:

Anonymous said...

The number of private applicants is relatively high as they are encouraged by free advice services to file their own applications – but the resulting applications are usually deeply flawed, even when written by highly intelligent people. This should not be a surprise given how long it takes highly intelligent people to train as patent agents and pass exams.

It is better to have an application drafted professionally and prosecuted by an amateur than drafted by an amateur and prosecuted by a professional – an applicant with a well drafted application running into problems might get it sorted out by seeking professional help again, whereas an applicant with a poorly drafted application will usually be in a situation where professional help cannot get them back to the position they would have been in had the application been professionally drafted in the first place. However, for a typical private applicant invention, drafting the application will take as long as or longer than dealing with an examination report or two so there is little incentive to provide a drafting only service.

Once a private applicant has started to do their own thing, things rapidly get to a point where they cannot be fixed. A common scenario is a private applicant who has drafted and filed their own application shortly before publicising their product coming to a patent agent at the end of the priority year because they have been told a patent agent could sort it out then by filing a new application with a priority claim. The patent agent then reviews the initial application and has to deal with a highly complex balance between trying to write good claims and trying to write claims which are entitled to claim priority from the earlier application – this is often difficult and legally uncertain… and the client expects to pay less than for a new draft because they have already written something!

Anonymous said...

From my time as an EPO examiner in Munich, I can truthfully state in the fields I worked in, less than 1% of all applications (EP, PCT) were represented directly by the inventor. In the vast majority of these cases, the application was refused, despite the mantra that the EPO had to be particularly "Anmelderfreundlich" to such applicants. It is sad to say however, that in my experience most of them were definitely "certifiable".

In my subsequent role as a patent attorney, I have only ever had 1 case of having to represent a "nutter" (there was no other kinder expression unfortunately) pro bono, i.e. forced on me by the legislation of the land in which I was working. Needless to say, we didn't get very far along the drafting experience because the person was disinclined to listen to the advice that I was prepared to offer, free or not. This just goes to show that while individual inventors are not all stark raving mad, there are some who are so full of their egos that they do not take constructive or strategic criticism willingly, leading to an ultimately dissatisfactory relationship for both attorney and client.

Anonymous said...

In France, the number of individual applicant inventors is fairly high (I have no figures to offer unfortunately), due mainly to the low official fees required by the French Patent Office. It is farily common for these applicants to turn up at free counselling sessions seeking help from an attorney, who has on average 20 minutes to try and put things right or at least point the applicant in the right direction. Obviously, most of these cases are hopelessly irretrievable and doomed to failure.

On the flip side of the coin, it is remarkable to notice that an application drafted and filed by an individual inventor in France has a far greater chance of sailing through the formal examination process than one drafted and filed by a registered patent attorney. The French PTO seems to delight in nitpicking every single comma that it might find amiss in a professionally drafted patent application, whereas the most glaring errors and mistakes are allowed to pass through unhindered with applications filed and drafted by individuals. Common examples of such faults : incorrect claim numbering and dependencies, incorrect drawings, virtually non-existent descriptions. Joe Public seems to be able to get away with such oversights, but woe betide an attorney who absent mindedly forgets to check the correct claim numbering and dependencies...

Anonymous said...

This blog post leads me to the question of to what extent various countries require attorneys to carry out pro bono patent drafting and representation work.

As an example, France has legislation providing for obligatory pro bono assistance for certain individuals of very low incomes. How about other countries ?

Anonymous said...

The UKIPO gives a lot of assistance to private inventors/applicants, possibly too much assistance (especially when redrafting the claims for the applicant). I suspect that a relatively large percentage of UK applications are filed and prosecuted without representation (probably because the official fees are low, as in France).
There is no obligation on UK attorneys to provide pro bono assistance (though many do via CIPA advice clinics, for example).

Anonymous said...

It would be an unusual inventor who has several thousand pounds to spend on a professionally drafted patent application now, but who already knows that he won't have even a few hundred pounds to spend on professionally drafted examination responses two or three years down the line.

Anonymous said...

To Anonymous@12.55

Sadly I think this type of inventor may become more common - I know of at least two applicants that have had their funding from a UK government source withdrawn in light of recent events.

Also, I suspect there are quite a few inventors who seek professional advice, but can't afford to use a patent attorney at the outset or indeed later on.

Mancunian said...

{p1}
They are rather popular aren't they, we've met many of them:-
(1)Many cite expensive attorney fees and no sufficient start-up / R & D , etc funds for IP protection and exploitation as a major stumbling block
(2) Without sounding sexist, it appears that a large number of them are men, if the people we have met are anything to go by [maybe even greater than 9/10 ? if only it was possible to know the stats]. Methinks, some testosterone is involved here, such that some sole inventors wrongly believe the Patenting process can be managed as some extended form of DIY; If I can invent it then, I'm probably clever enough [which may indeed be the case], how difficult can it possibly be, this Patenting business...[Woe to you, you couldn't be further away from the truth]
(3) Raw hate. Some of them just plainly hate "legals". Yes. The sins of a few keep on staining the genuine efforts of the rest. I met one chap recently who is suspicious of anything legal. This guy's first words were "I have many advisers, but I don't trust any one of them." I thought it was a line from some motion picture.

(4) Disappointment by previous agents. We've had a couple who have had bad experiences by their representatives in the past, only to decide to go it alone, not knowing they were infact walking into a minefield! If only the association of the profession of Patent Attorneys and Solicitors can be separated, for good.

Mancunian said...

{p2}

So, again and again, the bitter cycle continues and they make the same old mistake. Solely file the thing. Screw it up massively, and when the UK IPO or EPO, etc raises a red flag / shouts Nein!, protest! And when none of the protests are heeded any longer, panic then run off to a professional representative after having thrown a couple of hundred pounds down the drain.
The representative then has to try and sort it out, and understandably will put a premium to rectify the mistakes, as fixing a badly drafted patent (especially before the EPO) can be a hefty affair. And if some claims were submitted at filing, it further puts the representative in a tricky position to try and change them into a something "meaty", again raising the overall cost.
The advice that must be emphasized is that while some "legals" may be questionable, most agents are genuinely trying to help so do go to an agent as soon as you think you have an invention as it could mean getting something or nothing. If the invention is that important to you then you should be prepared to find the funds for it somehow. If you can't then maybe keep it as a Trade secret for now, put money aside over a couple of months for it, ask friends and family to assist you in return for a stake, offer to give a stake to an investor, do anything but drafting and filing solely.

Anonymous said...

I think the IPKat surmises correctly.

I would also concur with Anonymous 12.55 - if inventors can afford a professionally drafted application but run out of funds to pay for prosecution, in my experience they take that as a sign that the invention was not saleable and give up all together. Some have taken over prosecution themselves, but I have not seen the results.

Peter Smith said...

The UKIPO recently published a Freedom of Information request on its website here, which quoted a figure of 28% for unrepresented UK patent applicants in 2009/10.

Filemot said...

You can come on over to the SOLO blog for some more comments.

Anonymous said...

True the Patent Office/IPO examiners can be very "helpful" and I have seen some of the results. They suggest a claim which they will allow and it is accepted. The applicant/inventor is delighted he/she has been granted a patent. However the scope of the allowed claim is so narrow as to be substantially worthless. On the plus side some financial backers if shown a granted patent certificate will put their hands in their pockets!

Dr Mark Summerfield said...

My own feeling is that a mid- or top-tier firm would have little interest in offering a 'stand-alone' drafting service. The core business of such firms is based upon developing long-term relationships with quality clients. In this context, the only viable business case for a stand-alone drafting service is as a loss (or lesser-profit) leader in the hope that an ongoing relationship may evolve with such a client. And, as other comments here suggest, that business case simply does not exist.

It is also not in anyone's interests (including those of IP owners) to have reputable and experienced attorneys and agents competing primarily on price, rather than other factors such as expertise, quality of service, or commercial focus. Market research across most professional service industries repeatedly confirms that quality clients are looking for quality service providers who deliver relevant advice and good value-for-money. If the value is high, this certainly does not mean the cheapest price! And if we start a price war, then the quality and value of what we produce will inevitably suffer.

On the other hand, it is not uncommon (in my experience) for a financially-limited inventor to engage the services of a lower-cost small firm, or sole practitioner, for the initial drafting, and later on to engage a larger firm once they appreciate the complexity of the global patent system, and the benefits of working with practitioners who have far broader (collective) experience and adequate support systems in place.

So I would say that this type of service effectively does exist, albeit via different practitioners rather than different service levels within individual firms.

Anonymous said...

In the good ole US, it is rather difficult for an attorney to cease representing a client, especially where there are outstanding office actions (even if there are outstanding legal bills).

I don't think the Office of Ethics & Discipline (and the multitude of state bar ethics committees) would approve of the "I'll draft it, but the rest is up to you" approach.

Anonymous said...

@anonymous 4:55pm: if a financial backer puts their hand in their pockets then clearly the patent is not worthless. Patents are a commercial tool and using them as leverage to secure investment is a frequent, and legitimate, use.

MaxDrei said...

Did any inventor who wrote and filed his own patent application ever make any money out of it? One can cite individuals (Dyson, Haberman, Mr WORKMATE) who were successful but one supposes their stuff was all professionally drafted, from the outset. Has there EVER been an instance of somebody succeeding, with lay-drafted patent applications?

Now I will go and have a look at SOLO IP.

Anonymous said...

Having had much, much more than my fair share of this kind of client in a previous job, and spent many a sleepless night thanks to them, I can say than in 99% of the cases, if the inventor can't get enough funding for professional drafting and prosecution, then the invention is worthless anyway. (And I've even been surprised at the number of useless or even downright fraudulent "inventions" which do manage to find some investors...there's indeed a sucker born every day).
Moreover, in the wider scheme of things, the cost of professionally filing and prosecuting a patent application, although exhorbitant for most individuals, is not much compared with that of launching production and sales of a new product. Therefore, my basic advice to such clients: either obtain the means to your ambitions, or adapt your ambitions to your means...

Brian said...

Most commentors appear to assume that applications drafted by individual applicants are terrible whilst those drafted by professionals are excellent. However, having taken over many cases from other firms it is apparent that even when professional assistance is sought, the resulting applications can frequently not be up to the job. Often it is clear that drafts have been prepared by trainees - often without any commercial thought of what the client does or what they might be doing in the future.

Many applicants can draft a very good skeleton patent and with the assistance of an attorney these skeletons can very easily be brought into a format fit for purpose but without the usual hefty price tag of the private practices. The main area where individual applicants need help is with the claims and laying out sufficient basis for such claims and fallbacks in the main text.

Anonymous said...

Brian, I think that most commenters are indeed aware of the difference between professionally drafted applications and the applications drafted by some professionals...

Thing is, even when the professional acts like you suggest to keep costs down, the final price tag is often found to be hefty enough by many individual clients. Those who tend to eschew professional help typically balk already at three-figure bills, and yet often want a "worldwide patent".

Anonymous said...

28% unrepresented! Good God what a waste!

So you have the UK IPO putting resources into supporting what are nearly always totally useless patent applications. The invention is also likely to be commercially useless in the hands of these inventors. You have to question the investability of anyone who is daft enough to try and get protection this way. I never invest with self-filers.


This is the socialist Nanny State gone mad. Backlogs, resource problems, real businesses crying out for support and quality services.

What do the Brits do? Bend over backwards to help losers. You have lost the plot. Get a grip. You aint going to find an economic powerhouse from that group.

Anonymous said...

Anon at 10:34 on 7th Jan: you hit the nail on the head when you compare the cost of patent representation to the cost of developing a product. Very few people will be able to commercialise a product, or start any kind of successful business, if they don't have a reasonable amount of money to start with or a wealthy friend/relative. The problem is the people who through ideological wishful thinking suggest that "entrepreneurship" is the magical remedy for the poor and long-term unemployed.

שרון said...

I'd expected that at least one of the commentators would raise this subject but surprisingly it seems to have evade everyone:

The most common fear that I've encountered expressed by individuals pursuing for patent was that the agent would steal their idea or leak it to a competitor or something in that spirit. Of course some of them were also trying to cheap in as well but I can't really blame them for thinking "why should I pay some guy thousands of dollars for ripping me off?"

This famous "agency problem" or "principal-agent problem" has been the focus of counless economic and political studies and it seems that it cannot be resolved prefectly: http://en.wikipedia.org/wiki/Principal-agent_problem

Despite all legal fiduciary duties etc the client - especially one with limited resources who might not be able to afford "private enforcement" - can never be certain that he is in good hands and not taken advantage of.

Anonymous said...

In response to that last comment - I have only anecdotal evidence to go off, but I don't think I have ever come across that problem. I'm an examiner at the IPO (but these are only my personal opinions etc etc) and when I have suggested to private applicants that they should use an agent, the only objection I normally get is the cost. I've seen one case recently where an applicant thought afterwards (probably incorrectly) that he had been ripped off by his agent, but applicants don't, in my experience, go in expecting this sort of problem.

While I'm here, to go back to the original post, Jeremy suggested that "the amount of assistance which patent offices can give to unrepresented applicants, both before and during the application process, is restricted by one or both of two factors -- legal criteria as to their powers and limited resources". This is close but not quite correct. On the one hand there is no legal reason why we can't suggest a form of claim as long as we make it clear it is only a suggestion. And in terms of resources it would normally save us a lot of effort if we could just write something instead of trying to get the applicant to produce something allowable. (Just as we encourage Formalities staff to get the drawings to meet the rules rather than asking the applicant for a "formal" set.) The problems are similar to this but not quite the same. One is that we feel it is wrong for the Office to write claims because our job is to check them - it shouldn't be the case that the applicant files a description and we decide what monopoly they get. Another is that we don't have the expertise. While we have seen umpteen claims, and know what they are there for and what rules they have to obey, we nevertheless don't practice the skills of writing them. (Though it is tempting as we normally know far more about claims than the applicant does.) Also we don't discuss the applicant's business plans with them so don't know what they really need. And also, as has been hinted elsewhere, it is difficult to be objective about a claim you've written yourself.

There has however been one recent change in this respect. Until recently we had no real feel for how claims actually worked, or not, in the real world. While we would try to make both applicants' and agents' claims "fit for purpose" we generally didn't know if we were suceeding. The advent of the Opinions service has changed all that, as we are now having to deal with claims that we have granted (either written by private applicants or examiners) and we are starting to find problems with this.

PS - why is the word to be validated always blank the first time I try to post a comment?

Anonymous said...

In case my previous comment didn't make it (you can delete this one if it did)

In response to that last comment - I have only anecdotal evidence to go off, but I don't think I have ever come across that problem. I'm an examiner at the IPO (but these are only my personal opinions etc etc) and when I have suggested to private applicants that they should use an agent, the only objection I normally get is the cost. I've seen one case recently where an applicant thought afterwards (probably incorrectly) he had been ripped off by his agent, but applicants don't, in my experience, go in expecting this sort of problem.

While I'm here, to go back to the original post, Jeremy suggested that "the amount of assistance which patent offices can give to unrepresented applicants, both before and during the application process, is restricted by one or both of two factors -- legal criteria as to their powers and limited resources". This is close but not quite correct. On the one hand there is no legal reason why we can't suggest a form of claim as long as we make it clear it is only a suggestion. And in terms of resources it would normally save us a lot of effort if we could just write something instead of trying to get the applicant to produce something allowable. (Just as we encourage Formalities staff to get the drawings to meet the rules rather than asking the applicant for a "formal" set.) The problems are similar to this but not quite the same. One is that we feel it is wrong for the Office to write claims because our job is to check them - it shouldn't be the case that the applicant files a description and we decide what
monopoly they get. Another is that we don't have the expertise. While we have seen umpteen claims, and know what they are there for and what rules they have to obey, we nevertheless don't practice the skills of writing them. (Though it is tempting as we normally know far more about claims than the applicant.) Also we don't discuss the applicant's business plans with them so don't know what they really need. And also, as has been hinted elsewhere, it is difficult to be objective about a claim you've written yourself.

There has however been one recent change in this respect. Until recently we had no real feel for how claims actually worked, or not, in the real world. While we would try to make both applicants' and agents' claims "fit for purpose" we generally didn't know if we were suceeding. The advent of the Opinions service had changed all that, as we are now having to deal with claims that we have granted (either written by private applicants or examiners) and we are starting to find problems with this.

PS - why is the word to be validated always blank the first time I try to post a comment?

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