Patent Attorneys and Patent Agents
 

The U.S. Patent and Trademark Office (USPTO) strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications.

 
The PTO only allows certain qualified persons to practice before the PTO. Practice includes filing of patent applications on behalf of inventors, prosecuting patent applications on behalf of inventors, and participating in administrative appeals and other proceedings before the PTO examiners and boards.


The PTO sets its own standards for who may practice and requires that any person who practices become registered. A USPTO-registered non-attorney professional is called a patent agent and a USPTO-registered attorney is called a patent attorney.


In order to become registered to practice before the USPTO, an applicant must demonstrate to the USPTO's satisfaction certain scientific and technical competencies (such as having a science or engineering degree) and then pass a difficult USPTO-administered patent bar exam called the USPTO registration examination. This bar exam covers the voluminous regulations and procedures that govern USPTO practice. The registration process is managed by the USPTO's Office of Enrollment & Discipline (OED).


Individual inventors may file and prosecute patent applications by themselves by a process of pro se patent filing. The inventor is not required to be represented by a registered patent attorney or patent agent.


If it appears to a patent examiner that an inventor filing a pro se application is not familiar with the proper procedures of the patent office, the examiner may suggest that it would be desirable for the inventor to obtain representation by a licensed patent attorney or agent.  The patent examiner cannot recommend a patent attorney or agent, but the patent office does post a list of registered attorneys or agents.


Some bar associations operate lawyer referral services that maintain a list of patent attorneys available to accept new clients.


It is not uncommon for individual inventors to file their own patents to potentially save thousands of dollars in agent/attorneys fees, since legal fees for the preparation and filing of a US patent application can total many thousands of dollars. While an inventor of a relatively simple-to-describe invention may well be able to produce an adequate specification and accompanying drawings for a utility application, the complexity lies in what is claimed, either in the particular claim language of a utility application, or in the manner in which drawings are presented in a design application. Moreover, failure to adequately respond to an office action from the USPTO can endanger the inventor's rights, and may lead to abandonment of the application.


Patent agents can only act in a representative capacity in patent matters at the USPTO, and cannot represent an applicant for a trademark. Trademark applicants may be represented by any state bar licensed attorney sufficiently capable of handling trademark matters, governed by the rules of professional responsibility. There is no analogous "trademark agent" exam.



 

The USPTO will accept patent applications filed in electronic form. As of March 2006, inventors or their patent agents/attorneys can file applications as Adobe PDF documents. The web page for submitting applications is https://sportal.uspto.gov/secure/portal/efs-unregistered. Filing fees can be paid by credit card or by a USPTO “deposit account”.



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