Patent Strategy for Researchers and Research Managers, 3rd Edition

Chapter 3

Developing a Strategy

3.1 Professional Help

Unless a researcher has previously filed a patent application, he will have little idea of what a researcher must do to obtain a patent. Almost every researcher develops something he is excited about, and since patents are known to provide competitive advantage and prestige, researchers need to know what is involved in obtaining one.

The first decision that must be made is whether or not professional help will be hired to prepare and prosecute the patent application. There are a fair number of specific tasks, so this decision should not be made lightly. In Chapters 1 and 2, we discussed the value of patents, and gave an idea of the type of information that may be included in the patent application. At a minimum, a patent application will have to be prepared and filed, and someone will have to correspond with the patent office. To improve the chances of obtaining a strong patent, a patent search will need to be performed before the patent application is drafted. Unless the researcher has some special experience or training in the development and prosecution of patents, he will want to have an attorney or agent handle the preparation, filing, and prosecution of the patent application. While it is possible for the inventor to handle the prosecution of a patent application in his home country, it is much more difficult for an untrained individual to succeed in obtaining strong global patent rights. Countries have different laws, ...