How to find A Patent Attorney or Patent Agent

"Imagine the appeals, dissents and remandments,
if lawyers had written the Ten Commandments."

Harry Bender

The difference between patent attorneys and patent agents is patent agents are not attorneys-at-law, and as such, cannot conduct patent litigation in the courts or perform certain other services which are considered by the local jurisdiction 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 considers drafting contracts as practicing law.

Otherwise, both patent attorneys and patent agents are able to prepare and pursue a patent application through the U.S. Patent and Trademark Office (USPTO). The USPTO typically regards patent agents to be just as well qualified as patent attorneys, as long as they are registered with the Patent Office.

Registered Attorneys and Agents

How to Find a Good Patent Attorney

There are two kinds of professionals that are licensed to practice before the U.S. Patent and Trademark Office: Patent attorneys and patent agents. A patent attorney is a full attorney who specializes in patent law. He or she can represent you in court. A patent agent has passed the "patent bar" -- that is, the portion of law that deals only with intellectual property such as patents and trademarks.

Both patent attorneys and patent agents must have a degree in a technical discipline, such as mechanical or electrical engineering, chemistry, pharmacology, etc. The patent agent generally starts out in the profession signified by his or her degree, and discovers that he likes the challenges of patenting. He then studies patent law, takes a test before the U.S. Patent & Trademark Office, and becomes a licensed patent agent. A patent attorney usually gets his law degree first, then, deciding that he or she wants to specialize in patent law,gets his technical degree.

Both agents and attorneys often work as patent examiners for the Patent Office before going into private practice, or working for a law firm. Many law firms employ both patent agents and patent attorneys to write patent applications for inventors.

In selecting a patent professional (attorney or agent), first consider his or her technical specialty. If you have an electronic invention, you should engage a patent agent or attorney with an Electrical Engineering degree. If your invention is the typical gadget, you should engage a mechanical engineer, and so on.

Your second consideration is that of trust. Most patent professionals are ethical and trustworthy. But a few have chosen to "make an easy buck" by processing patent applications that are essentially worthless in terms of their ability to command money from a licensee, or holding up in court. Here are a few points to consider before committing to the professional:

• Does the professional delegate the patent search to a professional searcher, or does he do this himself? (In my opinion searching should be done by the professional searcher, not the agent or attorney. See my article About the Patent Search.)
• Will the professional provide a patentability opinion in writing? You should insist on this. A wishy-washy spoken opinion would be like the doctor telling you he doesn't know exactly what's wrong with you but for a few thousand dollars he'll try to cure you. The written opinion should compare the claims that were found in the pertinent patents discovered in the search with the claims that he or she will make for your invention.
• Do you feel comfortable with this person? You should sense trust and integrity, and also feel that you are given unhurried answers to your questions.
• Does this professional work well with independent inventors. Some of the larger law firms look down on us independent inventors as a nuisance because we waste their time with annoying phone calls and basic questions that their corporate clients don't ask.
• Is the professional's price per hour (be sure to ask!) fair for your needs as an independent inventor. Attorneys, lawyers and agents who work alone are usually less expensive than those in firms, and may give better attention to your invention than professionals who work mainly for corporations.

Ways to find patent attorneys or patent agents.

One of the easiest ways is to get on the Internet, and go to www.uspto.gov. This is the UnitedStates Patent & Trademark Office web site. It lists patent attorneys and agents by state. In the upper right corner of the home page key in "patent attorneys," and click. What will appear first is a list of states. Click on your state. Next will appear a list of patent attorneys and patent agents, by name, in alphabetic order. If the person works for a firm, the firm is listed. The last line of each entry states "attorney" or "agent." Some firms forbid an agent or attorney from working "on the side." The only way you'll find out is to contact and ask.

Patent professionals also advertise in Inventors' Digest magazine, along with patent searchers, prototypers, and marketing experts. Joanne Hayes-Rines, the publisher, does not accept ads from service providers known to be unethical. To subscribe phone 1-800-838-8808.

Your local yellow-page directory lists patent attorneys, but does not distinguish them from patent agents. Beware listings that indicate "patenting services." These are often firms that hope to snare you, and sell you worthless services. They are often departments within the same unethical firms that blast their misleading commercials on television. Many are affiliated with "patent mills," the semi-ethical patent attorneys or agents who grind out poor quality patent applications in a few hours. Make sure that the firm or person you hire to write your patent application does only patent and trademark work, and that you may visit its local office for a free face-to-face initial interview.

If you have an inventor's club or group in your area, join it and ask for a recommendation for a local agent or attorney. To locate the group that may be near you go to the United Inventors Association web site at www.uiausa.org UIA is a not-for-profit organization dedicated to helping inventors and inventor groups.

And last, if you use my mentoring services I will recommend the searcher and attorney I use. I know that both are ethical. The attorney is located in the Washington, DC area. That means that you'll most likely have to deal by mail, e-mail, and telephone. If you have prepared a written a detailed description of your invention, and have sketches or drawings, there is no reason why face-to-face contact is necessary. My personal preference is to work with a remote attorney or agent whom I trust rather than a local attorney or agent I know nothing about.

 Copyright © 2004 Jack Lander, www.Inventor-mentor.com