The always interesting subject of “do it yourself patenting” came up in Steve Nipper’s “The Invent Blog” earlier today. (Steve somewhat graphically likens this to pulling your own teeth.) Obviously, those of us professionally engaged in obtaining and enforcing patents have a personal stake in the matter – which might bias our thinking a bit. But still, I agree with Steve and think there’s a lot to be said for leaving patent prosecution to those who know what they’re doing. As someone who frequently has to defend the validity of patents in court, I speak from experience here.

A few years back I had the “pleasure” of litigating a patent that was obtained by an inventor without the assistance of patent counsel. (In his defense, he simply couldn’t afford counsel at the time.) Although he did a pretty good job on his application, he naively included limitations in the claims that weren’t needed and which caused us all sorts of grief during litigation. Worse still, the unnecessarily narrow limitations were suggested by the patent examiner who no doubt thought he was helping the poor guy. Although we ultimately managed a settlement, that happened only after a long, drawn out battle that included two trips to the Federal Circuit and one to the Supreme Court. What was particularly frustrating was that, had he simply chosen slightly different words in his claim, the case would have been a slam-dunk.

Now can we say a professional patent attorney would have foreseen the problems and said “no” to the examiner’s proposal? I can’t say for sure, but my guess is that an attorney would have seen the unnecessary limitation and suggested something less restricting. At the very least, the attorney would have scrutinized the examiner’s suggestion for possible problems – something I’m sure the inventor never did. That’s what you pay for when a professional patent attorney gets a patent for you.

Do yourself (and your trial lawyer) a favor and hire a professional to get the patent for you, particularly if your invention’s a great one. The truth is, the less you can afford to spend on trial lawyers, the MORE you should spend on good patent procurement counsel.

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Photo of Philip P. Mann Philip P. Mann

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to…

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to the court (a judge) as well as before juries. In addition to trial court work, Mann has performed appellate work before the United States Court of Appeals for the Federal Circuit.
Mann began his legal career in Chicago and Milwaukee before heading to Seattle where some of America’s most innovative companies were developing new technologies at breakneck speed. Before founding his own firm, he was a member of the Seattle Intellectual Property Law Firm, Christensen O’Connor Johnson Kindness.
Mann is an “AV” rated lawyer by Martindale Hubbell, indicative that he has reached the height of professional excellence and is recognized for the highest levels of skill and integrity.
He holds a degree in Electrical Engineering from the University of Illinois (Urbana) and received his law degree from the Washington University School of Law in St. Louis, Missouri. He is admitted to practice in the States of Illinois and Washington, as well as before the United States Patent and Trademark Office, and in various courts around the country.