The Hazards of Applying for Patents by Yourself

By Steven Shape, IP Attorney

Technically, you don’t need a lawyer to prepare and file a provisional patent application.  However, you will miss out on having a trained professional help you avoid all the pitfalls that are typically made by an uniformed inventor.  An improperly prepared provisional patent application can be just as detrimental as no application at all. You must consider three major hazards:

1. Insufficient data - If you don’t describe your invention in sufficient detail including how to make and use it, you will not be able to support your claims and you will lose the benefits which may be provided by a properly drafted provisional application.  Specifically, you need to be sure you have included as many details as possible to ensure that there will be proper support for the claims you need to set forth in your non-provisional application.  This involves thinking broadly to anticipate what will be necessary to support your formal claims.  This is an important reason to engage a patent attorney to draft your provisional application.


2. Patent Profanity - There are particular statements that should never be used in a patent application.  For example, you do not want to say that your invention is limited to “only” one way of constructing or using your invention.  Such statements will limit what you can set forth and claim in the future, and particularly in your non-provisional application.  Talking with a patent attorney concerning phrases and words to watch out for can make a significant difference in the value of your intellectual property and how you can enforce and license it. 


3. Weakening the signaling value – An important reason to file a patent application is to provide comfort to investors and potential licensees and partners that you are serious about your technology and that your company and its management team are focused to drive the company forward to profitability.  A poorly drafted provisional patent application with no substance or detail will surely undermine your goals.  Investing in a patent application serves as a strong foundation for a robust patent portfolio and will serve to benefit you and your company.  Certainly such will be looked at as a much better business decision, over having a free provisional patent application that cannot support valuable patent claims. 

You will be tempted to save money and write the provisional patent application yourself.  But it is always worth getting at least some guidance from an attorney on these and other landmines before venturing down the do-it-yourself path.  Well-written provisional patent applications give you the opportunity to effectively manage and control the costs of the patent application process.  This strategic management will give you time to validate markets, gather data, raise funds, court partners and build your company without risking your intellectual property protection.  Get the proper advice  before you start.  This will save you and your partners the heartache of finding out that a poorly drafted provisional application prevented you from properly protecting your intellectual property.


Disclaimer: Please note that this article does not constitute legal advice, and  should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.