A Patent Agent’s Role in Patent Law

Patent law is very a specialized and unique area of law. Often, members of the general public are not aware of the option to utilize a Patent Agent for assistance with patent-related matters. Most people will immediately approach a Patent Attorney for assistance, but in many instances, it may be worthwhile to consider a Patent Agent.

What is a Patent Agent?
A Patent Agent is an individual recognized as authorized to represent others before the United States Patent and Trademark Office (USPTO) in patent matters. Patent Agents provide services in accordance with the laws or regulations administered by the USPTO to assist a client in obtaining a granted patent.[1]

What do Patent Agents do?
Every Patent Agent is authorized to perform certain law-related services related to obtaining patent protection for another’s innovation. These services include providing counseling to a client concerning the client’s pending or prospective matters before the USPTO and preparing the necessary documents for such matters. The “client” may be an inventor who retained the services of the Agent or a company/law firm that employs the Agent. Patent Agents interact with representatives of the USPTO on behalf of the client through the preparation and filing of documents, or at interviews, hearings, and meetings during the negotiating process for obtaining patent protection, which is generally known as patent “prosecution”.[2]

Examples of law-related services that a Patent Agent may conduct include, but are not limited to:
• Consulting with or giving advice to a client in contemplation of filing a patent application or other document with the USPTO;
• Preparing, filing, and prosecuting any patent application;
• Drafting an amendment or reply to a communication from the USPTO regarding a patent application, which may require written arguments to establish the patentability of a claimed invention; and
• Drafting a communication for a public use, interference, re-examination proceeding, petition, appeal to, or any other proceeding before, the Patent Trial and Appeal Board.[2]

Patent Agents are also permitted to perform services that are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the USPTO involving a patent application or patent.[2] These services can include, but are not limited to, providing patentability opinions (i.e., opinions on the likelihood of success in obtaining meaningful patent protection for a proposed concept). A patent agent may also use their expertise to support the work of attorneys in matters related to the protection and use of their innovations, such as:

• Searching literature and patent databases to identify and analyze relevant prior art references in support of landscape, patentability, right-to-use, and invalidity opinions prepared by an attorney;
• Assisting in background research and drafting documents in support of right-to-use, non-infringement and invalidity opinions in collaboration with a Patent Attorney; and
• Advising clients as to the availability of options for alternative forms of intellectual property protection (e.g., trade secrets).

A Patent Agent may be self-employed, employed by a company (i.e., an in-house position) or employed by a law firm (i.e., an outside counsel position). A Patent Agent may perform a wide variety of functions, which may vary largely based on their form of employment. A Patent Agent working in an in-house position may be responsible for evaluating their company’s innovations for possible patent protection. In-house Agents may also work to identify potential intellectual property issues concerning innovations developed by their company. A Patent Agent working in an outside-counsel positon may spend most of their time drafting and prosecuting patent applications and providing patentability opinions. Optionally, a Patent Agent may work as a Patent Examiner with the USPTO to process and evaluate patent applications.

How does a Patent Agent differ from a Patent Attorney?
Whether one is a state bar-registered attorney or a non-attorney, they must be registered to practice before the USPTO to prosecute patent applications on behalf of others. A registered practitioner who is an attorney may use the designation “Patent Attorney,” “Patent Lawyer,” or “Registered Patent Attorney.” A registered practitioner who is not an attorney may use the designation “Patent Agent” or “Registered Patent Agent.”[3]

Patent Agents and Patent Attorneys alike provide services to assist a client in obtaining a granted patent and represent a client in proceedings before the USPTO involving a patent application or patent. Patent Agents are not entitled to practice before the USPTO in trademark matters representing others.[4] Moreover, Patent Agents may not represent another in legal proceedings or give legal advice outside of the boundaries defined by the USPTO. Further, an attorney (e.g., a Patent Attorney) is required for legal advice on certain subjects outside the immediate purview of the USPTO, such as patent licensing, patent infringement, contracts, and non-disclosure agreements.

How does one become a Patent Agent?
To be registered to practice before the USPTO, one must pass the registration examination (informally known as the “patent bar”) and provide satisfactory proof of possession of good moral character and reputation.[5] An attorney who fulfills the requirements of the USPTO may be registered and work as a Patent Attorney. In the same way, a non-attorney who fulfills the requirements of the USPTO may be registered and work as a Patent Agent.

It is imperative that any practitioner, Patent Attorney or Agent, is competent in drafting the complex patent documents and in patent prosecution procedures and strategies in order to provide valuable service. Accordingly, the USPTO requires a person to have certain qualifications to be eligible to take the registration examination. One component of these qualifications is that the individual must have sufficient scientific and technical training. Typically, an individual is qualified to apply for the registration examination if they hold a Bachelor’s Degree or higher degree in a recognized technical subject. Examples of recognized technical subjects include biochemistry, materials science, organic chemistry, physics, electrical engineering, computer engineering, and mechanical engineering.

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In retaining the services of a Patent Agent, an inventor or applicant can be confident that the Patent Agent possesses the qualifications necessary to provide valuable services for protecting their inventions. It is often hypothesized that Patent Agents are more likely to hold a Master’s or Doctoral degree in a technical subject than Patent Attorneys who hold an advanced degree in law. In one study by Zippia it was estimated that 24% of Patent Agents hold a Doctoral degree and 17% hold a Master’s degree.[6] In some instances, it may be beneficial for an inventor to seek the assistance of a practitioner with a specialized degree in a particular subject.

References
1. 37 CFR § 11.5 (a) Register of attorneys and agents in patent matters; practice before the Office.
2. 37 CFR § 11.5 (b) Register of attorneys and agents in patent matters; practice before the Office.
3. 37 CFR § 11.704 Communication of fields of practice and specialization.
4. 37 CFR § 11.14 Individuals who may practice before the Office in trademark and other non-patent matters.
5. 37 CFR § 11.7 Requirements for registration.
6. Patent Agent Demographics and Statistics [2022]: Number Of Patent Agents In The US
https://www.zippia.com/patent-agent-jobs/demographics/

About the Author
Alannah Witham has been helping inventors protect their “babies” since 2015. She started her career as a Patent Specialist and became a Registered Patent Agent in January 2019. As a Patent Specialist, Alannah worked alongside registered Agents/Attorneys to practice in patent matters. She participated in Examiner interviews, drafted responses to Office Actions, drafted patent applications, and conducted prior art searches and the like, which prepared her for conducting her own practice before the USPTO. Prior to that, Alannah studied the technical subject of Biochemistry at Western Michigan University where she earned a Bachelor of Science. Go Broncos!