Patent Agent
A patent agent is a person who acts on behalf of an applicant
for the purposes of drafting a patent application and then
taking that patent application through the various stages
needed to grant the patent. While an applicant for patent
may file and prosecute his own case, the Patent and Trademark
Office usually recommends the use of an attorney or patent
agent in filing the application. Although an inventor may
prosecute the application, lack of skill in this field often
detracts from obtaining the maximum protection for the invention.
In most inventor-filed cases, the patent Examiner sees that
the applicant is unfamiliar with the proper preparation and
prosecution, and almost always urges the applicant to employ
a registered patent attorney or patent agent to prosecute
the application, since the value of a patent is largely dependent
upon skillful preparation and prosecution. While the Examiner
may recommend hiring an attorney or agent, he never suggests
any particular one.
A patent attorney is a qualified
attorney-at-law and is technically trained, usually having
a degree in engineering or in one or more of the sciences.
A patent agent is also technically trained with a degree in
one or more of the sciences but is not an attorney-at-law.
In order to use the title "Patent Attorney" or "Patent Agent",
the attorney or patent agent must satisfy the Commissioner
of Patents of his character and competence in both technology
and law and be registered to practice before the Patent Office,
by passing a difficult examination on the preparation, filing
and prosecution of patent applications.
Registered Patent Agents
Preparing and prosecuting following through on a patent application
is a complex task. Prosecution involves corresponding with
the Patent Office, making any necessary amendments to the
application, and fixing the legal scope of the patent protection.
All this requires broad knowledge of patent law and Patent
Office practice—knowledge that you can expect from a specialist
known as a registered patent agent. A trained patent agent
can save you from many headaches caused by such things as
a poorly drafted patent that inadequately protects your invention.
Hiring a patent agent is not mandatory but is highly recommended,
and most inventors do so.
Registered patent agents must
pass rigorous examinations in patent law and practice before
they may represent inventors before the Patent Office. Beware
of unregistered patent agents; they are not authorized to
prosecute applications and are not subject to Patent Office
discipline. Patent agents' fees are not regulated by the Patent
Office. You and your agent should agree on fees before work
on your application begins.
Once you've appointed a patent
agent, the Patent Office will correspond with no one else
about the prosecution of your application. You may, however,
change patent agents at any time. The Patent Office provides
a list of registered patent agents but cannot recommend any
particular one to you. Your can look up the local telephone
directory for patent agent names.
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