Finding a patent agent/attorney to help with a provisional application
December 7, 2018 3:47 PM Subscribe
I've invented something for which I'd like to file a provisional patent application, and I'd like to enlist the help of a professional to help with this. However, I'm not sure about the best way to find one and what I should be looking for.
I've recently come up with a method related to my field of materials science/chemistry as part of my degree which I think is patentable and potentially profitable. I've spoken to my University tech transfer office, and their advice was that students retain rights to their IP and that basically I'm on my own (the written policy supports this). After learning the details of my situation, they didn't want to offer further advice. My academic advisers are agnostic as well. I’m somewhat entrepreneurially minded and don't want the value of this IP to be lost in a public disclosure. Unfortunately, as part of my degree, I have to present the work publicly soon. Hence, I wanted to pursue getting a provisional application on the idea.
I've gotten a hold of the book “Patent it Yourself” by Pressman and Plau. However, despite the title of Pressman’s book, I get the impression it's still a good idea to involve a professional in the process. I'm a little bit resource constrained, so I was thinking perhaps I could draft the application myself but then get the help of a professional to edit/give feedback before submission.
I'm a bit uncertain about the best place to start in finding the right patent agent/attorney. I live in Australia, but I understand that the provisional can be filed in the US as well. So I'd be open to finding someone in the US or Australia (or elsewhere, if they would be suitable). However, I'm not sure how to narrow the search down. I imagine it would be helpful for the patent agent/attorney to have a scientific background (but would this necessary for them to do a good job?) I'd be keen to know if there are any good websites, communities, directories or recommendations for patent agents/attorneys who might be willing to do this type of work.
I've recently come up with a method related to my field of materials science/chemistry as part of my degree which I think is patentable and potentially profitable. I've spoken to my University tech transfer office, and their advice was that students retain rights to their IP and that basically I'm on my own (the written policy supports this). After learning the details of my situation, they didn't want to offer further advice. My academic advisers are agnostic as well. I’m somewhat entrepreneurially minded and don't want the value of this IP to be lost in a public disclosure. Unfortunately, as part of my degree, I have to present the work publicly soon. Hence, I wanted to pursue getting a provisional application on the idea.
I've gotten a hold of the book “Patent it Yourself” by Pressman and Plau. However, despite the title of Pressman’s book, I get the impression it's still a good idea to involve a professional in the process. I'm a little bit resource constrained, so I was thinking perhaps I could draft the application myself but then get the help of a professional to edit/give feedback before submission.
I'm a bit uncertain about the best place to start in finding the right patent agent/attorney. I live in Australia, but I understand that the provisional can be filed in the US as well. So I'd be open to finding someone in the US or Australia (or elsewhere, if they would be suitable). However, I'm not sure how to narrow the search down. I imagine it would be helpful for the patent agent/attorney to have a scientific background (but would this necessary for them to do a good job?) I'd be keen to know if there are any good websites, communities, directories or recommendations for patent agents/attorneys who might be willing to do this type of work.
perhaps I could draft the application myself but then get the help of a professional to edit/give feedback before submission.
This is exactly the most economical way to begin. Prepare your draft by starting with your academic paper, and then add the hand-holding background information that your academic colleagues don't need, but would be helpful to a lay audience. Include the problem you've identified, and your solution to the problem.
You also need advice on what kind of disclosure would constitute a patent-killing public disclosure.
Seconding DrGail's comment, let me know if you would like me to recommend a few excellent Australian firms.
posted by JimN2TAW at 9:44 AM on December 8, 2018 [1 favorite]
This is exactly the most economical way to begin. Prepare your draft by starting with your academic paper, and then add the hand-holding background information that your academic colleagues don't need, but would be helpful to a lay audience. Include the problem you've identified, and your solution to the problem.
You also need advice on what kind of disclosure would constitute a patent-killing public disclosure.
Seconding DrGail's comment, let me know if you would like me to recommend a few excellent Australian firms.
posted by JimN2TAW at 9:44 AM on December 8, 2018 [1 favorite]
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posted by DrGail at 4:31 PM on December 7, 2018 [1 favorite]