Tag Archives: provisional patent

Should an inventor take professional help to draft and file patent applications?

Why would inventors want to tackle the patenting process themselves, without taking professional help?

We have asked ourselves this question, and concluded that, some of below mentioned points might be some of the reasons, which might influence the inventors to proceed with the patenting process on their own, without availing professional help.
  • Financial constraints
  • The inventor might feel that, since he is the inventor, he is the best person to describe the invention, and hence professional help is not required
  • An inventor who has prior experience in preparing public disclosures, might feel that, preparing a patent specification is a similar task
  • The inventor might be under the impression that, filing for a patent is just an administrative process and can be done by filling up and submitting the forms

We then analyzed these points in detail, so that, through our analysis, inventors can take an informed decision.

Financial constraints 
Most inventors opt to tackle the patenting process themselves, without seeking professional help, due to financial constraints.
When inventors feel that, they have invented something unique, they wish to protect their invention through patents. However, financial constraints often stop them from availing the services of patent professionals. They begin to think of ways to tackle the patenting process themselves and start to search the internet for information. There is a lot of data on the internet, which guides the inventors as to how to tackle the patenting process.
The information on the internet may relate to the below listed subjects
  • Strategies to filing patents when on a very tight budget
  • Drafting patent applications
  • Filing patent applications
Regarding advice on the internet about strategies on filing and drafting of patent applications
To save money, usually the advice provided on the internet is to file a provisional patent application on your own, and thereafter file a non-provisional (complete) application, within the prescribed time period, using the services of a patent professional.
This advice is given to inventors, because, there is no prescribed format to draft provisional patent applications. An inventor can just write down how his invention works and thereafter file a provisional patent application. Following this strategy, undoubtedly saves money and helps in obtaining a priority date, but it has many cons as well, which is discussed below.
Most people fail to advice inventors that, a non-provisional (complete) application which is filed after filing a provisional application, is based on the provisional application and has to be within the scope of the provisional application. It is therefore advisable to draft a provisional application with the same vigour as a non-provisional application. If the provisional specification is not drafted well, there will be serious limitations as to drafting a complete application based on the provisional specification. The provisional specification has to go into minute details of the invention. Drafting a provisional specification by a person who is not well versed with drafting patent specifications, will certainly affect the level of protection sought by the inventor.
There are number of books and resources on the internet, to teach an inventor to draft patent specifications. An inventor may read through these books for academic interest, however, it is not advisable to try to draft your own patent specifications after reading such material.
The inventor must understand that, the patent specification is the only document which is protecting his invention, hence utmost care and professional knowledge should be employed in drafting the patent specification.
Patent professionals have to spend years together to learn how to draft patent specifications, which provides the utmost protection to the inventor for his inventions. Patent professionals are highly trained in the patenting process and have to appear and pass in certain examinations to become patent attorneys and patent agents.
Certain formal requirements of the patent office have to be met in drafting the patent specification. Inventors usually do not comply with such formal requirements, since they do not have knowledge regarding those requirements. Such applications get rejected and the inventor has to comply with the formal requirements and file the application within a stipulated time period. Such situations often lead to anxiety and also additional costs.
Considering all this, the inventor must understand that, just by reading a few books and materials on the internet, he will not be able to draft a good quality patent specification, which complies with the requirements of the patent office among other requirements.
If the inventor is keen to protect his invention, he must allocate some funds to get professional help in the patenting process. If his invention goes on to become something big, it will always reap rich dividends.
Though employing the services of patent professionals may feel expensive at the beginning, inventors must always consider the fact that, a badly drafted specification will in most cases affects the enforcibility of a patent. A badly drafted specification is very easy to be worked around. This will lead to loss of revenue due to inability to enforce the patent.
Patenting is an expensive process, be it patent office fees or professional fees of a patent practitioner. The inventor must only pursue patents, if he feels that, his invention will go on to become something big and will earn a lot of money. If the inventor does not have enough funds to pursue patents, he should however, go for public disclosure of his invention. This will however not give him any rights, but will stop others from patenting the same.
About filing of patent applications
Unlike drafting of patent specifications, filing of patent applications is an administrative step and can be achieved on their own by the inventor, if they spend a lot of time in learning the process.
However, it is always advisable to employ the services of patent professionals for drafting of the patent specification. Most patent professionals, whose services are being availed by the inventor for drafting the specification, will offer the inventor with filing services in their jurisdiction at a discounted fee.
Hence, instead of filing the patent application on their own and making any mistakes, which might prove expensive, it is best left to be done by professionals, who do it day in and day out.
Regarding inventors who feel that, patent specification is just like any other scientific disclosure document.
Some inventors who have experience in preparing scientific disclosures, might feel that, a patent specification is just a technical document, similar to the scientific disclosures, they have experience in preparing, and hence they can draft a patent specification on their own.
Other inventors might feel that, the patent specification is just a document describing their invention in detail and since they are the inventors, they are the best person to describe it.
However, these reasons are unfounded, since, a patent specifications is not just a technical document or just a description of the invention, but a techno legal document, which determines the scope of protection for the invention.
Only a person, who has both technical knowledge in the domain of the invention, as well as good knowledge of patent law, will be able to draft a good patent specification, which provides the maximum protection to the inventor for his invention.
The person drafting a patent specification must have good understanding about the prosecution of patent applications. The patent specification has to be drafted in light of the prosecution of the application.
Unlike scientific disclosures, drafting of patent specifications is tricky, since, one has to possess knowledge about use of certain words and their interpretation according to patent law. This will be of utmost importance during the enforcement stage of the patent.
A patent specification is not just the description of the invention, as disclosed by the inventor. The patent professional usually comes up with many embodiments of the invention, wherein the desired result can be achieved by various methods. This is usually done to insulate the invention against any work-around which the inventor’s competitors may come up with.
Unlike scientific disclosures, patent specifications contains, ‘claims’, which basically defines the boundaries of protection that is sought for the invention. Drafting of claims and the usage of words in the claims is of utmost importance. Drafting of claims is very difficult and highly skilled job, and patent professionals develop this skill only after studying patent law and working for a few years.
Considering all this, though the inventor might have skills in preparing scientific disclosures, drafting of patent specifications is best done by patent professionals, since they posses both technical and patent expertise.
Regarding filing of patent applications on your own
We have written an article on our blog, wherein, we list out various forms that have to be filled to file a patent application. Many inventors after going through our article, feel that, filing a patent application is just an administrative process, and all they have to do is fill those forms and send it to the patent office, and their patent gets filed.
However, what they fail to understand is that, the most important aspect in filing a patent application is, preparing a patent specification, which is both time consuming as well as a highly skilled job, which has to be done by professionals.
As mentioned before in this article, patent specification drafting is best done by professionals, if the inventor is serious about protecting his invention.
After drafting the specification, the patent professionals will themselves file the patent application, and advice the inventor about any future actions which may have to be taken.
Choosing patent service providers for your patenting needs  
In light of this discussion, we feel that, the inventor by now might have realized that, availing the services of patent professionals for his patenting needs is in his best interest.
Now comes the part, wherein, the search for the right person for the job begins.
A few pointers to choosing the right patent services provider for the job.
  •  Do not always go for the lowest bidder. This is not a product you are buying, but availing a service, wherein, different service providers may provide varied quality of service for a varied fee.
  • The most expensive service provider may not always be the best. Speak to the concerned service provider to gauge the level of knowledge, willingness to work on your invention and quality of advice they provide.
  • Choose a service provider, who has domain expertise in the field of your invention, and will be able to understand your invention easily.
  • Search on the internet to gauge the reputation of the patent services provider.
  • Do not choose freelancers especially for your patenting needs, since you need someone who is liable to you and provides you complete support till the end of the patenting process.
  • Have a non-disclosure agreement is place, before disclosing your invention.
Closing statement 
We hope that, our article has helped you in understanding that, a patent specification is the only document that protects your invention, and hence, has to be drafted by the best person for the job. We hope that, inventors do not try to save some money initially and regret it later. We have seen this happen to so many inventors and hope that, we sharing this information with you, will help you take the right decision.
We hope that, this article will help you in taking the right decision in tackling the patenting
process. You can download the article here.
If you have any queries, you can reach us at [email protected]
Team InvnTree
www.invntree.com | [email protected] | +91-80-65700262


At Which Stage Should I Apply for a Patent?

Over the years I have noticed that inventors seek patent filing related advice at various stages of the inventing process. At one extreme, I have seen inventors exploring the option of filing a patent application at an ideation stage. On the other hand, I have also come across inventors who explore the patent filing option after bringing the invention to public domain. Given the wide gap between the two extremes, I intend to provide some information through this article to help inventors decide an ideal time to apply for a patent.

Before we dive right into the question of interest, let us try to understand the concept behind the patent system. The patent system is essentially designed to encourage advancement in science and technology. To provide such an encouragement, respective countries provide monopoly right over the patent invention for a limited period of time, to the inventors or the assignees of the patent. In return, the patent office expects the applicant of a patent to disclose information about the invention for which patent protection is sought, to an extent that a person with ordinary skill in the technology, to which the proposed invention relates, can use the provided information to make and use the proposed invention. This disclosure of information to the public would ideally enable others to explore improvements over existing technology, and thereby lead to advancement in science and technology. 

The disclosure of information discussed above is one of the requirements, which has to be fulfilled to have a patent granted. Hence, one of the important questions that inventors should ask themselves is whether they have sufficient information about the invention to enable a person skilled in the technology to which the invention relates, to make and use the proposed invention. If sufficient information is available, then the time might be right to apply for a patent. One the other hand, if sufficient information is not available, then the inventor should ideally work towards gathering/generating such information, so that the same can be provided in the patent application.

Generally the issue of not having sufficient information arises when option of patenting is explored at an ideation stage of the invention or at initial stages of research. At this stage, when it is realized that sufficient information is not available, provisional application filing is explored by inventors. There is a general misconception that one need not provide information that enables the invention, in the provisional application. It should be noted that the requirement of providing adequate information hold good for a provisional application, as it does for a complete patent application. I recommend reading our article “What are the different patent filing options?” to get a better understanding of provisional and complete application.

I would not suggest filing a provisional application, as opposed to a complete application, for the lack of adequate information. Instead, I would suggest filing a provisional application if an inventor does not have adequate funds to hire a professional to draft a patent specification or does not have adequate time to have a complete patent specification drafted. Further, in some countries, there is a substantial difference in the government fee that is charged for a provisional and a complete patent application. Hence, one might wish to file a provisional application, and thereafter within 12 months file a complete patent application.

Another important point to be notes is that, in some countries, such as India, the inventors loose the right to file a patent application if the proposed invention is made public before applying for a patent. On the other hand, US provides a time period of 12 months to file a patent application after the proposed invention is made public. Hence, if the inventor wishes to file patent applications in multiple countries, it is advisable to explore the option of filing the patent application before the invention is made public. 

I hope the points discussed in this article will help you in deciding the right time to apply for a patent, given the various constraints you might have.

You may also read our articles listed below, to gain more knowledge about patents:


Please feel free to reach us at Contact us  if you have any queries relating to patents. 


Team InvnTree