Is hiring a professional attorney/prosecutor after the first evaluation a good idea?

Question

Right now I have no idea whom to hire, possible costs etc. I've been contacting a few firms I found online, also here, and the best I got was a polite reply saying they are no longer in business (worst: no reply).

So I've been considering to focus myself mostly on the description of the invention with possible claims in mind, and try to come up with claims to the best of my abilities then submit and start looking for professional help.

As far as I understand, claims can be changed, so as long as the description of the invention is sufficiently clear and novel, there should be sufficient space for a professional to find the right formulation later on?

Answer 1

I do not think you will save much money in the long run by waiting to involve a professional after you have filed your own document and waited a year or more to get an initial rejection.

There are many many ways to shoot yourself in the foot when writing a specification and a lot can happen in the world of innovation in that year +. It is possible to make a study of patent prosecution yourself but it is a deep and subtle field that is always changing its rules.

Not all practitioners are eager to take on individual inventors. You cut that down more by being an independent inventor who already drafted and filed an application, got a rejection and need someone to try to fix it from that point.

When I was practicing I belonged to the National Association of Patent Practitioners. It is composed of about 50/50 patent agents and patent attorneys most of whom are at small firms. You are more likely to find someone suitable from their list of members than going to the USPTO's list of all registered practitioners many of which work for huge firms.

Also, there are inventors clubs around the U.S. who might be able to help.

Answer 2

George White's answer is excellent and should be accepted. I'd just like to add a bit since I'm an in inventor rather than an attorney or agent. Writing a draft of an application is an excellent way to save some time and money when working with a patent attorney in that it facilitates efficient communication about the invention. However, don't expect the attorney or agent to actually use any of your own text. Most attorneys I've worked with start with the claims, and then carefully structure the specification to support those claims. A well written application can save a lot of money later in the patenting process. For this reason, I'd suspect few patent professionals would want to work on a case where they didn't have the ability to draft the application.