To patent or not to patent, that is the question. An innovation comes along and you’re left with this question. Ask (n) colleagues and you’ll get (n+1) opinions.  Ask a patent attorney and they will thrust a disclosure form in your face and firmly request documentation for an application.  When you’re a hammer, everything looks like a nail. You can’t blame attorneys for prosecuting things- it’s what they do.

A comment on attorneys.  Working with attorneys can be a very emotional experience.  The fact that you need one says that you are probably involved in something that is too big for you to handle alone. In the case of patent work, you don’t have to be an attorney to file for and receive a patent. But in order to take the USPTO to an appeals court, you do have to be a member of the patent bar.

Back to the emotional bit.  It is a thrill to see a good attorney working their heart out on your behalf.  Watching them navigate the procedures during the discovery phase and on into litigation is an amazing thing to see. To read the transcripts of your opponents deposition is to understand what power is about.  Conversely, watching the other sides attorney lunging for your throat (metaphorically, at least) with a procedural garrote, trying to lop off your reputation down to the bloody stump is terrifying indeed.  The legal profession is a brutal and bloody business when it is aimed at you.  But when they are working for you, they are jolly good chaps.

It has been my experience that the decision to patent is fundamentally a business decision.  Once you pull the trigger on this, you set yourself up for a lengthy series of legal expenses. And, you leave an indelible and credible paper trail in the public domain.  In some cases the expense and the sturm und drang is well worth the trouble.  If you are a large company, you might have actual attorneys on staff to do the deed.  If you are less than a large company, you will have to retain a law firm to do the prosecution.

When it comes to filing for a patent, is not uncommon for the client to heap everything onto the attorneys desk with a yellow sticky note saying “call me when it’s over”.  This certainly one way to do it.  But to do it this way is to neglect whay we even have attorneys at all.  An attorney is a hired gun.  They are your mechanical arm in the bewildering world of law. The attorney is working on the client’s behalf and the client really should be in the lead, backed up by an attorney, not the reverse. Easy to say but hard to do in practice.

In principle, the inventor and assignee should write the patent application, or at least the first draft.  To do this forces the inventor/assignee to think through what the invention really means for them.  After all, no one should know the art better than the inventor. And the inventor has some obligation to the assignee to assure that the art is fully captured in the appln.  

The attorney is best used in wordsmithing the application to it’s final form. The attorney can anticipate the consequences of the language that goes into the appln.  This is a huge contribution and is one of the main reasons you pay patent attorneys the big dough.  Having an attorney slog through the basics of the art, patch together the concepts from notebook pages, and synthesize the claims is an expensive indulgence the assignee probably can’t afford.  In short, the better researched and the tighter the copy you give the attorney, the more resources you”ll have for your  next patent appln.