Patent Strategy for Researchers and Research Managers, 3rd Edition

Chapter 6

Working with Attorneys, Agents, and Patent Liaisons

6.1 Introduction

While in some countries a researcher can file a patent application on his invention, in most cases to get a patent that will be of legal value one is advised to use the services of a qualified and experienced patent attorney or patent agent. In the United States, both patent attorneys and patent agents can represent clients in the United States Patent and Trademark Office (USPTO); both have passed the USPTO ‘Examination for Registration to Practice in Patent Cases’. In the United States, a patent attorney is someone who has passed a state or territorial bar and generally has a legal degree, whereas a patent agent generally has a technical degree or certification. Many other countries do not have these distinctions between attorneys and agents, and other patent offices have their own requirements with regards to examinations and experience. Once approved to practice in a patent office, both patent attorneys and patent agents can prepare, file, and prosecute applications in the patent office, along with any appeals in the patent office. However, in the United States, appeals in the courts of the legal system, and certain other legal matters relating to potential actions in the courts, are best addressed by a patent attorney. Again, other countries do not always make this distinction. In what follows, we shall use ‘agent’ as a generic term for either an attorney or an agent, and ‘attorney’ only when we ...