|
A patent agent is an individual who is licensed
to file patents with the United States Patent And Trademark Office
(USPTO) on behalf of individual inventors and companies.
- Specifically What Services Can A
Patent Agent Provide?
A patent agent can draft
a patent application and file the application with the USPTO. A
patent agent can also provide the full range of services traditionally
associated with prosecuting a patent through its final issue,
including negotiating with the patent examiners to defend patent
claims, filing appeals within the USPTO (if necessary),
participating in interferences, and related services. Once
a patent is issued, a patent agent can continue to support
the integrity of the patent claims through such USPTO processes
as reexamination and reissues.
- What Training And Other Qualifications
Are Required To Become A Patent Agent?
All patent agents,
like patent attorneys, must meet stringent USPTO requirements
for training in a technical
field. In my case, my undergraduate studies in physics satisfied
that requirement. In addition, all patent agents are required
to pass a test administered by the USPTO—the same test
taken by patent attorneys—which is informally referred
to as the "patent bar". The test covers, in minute
detail, both the legal and administrative aspects of filing
and prosecuting
patent applications.
In my case, it required eight months of exhaustive self-study
before I took the test, passing the first time. The patent
bar exam is known to be exceptionally difficult, and even many
attorneys do not pass their first time.
- Are There Any Things A Patent Attorney
Can Do For Me That A Patent Agent Cannot Do?
Apart from charging significantly more
money to file and prosecute a patent application, the answers
is "yes", there are some things attorneys can do which patent
agents cannot. Fortunately, most of these things are either
not likely to apply to small inventors—and certainly,
are not relevant in the early stages of patent prosecution—or
these are things which can be handled concurrently by an attorney
at the same time that a patent agent is handling the actual
filing and prosecution of a patent. The things which attorneys
can do, and which patent agents cannot do, fall into two main
categories:
1. Litigation — Sometimes, patents wind
up being litigated in courts, which are beyond the province of
the USPTO proper.
This can arise if someone is infringing on your patent, or if
—after extensive procedures within the USPTO itself—the
USPTO
has
finally
refused
to
grant
your
patent. Litigation can arise in some other cases as well. Patent agents are not
licensed to practice before the courts, so an attorney is required. Moreover,
a patent agent cannot offer advise on issues related to potential litigation.
However,
an
inventor
does
not
generally
enter
into
the
patent
process
anticipating
litigation,
and should it arise, it will be years down the road.
2. Business And Contractual Negotiations Related To Your Patent — Patents
can be sold or licensed, and of course inventors often seek venture capital to
develop a business based on their patent(s). These are matters which are properly
handled by attorneys, but they do not in any way impact the patent filing or
prosecution process itself.
In summary, a patent agent is in every way as qualified to file and prosecute
your patent application, within the USPTO, as a patent attorney. Other services
can be obtained from attorneys, as necessary.
- Why Should I Hire A Patent Agent
Rather Than A Patent Attorney?
There is simply
no question that price is a consideration here. Patent attorneys
are attorneys, and attorneys bill high rates. That's fine, for
when you need an attorney, but for filing and prosecuting patent
applications, a patent agent is equally qualified.
No doubt,
some people will tend to feel a sense of assurance in using an
attorney, rather than an agent, and such subjective perceptions
sometimes play into business decisions. But as a practical, objective
matter, a patent agent has been licensed by the USPTO to practice
before the USPTO, and can draft and prosecute your patent as
effectively as an attorney. And an agent will generally work
for a fee that may not be cheap,
but will be less costly than what an attorney will charge.
|
