Patent Attorney

How to Find Choose or Become a Patent Attorney

Patent Attorney
Why a Patent Attorney?. Getty Images/Photographer Dougal Waters

Why do you need a patent attorney? As the inventor you know the scientific and technical knowledge involved in your invention. However, the preparation of a patent application and conducting proceedings with any patent office requires a knowledge of patent law and rules and the patent office's practices and procedures. The knowledge that a patent attorney has.

You certainly have the right to prepare their own applications and file them and conduct your own proceedings.

However, without having the knowledge that a patent attorney does you may get into considerable difficulty. You may be even be granted a patent, only to find out that it does not adequately protect your invention.

Most inventors employ the services of a registered patent attorney or patent agent.

  • How To Choose a Patent Attorney
    Selecting the right patent attorney is a crucial step in the invention process. Your patent will only be as good as the patent attorney drafting it.

Why a Registered Patent Attorney

In the United States, the USPTO make the rules and regulations governing any patent attorney or patent agent. A patent attorney who is not recognized by the USPTO is not permitted by law to represent inventors before the USPTO, the office maintains a register of patent attorneys and agents. To be admitted to this register, a patent attorney or agent must comply with USPTO regulations.

A USPTO registered patent attorney must show that they are of good moral character, have a good reputation, and have all the legal, and scientific and technical qualifications.

A registered patent attorney must pass an USPTO examination, and besides their law degree have a college degree in engineering or physical science or the proven equivalent.

    After Hiring a Patent Attorney

    If you hire a patent attorney or agent, as the inventor you must execute a power of attorney or authorization of agent which must be filed with your patent office. This will be part of the application papers. When you appoint a patent attorney as your representative, the patent office will not communicate you directly but will conduct all correspondence with your patent attorney. You are still free to contact your patent office directly concerning the status of your application, and you may remove your patent attorney or agent as your representative by revoking the power of attorney or authorization of agent.

    The Patent and Trademark Office registers both attorneys at law and persons who are not attorneys at law. The former persons are now referred to as “patent attorneys” and the latter persons are referred to as “patent agents.” Insofar as the work of preparing an application for a patent and conducting the prosecution in the Patent and Trademark Office is concerned, patent agents are usually just as well qualified as patent attorneys, although patent agents cannot conduct patent litigation in the courts or perform various services which the local jurisdiction considers as practicing law.

    For example, a patent agent could not draw up a contract relating to a patent, such as an assignment or a license, if the state in which he/she resides.

    The Patent and Trademark Office has the power to disbar, or suspend from practicing before it, persons guilty of gross misconduct, etc., but this can only be done after a full hearing with the presentation of clear and convincing evidence concerning the misconduct. The Patent and Trademark Office will receive and, in appropriate cases, act upon complaints against attorneys and agents. The fees charged to inventors by patent attorneys and agents for their professional services are not subject to regulation by the Patent and Trademark Office. Definite evidence of overcharging may afford a basis for Patent and Trademark Office action, but the Office rarely intervenes in disputes concerning fees.