Why an invention consultant and not just a patent attorney?

Many large companies that engage in inventive activities have on-staff patent attorneys and agents “imbedded” with groups of scientists and engineers. On staff attorneys allow companies to promptly identify patentable “subject matter,” and file for patents before their competitors do. Large companies are successful using this approach. Statistically, they account for about 70% of patent applications as well as granted patents.

For many small to medium enterprises and individual inventors who can not afford to maintain a staff of scientists, engineers, and patent attorneys, a cost effective alternative is to bring in a technical consultant who is also a patent practitioner early in the process. Ideally this individual would also be experienced as an inventor and have a good understanding of the inventive process.

If brought in early and allowed sufficient involvement and access, this individual can 1) facilitate the development of the invention, 2) help assess the commercialization potential and issues, 3) assist with determining market potential, 4) help identify patentable “subject matter” in a timely manner as the invention evolves,5) help identify the best time to file (why the application timing could be important ) , and 6) expeditiously file a patent application when appropriate. Additionally, a patent and publication search can often suggest new patentability areas. The filing and prosecution fees of a patent agent are about one half of those charged by a patent attorney.

The current practice for many small enterprises and individual inventors is to hire a patent attorney to apply for a patent when the inventor concludes that his/her invention has been finalized and feels that it could be patentable. The risk of this approach is that:

1. A competitor may beat them to the punch if the application is not timely filed;
2. The inventor may lose the right to his invention if he/she does not timely file;
3. Opportunities to make adjustments to the invention based on early knowledge of what may or may not be patentable may be missed; and
4. Patentable subject matter may go unrecognized. (This assumes that most inventors are not familiar with the complexities of patent laws and a patent practitioner is more adept at identifying patentable subject matter, though there are exceptions.)