Are there any benefits to filing a provisional patent with an intellectual property firm/patent attorney?

Are there any benefits to filing a provisional patent with an intellectual property firm/patent attorney?

Are there any benefits, compared to self-filing? Example: if I file a provisional with a patent attorney, can it be used as “proof” later in a dispute (with another party claiming inventorship), even if the provisional had expired? Could my patent attorney “back me up” with the expired provisional?

In Australia, since the Raising of the Bar Act in 2013, provisional patent specifications effectively have to provide the same level of quality and information as a complete patent specification for them to be valid. IP Australia does not review the patent specification that is filed, and they simply issue an application number. It all looks official but much like when you self-file a tax return if you get it wrong, there are serious negative consequences for your business, often only apparent years down the track.

I often get people coming into my office with a self-filed provisional specification in hand asking me to complete the application. I have not once found one that sufficiently covered off the invention to be of much legal or commercial use to the client. We can sometimes salvage an application using grace periods but doing so means that the provisional was largely ineffective for the client in the first place (and a waste of their time and effort in preparing it). On a few occasions, they have lost the ability to validly patent the invention altogether, which is very sad.

I am sure that there are laypeople out there that understand the patenting process sufficiently to be able to self-file patent applications. These tend to be laypeople who have some professionally prepared patents behind their names already and are also highly intelligent. Ironically, they are also the same group of people most likely to hire a patent attorney because they are very busy in their own specialisation and see the value in hiring a professional to take the load off them.

In the same way that only a specialist surgeon conducts open heart surgery, so it is with patent attorneys and patent specifications. The surgeon trains for many years to prepare for the surgery that they do. Patent attorneys study and train for years to prepare patent specifications. It is not reasonable to expect that most laypeople would be able to do that job effectively without that training and experience.

Self-filers will not realise what shortcomings are present in their specification after filing it, only years later. This generally occurs when the patent is examined, when they want to license or sell the patent, and/or when the patent is attacked in litigation.

We are in an age where the role of professionals is being questioned, and many people are attempting to do more themselves. Professionals in all professions have been guilty in the past of making simple processes look complex. I can confidently say that the act of drafting a commercially useful and valid patent specification is not a simple process.

Mark Warburton About the author

The Intellectual Property Guru. His determination to protect innovation stems from a family legacy in which his grandfather, a genius inventor, had his innovations stolen and patented by someone he trusted, which led to his grandfather dying a pauper on a park bench. Mark is an international award winning lawyer and patent attorney and 3-time published author. His prowess in the court room sees him winning cases that others thought were unwinnable. Mark’s passion for protecting intellectual property shines through in his pro-bono legal mentoring, proactive legal workshops and 1-2-1 work with clients.