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The Role of the Patent Agent in the Patent Process


Joy Bryant

In 1963, the U.S. Supreme Court ruled on Sperry v. Florida (373 U.S. 379) and changed who can give patent advice in the U.S. The Court ruled that the states may not prohibit a federally licensed patent agent (non-lawyer practitioner) from giving advice on patent law, even though it would constitute unauthorized practice of law at the state level. Below, Joy Bryant discusses the role of the patent agent today, 25 years after Sperry v. Florida.

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NOTE FROM THE EDITOR:

In 1963, the U.S. Supreme Court ruled on Sperry v. Florida (373 U.S. 379) and changed who can give patent advice in the U.S. The Court ruled that the states may not prohibit a federally licensed patent agent (non-lawyer practitioner) from giving advice on patent law, even though it would constitute unauthorized practice of law at the state level. Below, Joy Bryant discusses the role of the patent agent today, 25 years after Sperry v. Florida.

In order to provide representation in the U.S. Patent and Trademark Office (the Office), an individual must fulfill the requirements set forth in 37 C.F.R. §10. Included in these requirements is the requisite that one must possess the necessary legal, scientific, and technical qualifications to render valuable service to patent applicants. Many general attorneys are not able to meet this requirement. This results in a shortage of attorneys able to provide representation before the Office. To supplement this shortage, the Office allows any citizen of the United States, who is not an attorney, and who fulfills the requirements of 37 C.F.R. §10 to be registered as a patent agent to practice before the Office. (37 C.F.R. §10.6) This registration to practice before the Office entitles an individual to represent applicants in the preparation and prosecution of patent applications.

The patent agent's practice is limited to patent matters before the Office. Unlike a patent attorney, an agent is not allowed to practice contract law such as drafting assignments; take an appeal to the Federal Circuit; or advise a client on matters relating to patent infringement. This narrow focus creates a patent specialist who has sharpened expertise in providing representation before the Office. By concentrating on preparing and prosecuting applications, the patent agent becomes an expert in helping an applicant get a patent. Having only to focus on patent law, the patent agent is able to stay current and up to date on the interpretation of the patent laws.

According to a survey of its members conducted by the National Association of Patent Practitioners (NAPP)(www.napp.org), approximately 75% of the patent agents have advanced degrees in a technical field. Additionally, many patent agents have worked at least five years in a technical field prior to becoming a patent agent. This expertise in science and technology works to the applicant's advantage. A strong understanding of the scientific and technical aspects of an invention helps the patent agent to prepare a technically sound patent application. The patent agent's knowledge and understanding of the technology permits him or her to intelligently question the applicant and broaden the definition of the invention. Most patent agents make an effort to continue to remain current in their scientific fields. Thus, the patent agent usually has a good understanding of what the current state-of-the-art is with respect to technologies in his or her area of expertise.

The patent agent must also remain current with respect to changes in the patent laws. Many patent agents obtain their training on the job. Most have worked under the supervision of a skilled patent practitioner (either an attorney or agent). In this situation, the practitioner usually trains the patent agent how to conduct legal research. Some patent agents rely on advanced patent practice courses to keep their legal skills sharp, while others rely on reading the case law found in various journals and publications such as the United States Patent Quarterly (U.S.P.Q.). Whatever the mechanism, most patent agents make an effort to stay current with respect to issues in patent law.

Having a

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