Patent Agent FAQ

                        Patent Agent FAQ

Q: What is a patent agent?

In the USA, A patent agent is someone who is licensed to practice law 
before the US Patent Office (PTO).

Q: Is that the same as a patent attorney?

Yes, as far as the US PTO is concerned about patents. It calls them both 
patent practitioners. A patent attorney is a patent practitioner who is
also licensed by his state to represent clients in court in that state.

Licensing of patent agents and attorneys outside the USA may be
different, and it not addressed in this FAQ.

Q: Can patent agents give legal advice?

Yes. That is mainly what patent agents are licensed to do -- give
legal advice to inventors and represent them in quasi-legal
proceedings before the US PTO. A patent agent can advise about
the patentability of an invention, draft a patent application so
that it claims the protection that you want and need, and prosecute
it with the US PTO.

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/exec/obidos/tg/detail/-/0873375637/

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://caselaw.lp.findlaw.com/scripts/getcase.pl?court=us&vol=373&page=379

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.

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.

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.

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

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.schlafly.net/patent/agentfaq.htm

Q: How do I become a patent agent?

You can find some info here:
http://www.t12.lanl.gov/home/lawis/NMNWSE/EYH/CareersBook/C23Paten.html

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:
[EMAIL PROTECTED]