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Patent Agent FAQ


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Archive-name: legal/patents/agent-faq
Last-modified: 2007/10/13
Posting-Frequency: Biweekly
Copyright: Roger Schlafly

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                        Patent Agent FAQ

Q: What is a patent agent?

In the USA, A patent agent is someone who is licensed by the United
States Patent and Trademark Office (USPTO) to represent clients in
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 be
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 the
drafting and prosecution of a patent application. And this advice can
go beyond the representation before the USPTO. The US Supreme Court has
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 by
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 is
Patent It Yourself, by David Pressman.
http://www.amazon.com/Patent-Yourself-David-Pressman/dp/1413305164/

After seeing the complications and pitfalls described, many inventors
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.com

Here is some info about marketing your invention.
http://www.willitsell.com


Q: Can patent agents help with ownership and licensing issues?

Yes. Many inventors are not sure who owns their inventions, and suffer
from various legal misconceptions about patents. A patent agent can help
with those issues as he investigates the patentability of your invention.
Patent agents commonly do things like executing a patent assignment and
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 it
is within the skill set and license of someone who practices before
the US PTO.

When you get notice of a patent infringement claim, it is usually
best to get a competent opinion on whether the patent is valid and
whether your product infringes. Otherwise you can be liable for
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 or
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 the
US Supreme Court ruled 9-0 that federal law preempts state law, and
that patent agents are licensed to practice patent law by the US PTO.
No state has tried to regulate patent agents ever since. See Sperry
v. Florida, 373 U.S. 379 (1963).
http://laws.findlaw.com/us/373/379.html

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.htm

But most of the states define the practice of law in a way that
appears to include drafting patent applications, and the US Supreme
Court says that patent agents can practice law in that way.
There are some people who believe that Sperry v. Florida limits a
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 for
patent agents and attorneys, and the new rules continue to keep
a single register for agents and attorneys, with all of them
equally authorized to practice law before the Office in patent
matters. It adds rule 11.102(c) saying that an agent can voluntarily
limit his responsibility with a client, if he wishes.
http://www.access.gpo.gov/su_docs/fedreg/a031212c.html


Q: Is patent advice covered by attorney-client privilege?

Advice is usually privileged and confidential if it reflects a legal
question from a client, such as in a patent infringement opinion. Such
an opinion would normally only be revealed if the client decided to rely
on it at a trial. In almost all jurisdictions, patent agent advice has
the 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.html


Q: 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 a
patent 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) tried
to limit the practice of patent agents, here is a 1972 NJ advisory
opinion from a committee of lawyers. It is doubtful whether these
proposed rules are enforceable.
http://lawlibrary.rutgers.edu/ethics/cuap/cua9_1.html

To 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 technological
areas, so make sure that you hire someone who understands your invention.
Beyond that, there are the usual considerations of price, skill,
reputation, availability, timeliness, etc.

The US PTO has a list of all the registered patent agents.
http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html


Q: How do I get copyrights and trademarks?

Patent agents usually just handle patent matters. If you want someone to
represent you in a legal dispute, then you probably want a lawyer. If
you just want to register a copyright or trademark, the process is
relatively simple and you can do it yourself. Nolo Press has some
self-help legal books and information.
http://www.nolo.com


Q: How do I become a patent agent?

You can find some info here:
http://www.spinstop.com/roger/careerpa.htm


This Patent Agent FAQ is an attempt to concisely and accurately
describe patent agents, without the bias towards patent attorneys
that is common on some lawyer sites that have never accepted that
1963 Supreme Court decision. It is not an attempt at consensus among
all those who have opinions on the subject. This FAQ will be kept here:
http://www.spinstop.com/roger/agentfaq.htm

Disclaimer: I believe that I have described the situation accurately.
I will cite contrasting views, if they are backed up by some authority.
Send comments and corrections to me at:
faq@darkbuzz.com

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