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Unrepresented patent applicants: a little thought

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Babes in the Wood? Or can unrepresented patent applicants manage alone?

Last Friday, in "Rule 141 and UK IPO spin" (posted on the IPKat here), a sensitive topic that was raised was the issue of professional representation for patent applicants. It is clear from Article 133 of the European Patent Convention that patent applicants may file applications on their on behalf; even legal and natural persons not having their residence or principal place of business in a Convention state -- who need representation for other purposes such as oppositions -- can file their own applications.  Applicants can file their own patent applications in the United States too, though the US Patent and Trademark Office (USPTO) advises independent inventors that

"The patent application process is complex. The USPTO cannot assist in the preparation of patent application papers. If you are ready to apply for a patent, we strongly advise you contact a registered patent attorney or agent"

and, since the US makes no distinction between domestic and foreign applicants, the same applies for them too.

This member of the IPKat is intrigued by the phenomenon of the unrepresented applicant.  He has no facts and figures at hand, but he surmises as follows:

(i) applicants who wish to apply without representation do so either because they believe that they are competent to do so and therefore need no representation, or because they would like it but cannot afford it (or assume that they can't);

(ii) at the point at which they take the decision to process their own application, certainly if they are doing so for the first time, they may not have understood clearly the difference between a professional representative's role on the one hand in preparing the application, in terms of framing the description in patent-office-friendly terms, drafting the claims and checking for compliance with formalities, and on the other hand in dealing with responses and communications between himself and the examining office;

(iii) the amount of assistance which patent offices can give to unrepresented applicants, both before and during the application process, is restricted by one or both of two factors -- legal criteria as to their powers and limited resources;

(iv) the cost to the examining office, in terms of effort and manpower, in processing an application in respect of an invention for which no professional assistance has been available at the preparation stage is likely to be greater, and the likelihood of grant is lower, than in respect of an invention where professional assistance has been provided.  There is therefore good reason to encourage an applicant to obtain professional assistance at the preparation stage, even if he does not use them later.

If all of this is correct -- and the IPKat hastens to say that this is based on his own surmise and impressions gleaned from sporadic anecdotal evidence and not from experience -- it suggests that professional representatives should be making every effort to market their drafting and preparation skills as a stand-alone service that can be purchased for less than the cost of an ongoing relationship with a representative in a situation where, however well the latter's duties are discharged, it is difficult or impossible for the applicant to budget for it.  A brief, random and possibly unrepresentative visit to a few patent attorney websites suggests that this is not being offered, at least, via the website, and there may be important professional or other reasons why it can't be done.

This Kat would love to hear from patent attorneys, in the UK and beyond, as to what they feel about all of this -- and he apologises if he has wasted readers' time if he is under a misapprehension as to the current position.

Full post as published by IPKat on January 06, 2011 (boomark / email).