What should I present to a patent attorney/agent?

[ralphael]

This is the first time I want to get a patent.
I just want to know how much of the patent the write and how much/what they expect me to provide them.

I have a rough sketch of a utility patent in the sense that I have a Claim section, History and Detailed Information section and have drawn figures and since I've studied law myself tried to keep the text as much as a legal document as possible.
is this enough to provide to the agent/attorney, or do I need to do more myself before presenting it to the attorney/agent?

[Robert K S]

In general, the more material you can provide your practitioner, and the better you can explain why it is distinguished over, and preferably an improvement over, the prior art, the stronger the patent you will end up with.

Attorneys are rarely subject-matter experts in the narrow field of the invention and often do not know the technological landscape as well as the inventor does.  Left to their own devices and with scant disclosure to work from, attorneys may produce drawings and descriptions the inadequacies of which do not become apparent until prosecution, by which time it is too late to cure the deficiencies.  Good attorneys recognize these deficiencies during the drafting process and try to squeeze more detail and explanation out of the inventor prior to filing, but everyone is saved time if this work is done prior to the start of the practitioner's work.

An inventor presenting claims to an attorney is fine, but the inventor shouldn't be upset if the attorney redrafts the claims or throws them out and starts over.  The legal end of things is the attorney's domain, and if properly informed about the prior art and the invention, the attorney is going to take it upon himself or herself to draft claims that secure as broad protection as the inventor is entitled to.

Likewise, an inventor should not be disappointed if a practitioner whittles a history/background section down to almost nothing.  The landscape of the prior art is important for drafting disclosure and claims that get over the prior art, but a good practitioner knows that it is foolhardy to waste ink in the written description making a lot of admissions about the state of the prior art.

What the attorney is really going to appreciate are detailed drawings, preferably done PTO standards and fully computer-editable, and disclosure description that is completely clear and has already had all the vagueness/ambiguity bugs worked out.  The description should include definitions--to varying levels of specificity if necessary--and exhaustive examples of contemplated variations.  Inventors who have not been through the patent prosecution process before, and particularly those from academia, can be prone to doing a lot of hand-waving, eliding over crucial detail that they expect a person skilled in the art would understand.  The applicant won't want to be in a position of trying to prove such knowledge or universal understanding during prosecution, so it's preferable if everything that can be clarified in the written description is clarified, by the inventor, prior to the practitioner taking things over to draft the application.

[ralphael]

Thank you for all the valuable information.

Attorneys are rarely subject-matter experts in the narrow field of the invention and often do not know the technological landscape as well as the inventor does.  Left to their own devices and with scant disclosure to work from, attorneys may produce drawings and descriptions the inadequacies of which do not become apparent until prosecution, by which time it is too late to cure the deficiencies.  Good attorneys recognize these deficiencies during the drafting process and try to squeeze more detail and explanation out of the inventor prior to filing, but everyone is saved time if this work is done prior to the start of the practitioner's work.

Can you please tell me if by attorneys you are also referring to agents? if not please explain why what you explain applies to attorneys only.

And this may be a silly question but I am new to this, do the practicioners make drawings themselves if not provided by the inventor? I assumed this was a job for someone else.

An inventor presenting claims to an attorney is fine, but the inventor shouldn't be upset if the attorney redrafts the claims or throws them out and starts over.  The legal end of things is the attorney's domain, and if properly informed about the prior art and the invention, the attorney is going to take it upon himself or herself to draft claims that secure as broad protection as the inventor is entitled to.

Likewise, an inventor should not be disappointed if a practitioner whittles a history/background section down to almost nothing.  The landscape of the prior art is important for drafting disclosure and claims that get over the prior art, but a good practitioner knows that it is foolhardy to waste ink in the written description making a lot of admissions about the state of the prior art.

No problem by me. As long as it's a patent in a grantable form there's no ego on my side, the reason I want to get my invention patented is I just don't want another patent troll patenting the same thing sooner than me then refusing to let me work on the same invention and ultimately forcing me to drop all my work. Happened before and I was forced to think of a different solution to achieve the same result.

But if I disagree with the practicioner whether a part in the claim or history section should be omitted not from emotional or pride related reasons but objectively believing it is needed and I can provide my reasoning, should I present my concerns to him/her, or is it in this field concidered rude and unrespectful and questioning their professionalism?

Inventors who have not been through the patent prosecution process before, and particularly those from academia, can be prone to doing a lot of hand-waving, eliding over crucial detail that they expect a person skilled in the art would understand.  The applicant won't want to be in a position of trying to prove such knowledge or universal understanding during prosecution, so it's preferable if everything that can be clarified in the written description is clarified, by the inventor, prior to the practitioner taking things over to draft the application.

I take from this should risk providing too much, possibly unnecessary info to the practicioner as to not risk providing not enough, rather than trying not to burden the practicioner with very long paragraphs at the risk of omitting some details, right?

[Robert K S]

Can you please tell me if by attorneys you are also referring to agents?

I apologize.  I should have used the broader term "patent practitioners," which encompasses both patent attorneys and patent agents.  As you may be aware, the only difference between a patent attorney and a patent agent is that the patent attorney has also passed a state bar exam and been sworn in to the bar of at least one state, which is not a credential necessary to perform competent representation before the USPTO.  (And when I say "state", I also include non-state jurisdictions like Washington, D.C., or Puerto Rico.)

And this may be a silly question but I am new to this, do the practicioners make drawings themselves if not provided by the inventor? I assumed this was a job for someone else.

Some do, sometimes.  Other times, work is farmed out to a professional draftsperson.  It depends on the economics, the abilities of the practitioner, and other factors.

But if I disagree with the practicioner whether a part in the claim or history section should be omitted not from emotional or pride related reasons but objectively believing it is needed and I can provide my reasoning, should I present my concerns to him/her

You should present your concerns to the practitioner.  The practitioner may counsel against any particular course of action you might want to take, but ultimately, you are the boss, and have control over what the practitioner does.  From the practitioner's perspective, the practitioner cannot prevent the applicant from screwing up the application, but the practitioner may want to make sure the source of contentious decisions is well-documented (e.g., by e-mail or letter) so that fault for an inadvisable decision is clear and the practitioner cannot later be accused of malpractice.

I take from this should risk providing too much, possibly unnecessary info to the practicioner as to not risk providing not enough, rather than trying not to burden the practicioner with very long paragraphs at the risk of omitting some details, right?

Yes, err on the side of overdisclosure, but as I said before, the practitioner may suggest culling or re-arranging certain material so as to avoid making unnecessary and potentially damaging admissions about the state of the prior art.  The thing about admission-statements is they are binding even if they are not objectively true.  So if the patent applicant makes an errant statement about the prior art that the applicant later regrets, there are no takesy-backsies.

[Euro-Pat-Att]

From your posts you seem obsessed with not being cheated. This is fine and understandable, but if you select a respectable patent practioner the chances of this happening are very small.

Find one that you trust, and then stick with his/her advice. Patent practitioners are not out to screw you.

Personally, I don't particularly care how the client explains his invention to me. I prefer a face to face meeting in which I can probe the client (which is not implied criticism of the invention, just a way of better understanding the essence), but a written disclosure and/or a phone call will do if needed.

Trust your patent practitioner: They know what they are doing. Spend time discussing with them upfront, that is time well spent. And answer their questions, however irrelevant they may appear to you. If you have to send 5 or 6 versions of a draft patent application back and forth, there is something wrong, most likely: you are stubborn and/or you didn't explain your invention sufficiently to begin with.

And as for drawings: Only 5-10% of the total cost will go to drawings. Don't stress about them. I prefer to work with a few selected experienced draftspersons, who will get it 99% right the first time round, with minimal instructions. I have also had clients prepare drawings, but in reality, whatever is saved by not employing an additional draftsperson, is lost again in time spent (my time) giving instructions to a well intentioned but non-experienced draftsperson. What will help is drawings in some generally recognized vector format like .dxf, so that my preferred draftspersons can start from that, instead of start from 0, but this is certainly not necessary.

[ralphael]

Not trying to come along as not wanting to be cheated, if anything I'm really trying to not come along as an idiot who doesn't know what he needs when he will contact a patent agent. That's all.

Okay, probably the final question before I'll get on with it.
Does the agent only prepare the patent application or can he/she file for a grant on my behalf? I assume for the latter if that is the case we will need a signed agreement which may be problematic if I'm not from US (send the agreement to the agent via Fedex?)

[Robert K S]

If you can scan in a power of attorney form and any other paperwork such as the inventorship declaration and/or assignment papers (all of which the practitioner will provide), that will be sufficient for the practitioner to file the application for you.  The practitioner may ask you to pay the filing fee and possibly a legal retainer fee in advance of doing work and filing the application.  The practitioner may ask you to mail the ink-signature forms, but that is not something that need be rush-mailed.

[ExaminerBob]

a good practitioner knows that it is foolhardy to waste ink in the written description making a lot of admissions about the state of the prior art.

I don't blame practicioners for zealously procuring patents for their clients, but I really wish applicant's would reflect on the implications of common advice like "don't admit what's prior art" and "let's claim very broadly and see what the examiner digs up". I wonder how many applicants would be comfortable advising their children on how to optimize the circumstances that a cashier rings up their fresh salmon as chicken.

[ralphael]

I really wish applicant's would reflect on the implications of common advice like "don't admit what's prior art" and "let's claim very broadly and see what the examiner digs up". I wonder how many applicants would be comfortable advising their children on how to optimize the circumstances that a cashier rings up their fresh salmon as chicken.

So wait are you saying that's a good advice or bad advice?

[Robert K S]

"don't admit what's prior art"

I think that statement is shades different from "disclose the prior art you know about but let it speak for itself", which is the only way to avoid misrepresenting the prior art while fulfilling the duty of disclosure.

When writing about known prior art, it's very easy to start reading between lines and interpolating disclosure not actually made in the prior art.  Such interpolations run the risk of being inaccurate, reading into the prior art ideas not actually contemplated by the prior inventors.  Why do this?  It's both needlessly damaging and has the potential for the appearance of dishonesty.

Also, serial inventors who file on improvements over "prior" inventions that are also their own might think of the old stuff as "prior art" when it does not actually meet the legal definition of prior art, so that's another reason to be very cautious about admitting "prior art" when doing so may actually be malpractice.

[Toot Aps Esroh]

This is an interesting thread.  To Rafe, the OP, I'd say you plan to provide a lot more than the average applicant does, and Kudos to you.

Hopefully you find good patent counsel. 

The best thing you can do is get personal referrals like EuroPat mentions above. 

Another thing you can do is look on the USPTO databases for patents that are similar to the subject matter you seek to patent (basic link below, look first for keywords of interest), then once you start hitting similar subjects, start searching by classification codes, then see which law firms and/or individual practitioners are obtaining those patents that you think are well-done (for any given patent, scroll down to "Attorney or Agent"). 

For individual attorneys/agents, their name will be directly named and you can judge for yourself if you like their patent applications as drafted, and or as prosecuted (lookup prosecution arguments at second link below, just insert app number or publication number once past the recaptcha thingie).  For larger firms where only the firm name is listed as legal rep, you can still use that second link to ferret out which agent or attorney did the prosecution of the application.

http://patft.uspto.gov/netahtml/PTO/search-bool.html

https://portal.uspto.gov/pair/PublicPair

Anyway, I'd say you're heads-and-tails way above the average solo inventor based on your questions here (saw your other threads, too).



Edit to mention that many firms, especially larger ones, may tell you that they will have a conflict representing you because they put wide fences around subject matter anywhere close to their big clients.  Smaller firms may look at conflicts more realistically.

[ralphael]

Thank you.

Are there typical durations for these kinds of jobs?
By this I mean drafting and filing an utility patents that describes a method of achieving a result in great detail and not so much detail is needed in describing the apparatus which uses the method.

[Robert K S]

The typical patent practitioner has a backlog of work and will prioritize the drafting of your application amongst other work depending on due dates, bar dates, etc.  If you have no bar dates and the likelihood of someone else filing on the same invention in the near future is small, one to three months may be a typical wait time to have your application filed.  If your bar date is coming up in three days, and the practitioner is willing to devote all his/her time to your case, it can probably get filed in time, but it may not be up to the practitioner's preferred standards of quality.  If the filing is not an emergency, but you insist on urgency and are willing to pay for expedited work, one to two weeks seems like a reasonable wait time.

[ralphael]

You mean the wait time to have my application filed to the patent office? If so those numbers sound great.

[Robert K S]

Average practitioner time spent drafting an application is probably between 20 and 100 hours, but that can vary greatly depending on complexity of the invention, how crowded the art is, how many claims need to be supported, how many drawings are needed to illustrate the claims and what the complexity of those drawings is, and how prepared the inventor comes with a clear and complete invention disclosure.  I've had 10-hour applications and 500-hour applications.  If the inventor provides nothing more than a general concept and the practitioner finds getting further detail from the inventor to be comparable to dental extraction, the process becomes much harder, because the practitioner is left to do research legwork that the inventor should be providing.  Each time the inventor re-invents the invention during the drafting process, the difficulty of the job can just about double.  And then there are the fun cases where, in the process of talking out the details of the invention, the inventor or practitioner realizes that the invention does not actually work as envisioned.