Failure to seek the services of a registered patent professional

The Patent laws in the United States are clear that individuals have every right to draft and file patent applications for their inventions. However, this may not always be a good idea because a single word or passage written in the specification portion of the patent application can significantly limit the scope of the patented invention.

For example, let’s assume that King David invented the slingshot before slaying Goliath and shortly thereafter drafted and filed a patent application for his invention. Let’s also assume that in the patent application, King David described the slingshot as “consisting of a Y-shaped, single piece of wood with a rubber strip extending from tips of the angular extensions.” Let’s assume further that King David also described that his slingshot device functions when “a user pulls back the rubber strip with a small stone secured thereto, aims the stone towards a target, and once a target is identified, releases the stone and the strip such that the stone propels from the device towards the target.” King David’s description of the slingshot device in the patent application would yield an awfully narrow patented invention.

Because King David defined his invention too narrowly, he created an opportunity for others to devise alternative ways (work-arounds) to practice his invention. Designing work-arounds are commonly performed by competitors who seek to carry out another’s invention by developing a means to practice the invention without infringing the underlying patent.

In the present example, as one could imagine, a slingshot need not be limited to King David’s description. For example, a slingshot can be constructed from a variety of materials and configured in multiple ways so long as it enables a user to pull back an elastic material such that the user can propel an object there from.

To prevent another person from creating work-arounds, an invention should be broadly defined in a patent application such that multiple implementations of the invention are covered. As such, it is generally best for inventors to seek the services of a registered patent professional to draft their patent applications. However, inventors should first do their research to ensure that they find a competent patent professional.

Tips when searching for a competent patent professional

When inventors search for a competent patent professional, he or she should consider the following: 1) The patent professional’s technical area of specialty and degree of relevance to the invention; 2) The number of patent cases the professional has managed in the technical area of the invention; and 3) The extent of the professional’s legal knowledge – generally speaking, a registered patent attorney has both technical knowledge and legal training to competently manage patent applications.