Why ask a patent attorney to write and file a patent application?

Introduction

According to the (European) patent law, “A European patent application may be filed by any natural or legal person, or anybody equivalent to a legal person by virtue of the law governing it. [Art. 58 EPC]”. What this ultimately means is that any person is allowed to draft and file their own patent application for their valuable idea or innovative product. However, before grabbing pen and paper to draft your own patent application, there seems to be only one ‘pro’ we can identify with this approach yet several ‘cons’;

Pro

A clear advantage of the applicant drafting its own patent application is a lower budget required for drafting the patent application towards obtaining patent protection on the valuable product concept or on the innovative product.

Cons

While drafting a patent application, it is very important to fulfill all the patent application requirements which are set by the patent law of each respective jurisdiction or country where the patent application is (to be) pursued.

A first important requirement is to ensure that the invention is well defined and delimited in at least one claim as this claim in the patent application defines the scope of protection and clearly defines the invention and, therefore, the claim is not open to interpretation.

Accordingly, the (European) patent law (in A.84 EPC) states “The claims shall define the matter for which protection is sought.”

It is of the utmost importance that the applicant’s valuable idea or an innovative product is well-defined in a claim so that the scope of the invention which is defined by a claim:

• is sufficiently broad , having basis for such broad scope of protection, where a broader scope of protection increases the commercial value of such patented claim; and
• is defined in such a manner (solely specifying all essential features needed to define the invention) so that the claim at least is difficult to circumvent by competition using alternative embodiments of such an innovative product.

Furthermore, a second very important requirement, as stated in the (European) patent law (in A.84 EPC),   is that “claims shall be clear and concise” meaning that the invention is clearly defined so that the matter for which protection is sought is well defined. Therefore, the meaning of all terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone.

A claim, additionally as a third requirement, must in accordance with the patent law “be supported by the description” which means that there must be a basis in the description for the subject-matter of such claim and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and also the contribution to the art (see T 409/91).

Still, a fourth requirement of the (European) patent law (Art. 83 EPC) is that the invention shall be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

A detailed description of at least one way of carrying out the invention must be given in a manner that the description must disclose any feature essential for carrying out the invention in sufficient detail to render it apparent to the skilled person as to how to put the invention into practice. A single example may suffice, but where the claims cover a broad field, the application is not usually regarded as satisfying the requirements unless the description gives a number of examples or describes alternative embodiments or variations extending over the area protected by the claims.

Know that the consequence of lack of sufficiency of disclosure of such invention, is that such a deficiency cannot be cured subsequently by adding further examples or features without offending against Art. 123(2) EPC, which Article requires that amendments may not result in the introduction of subject-matter which extends beyond the content of the application as originally filed.

Therefore, in such circumstances, the application must normally be refused leaving no patent protection for the applicant’s valuable idea or on the innovative product. Even if a patent has been granted, a non-sufficient disclosure is still a ground for revoking the patent.

For all these reasons and in order to obtain a well-drafted patent application, it is highly advisable to optimally combine the legal skills of a patent attorney at GEVERS with the technical expert knowledge of the inventor to maximize the patent protection for the valuable invention concept or innovative product.

Moreover, a patent attorney is well placed to advise the applicant on the best patent protection strategy for protecting this valuable idea or innovative product

Summary

Although according to the (European) patent law, “A (European) patent application may be filed by any natural or legal person, or anybody equivalent to a legal person by virtue of the law governing it.” For obtaining protection for a valuable idea or innovative product, there are clear advantages and additional disadvantages to drafting your own patent application. Ultimately, a patent application which is not well drafted could result in subpar protection or even no patent protection at all for this idea or innovative product.

Finally, a well drafted patent application may give rise to a smoother patent prosecution stage for the granting of the patent versus a poorly drafted patent can lead to difficulties in patent prosecution resulting in a time-consuming process and greater expense.