My opinion: The person on TV says: “don’t try this at home.” Sorry, but it takes 3-5 years after law school for me to “take off the training wheels” of a new patent attorney. There are so many subtle pitfalls that even experienced patent attorneys can miss as the laws rapidly evolve. Also, do you want the crown jewels of your company to be protected by someone who doesn’t know how to do it? It is clear during diligence when someone takes that shortcut, and it can kill the deal…or at least have a significantly deflating effect on enterprise valuation.
A patent is not primarily a technical document. In fact, it is not primarily a legal document. Instead, it is a business document—a tool to protect and grow your company.
The typical patent process in the US begins with preparation of a carefully crafted, customized patent application focused on the innovation and, hopefully, how it is going to be applied to your business. Although optional, you preferably conduct a pre-filing search to see if your invention is novel and non-obvious, and if not, how to modify your filing strategy to ensure value in the ultimate patent. Then, after filing, the examiner conducts a search and rejects the patent application in a document called an “office action” (yes-that happens the vast majority of the time, so stay calm!).
You and your patent attorney then figure out the strength of your case in view of the examiner’s rejections, and the prior art you know about, as well as its commercial value at this stage. At that point, you prepare a carefully crafted rebuttal, known as a “response” or “amendment,” perhaps amending the patent application (i.e., the claims usually) and/or making legal arguments supporting patentability. You also may call the examiner to discuss your case, which I highly recommend. This back and forth may repeat a couple more times until you receive a “notice of allowance,” indicating that you have an allowed patent application that is ready to become an in-force patent.
Steven Saunders is an Intellectual Property Attorney at the Boston-based law firm, Nutter. Steven can be reached at ssaunders@nutter.com.
For more information about Steven, See Steven’s Martin Trust Center Biography at: https://entrepreneurship.mit.edu/profile/steven-saunders/
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