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When it is necessary to hire a patent attorney

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When it is necessary to hire a patent attorney

29th June 2018

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The cost of obtaining a patent may seem exorbitant for the individual entrepreneur or start-up, but the protection of intellectual property may be critical to the success of the business. Patent attorneys’ fees are often comparably higher than the fees of other attorneys. So why should you pay a patent attorney to file your patent application for you?

In South Africa it is possible for any person to legally file a provisional patent application. A provisional application, however, does not result in a patent and only “protects” your invention for a period of 12 months from the filing date and a complete patent application must be filed before expiry of this period, otherwise the application becomes abandoned.

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By law it is required that a qualified patent attorney signs the complete patent specification before it is filed. Does this mean you are able to save costs by drafting and filing the provisional patent application yourself and 12 months later have a patent attorney sign the specification to obtain a complete patent application?. Or at least, file the provisional patent application yourself and then have the patent attorney attend to the complete patent application?

Although these options are possible, they come with pitfalls which are sometimes not rectifiable. For instance, very often the applicant does not include sufficient or correct information about the invention in the provisional specification, resulting in the patent attorney not being able to draft the complete specification in a form that adheres to the legal requirements. You may even find a patent attorney willing to sign your complete specification without reviewing the contents, but this would certainly not be advisable and will more likely be invalid.

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The case of Multichoice South Africa (Pty) Ltd v Barron and Another 2014 BIP 121 (CP) highlights what can go wrong if a properly qualified patent attorney does not draft the specification. In this case, the applicant was successful in having the patent of the respondents revoked on the basis that, amongst others, the specification did not sufficiently disclose how a person skilled in the art is enabled to make the invention work. The respondents lost their monopoly because of their failed patent and additionally had to foot the bill for both their and the applicant’s legal fees.

Drafting patent specifications is a skill that patent attorneys acquire through years of practice and with understanding of the intricate legal requirements to which a patent specification needs to adhere. The importance of protecting intellectual property for any business, particularly a small business or individual appropriately cannot be overstated as it may be quite expensive to correct a patent application, and even impossible in some circumstances. Getting your patent specification right the first time might well be worth the costs involved.

Written by Fredo Ströh, Director and Christina Louw, Candidate Attorney, KISCH IP

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