Is hiring a professional attorney/prosecutor after the first evaluation a good idea?

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Right now I have no idea whom to hire, possible costs etc. I've been contacting a few firms I found online, also here, and the best I got was a polite reply saying they are no longer in business (worst: no reply).

So I've been considering to focus myself mostly on the description of the invention with possible claims in mind, and try to come up with claims to the best of my abilities then submit and start looking for professional help.

As far as I understand, claims can be changed, so as long as the description of the invention is sufficiently clear and novel, there should be sufficient space for a professional to find the right formulation later on?

Pa_

Posted 2021-02-21T20:02:56.193

Reputation: 115

1Sorry I was initially one of the no-replys, – George White – 2021-02-21T20:26:43.047

No worries, and thanks for politely declining. I can imagine that after doing this for quite a while, one gets tired of sweating for others :-) – Pa_ – 2021-02-21T21:21:23.103

1I was a patent agent as a second career for about 12 years after being an EE and an entrepreneur. Besides being 70 I was unhappy with the direction of the patent system in the U.S. The AIA, SCOTUS cases and the makeup of the CAFC court were all making it harder to get a patent and easier to get it torn up. And the responsibility of missing a deadline for a client in the complex world of international patent office filings was stressful. Not to mention that "or" means "and" sometime (or is it the other way around) and "at least one" might not cover the case of one. – George White – 2021-02-21T22:41:15.160

Answers

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I do not think you will save much money in the long run by waiting to involve a professional after you have filed your own document and waited a year or more to get an initial rejection.

There are many many ways to shoot yourself in the foot when writing a specification and a lot can happen in the world of innovation in that year +. It is possible to make a study of patent prosecution yourself but it is a deep and subtle field that is always changing its rules.

Not all practitioners are eager to take on individual inventors. You cut that down more by being an independent inventor who already drafted and filed an application, got a rejection and need someone to try to fix it from that point.

When I was practicing I belonged to the National Association of Patent Practitioners. It is composed of about 50/50 patent agents and patent attorneys most of whom are at small firms. You are more likely to find someone suitable from their list of members than going to the USPTO's list of all registered practitioners many of which work for huge firms.

Also, there are inventors clubs around the U.S. who might be able to help.

George White

Posted 2021-02-21T20:02:56.193

Reputation: 21 648

The main reason why i asked this is after i tried to figure out what interest would an attorney have to help me to the best of her or his abilities. The feeling is that, once hired, they would only care about getting the draft out, and probably have no incentive in getting me the strongest claims possible. On the contrary, they probably would be interested in getting an as likely to accept claim as possible, so getting me someting narrow and useless – Pa_ – 2021-02-23T09:39:22.470

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George White's answer is excellent and should be accepted. I'd just like to add a bit since I'm an in inventor rather than an attorney or agent. Writing a draft of an application is an excellent way to save some time and money when working with a patent attorney in that it facilitates efficient communication about the invention. However, don't expect the attorney or agent to actually use any of your own text. Most attorneys I've worked with start with the claims, and then carefully structure the specification to support those claims. A well written application can save a lot of money later in the patenting process. For this reason, I'd suspect few patent professionals would want to work on a case where they didn't have the ability to draft the application.

Eric S

Posted 2021-02-21T20:02:56.193

Reputation: 7 963