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Patent Agent FA
Q: What is a patent agent
In the USA, A patent agent is someone who is licensed by the Unite
States Patent and Trademark Office (USPTO) to represent clients i
patent proceedings before the USPTO
Q: Is that the same as a patent attorney
Yes and No. Yes, as far as the USPTO is concerned about patent
proceedings. No, in that a patent attorney can represent a client
outside of a USPTO patent proceeding, such as in trademark
proceedings in the USPTO, in an appeal of a USPTO decision to
federal court, or in patent litigation
Licensing of patent agents and attorneys outside the USA may b
different, and is not addressed in this FAQ
Q: Can patent agents give legal advice
Again, yes and no. Patent agents will give legal advice during th
drafting and prosecution of a patent application. And this advice ca
go beyond the representation before the USPTO. The US Supreme Court ha
held that activities incident to the preparation and prosecution of
patent applications, such as advising on the potential patentability
of an invention are also permitted. But there is no clear line here
and you may want to discuss some patent-related matters, such as
assignments or employer-employee rights, with an attorney (not
necessarily a patent attorney) who specializes in the area
But no, unlike a patent attorney (or any other attorney licensed b
the state), a patent agent is not authorized to give legal advice
in general
Q: Can I get a patent myself
Yes, you can always represent yourself. The best how-to book i
Patent It Yourself, by David Pressman
http://www.amazon.com/exec/obidos/tg/detail/-/0873375637
After seeing the complications and pitfalls described, many inventor
hire a patent agent
Q: Where can I get more legal information
The US PTO has copies of patents online, and a lot of other info
http://www.uspto.gov
An excellent treatise on copyrights and patents is available online
Legal Protection of Digital Information, by Lee Hollaar
http://digital-law-online.info
Here is some useful info and links about obtaining a patent
http://www.patent-faq.co
Here is some info about marketing your invention
http://www.willitsell.co
Q: Can patent agents help with ownership and licensing issues
Yes. Many inventors are not sure who owns their inventions, and suffe
from various legal misconceptions about patents. A patent agent can hel
with those issues as he investigates the patentability of your invention
Patent agents commonly do things like executing a patent assignment an
recording it with the US PTO
Q: Can patent agents give patent infringement opinions
Yes. Patent agents sometimes have to, such as under MPEP 708.02, so i
is within the skill set and license of someone who practices befor
the US PTO
When you get notice of a patent infringement claim, it is usuall
best to get a competent opinion on whether the patent is valid an
whether your product infringes. Otherwise you can be liable fo
triple damages if a court finds willful infringement
A patent agent can also handle a reexamination before the US PTO
if prior art shows that a patent's claims should be narrowed o
cancelled
Q: My lawyer says that only lawyers can practice law. Who is right
The state of Florida tried to regulate patent agents in 1963, and th
US Supreme Court ruled 9-0 that federal law preempts state law, an
that patent agents are licensed to practice patent law by the US PTO
No state has tried to regulate patent agents ever since. See Sperr
v. Florida, 373 U.S. 379 (1963)
http://laws.findlaw.com/us/373/379.htm
There is a common misconception that patent agents cannot perform
services which the state considers to be practicing law
Eg, see the US PTO's "General Information" pamphlet
http://www.uspto.gov/web/offices/pac/doc/general/attorney.ht
But most of the states define the practice of law in a way tha
appears to include drafting patent applications, and the US Suprem
Court says that patent agents can practice law in that way
There are some people who believe that Sperry v. Florida limits
patent agent to activities incident to the preparation and prosecution of a patent examination, but that is not the position of the USPTO on other activities before the Office, such as reexamination.The US PTO is currently proposing to revise the ethics rules forpatent agents and attorneys, and the new rules continue to keepa single register for agents and attorneys, with all of themequally authorized to practice law before the Office in patentmatters. It adds rule 11.102(c) saying that an agent can voluntarilylimit his responsibility with a client, if he wishes.http://www.access.gpo.gov/su_docs/fedreg/a031212c.htmlQ: Is patent advice covered by attorney-client privilege?Advice is usually privileged and confidential if it reflects a legalquestion from a client, such as in a patent infringement opinion. Suchan opinion would normally only be revealed if the client decided to relyon it at a trial. In almost all jurisdictions, patent agent advice hasthe same privilege as attorney advice.In federal court, information is privileged if it is prepared and submitted primarily for the purpose of obtaining legal advice on patentability and legal services in preparing a patent application.See In re Spalding Sports Worldwide, 203 F.3d 800 (Fed. Cir. 2000).http://www.ll.georgetown.edu/federal/judicial/fed/opinions/00opinions/00-m595r.htmlQ: Can patent agents represent me in a patent infringement trial?You need a lawyer to handle a court case. He does not have to be apatent attorney under the rules.Q: Are there any restrictions on patent agents preparing patent-related legal documents?Possibly, in some states. Currently, none of the 50 states have any statutes or regulations specifically limiting such practices, and no state has successfully brought an action against a patent agent for such a matter since Florida failed before the US Supreme Court in 1963. Some people think that it is possible that some state will try to regulate patent agents, and that some limited regulation might survive legal scrutiny under existing precedents. Others think that such regulation is unlikely or impossible.As an example of how patent attorneys have (unsuccessfully) triedto limit the practice of patent agents, here is a 1972 NJ advisoryopinion from a committee of lawyers. It is doubtful whether theseproposed rules are enforceable.http://lawlibrary.rutgers.edu/ethics/cuap/cua9_1.htmlTo my knowledge, no patent agent in the USA has been successfully prosecuted or punished for practicing patent law.Q: I have an invention to patent. Whom should I hire?Many patent agents and attorneys specialize in particular technologicalareas, so make sure that you hire someone who understands your invention.Beyond that, there are the usual considerations of price, skill,reputation, availability, t
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