I Don’t Do My Own Brain Surgery Either
Posted by: Bruce in Obviousness, Patent Prosecution, Patent Quality, tags: Patent Quality, pro se filingTechnical Editor Paul Rako of EDN (formerly Electronics Design News) recently posted a blog entitled File Your Own Patents. It’s really more of a meta-post since it is only announcing an upcoming article. It starts:
My IC designer buddy Don Sauer already has something like 40 patents, mostly when he worked at National Semiconductor. Now he is working up an article for me on how to do it cheap.
Mr. Sauer’s how-to solution, apparently, is to skip the patent attorney and file it yourself. To that I say, well, hogwash. Actually, what I said in a comment to the blog was:
I will grant you that a reasonably intelligent person can certainly file a patent application pro se; anyone who can read with comprehension can do most knowledge work. However, the suggestion that one should file pro se begs two questions; are you ready (and interested enough) to invest the time to become knowledgeable in patent law and procedure to do it as well as an attorney or patent agent AND how are you accounting for the opportunity cost of the time spent (both the learning time, which can be amortized over many patents but which is an on-going investment as the law/rules change, and the time prosecuting the patent).
If the answer to the first question is NO, then we all know about GIGO. And if the answer to the second question is “Duh” or “I do it on my own time” then I suggest you haven’t thought this through.
After being a senior R&D engineer for 25 years I decided I was interested enough in IP and now have my own company acting as a part-time, outsourced Director of Intellectual Property. Most of my clients would prefer to spend their time (and their subordinates’ time) working on the invention itself and to hire someone - myself, a patent agent, or, heaven forbid, an attorney - to translate the engineering into a patent application. I would suggest this route is more cost effective for a company than to divert engineering talent to a task for which they are not trained.
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August 10th, 2008 at 3:43 pm
My personal experience supports your reservations completely. I think most people who would fall for the “file it yourself” approach, do so because they are just ignorant of the complexity of the process. They have a naive simplistic concept of HOW they think the patent office should work. Being clever people, they think they can manage it. Wait till they get their first “Office Action” that says, ALL CLAIMS REJECTED. I was on the phone to my attorney in two minutes after he sent me the notice. “What’s going on here? Didn’t we rigorously think the patent through?” “Sure.” Was his reply. “But what the office action says isn’t what it appears to say. All this means is that the examiner is way behind in his work load. The law only gives him so many days to deal with your patent. Since he knows he won’t get to it in time, and that will get him penalized, he just rejected it. You’ll see. We’ll go back in and he’ll completely flip around.”
Two months later, we get our second set of paper work. All 21 claims approved. Without experience, there is no way for a novice to understand this.