Protecting Your Ideas

127

Patent Practitioners

ever, the patent practitioner is alert to these types of

mistakes and knows how to handle them,

(2) In another incident, a notice was received that

the Examiner allowed a patent application, Attached

to the notice was an Examiner Interview Summary

that summarized a conversation between the appli-

cant's practitioner and the Examiner, When the practi-

tioner reviewed the summary, she discovered that the

information recorded by the Examiner contradicted

the allowed claims, This type of mistake must be

corrected in case the patent is ever litigated,

Patent Practitioners

A patent practitioner is a person who is registered to

practice patent law before the U.S. Patent and Trademark

Office.

Not all intellectual property attorneys can represent clients in

the U.S.P.T.O. Those people representing clients before the

U.S.P.T.O. must pass the

patent bar

exam. The patent bar exam is a

special examination administered once per year by the U.S.P.T.O. Of-

fice of Enrollment and Discipline. The exam tests the candidate's

knowledge of the patent laws, regulations, and procedure within the

U.S.P.T.O. To take the exam, the candidate must have, at a minimum,

enough credit hours in a specific discipline, as specified by the

U.S.P.T.O., 1 or a Bachelor's degree in a recognized technical field

such as biology, chemistry, physics, or engineering. Many lawyers do

not meet this requirement. Thus, the U.S.P.T.O. allows individuals

who meet the requirements to take the same patent bar examination

128

Preparing the Patent Application

as the attorneys who meet the requirements. The U.S.ET.O. registers

the nonlawyers who pass the examination to practice patent law

within the U.S.P.T.O. as

patent agents.

The lawyers who pass the exam-

ination are registered to practice as

patent attorneys.

Patent agents are nonlawyers who have passed the patent

bar examination and are registered to practice patent law

before the U.S.P.T.O.

Patent attorneys are lawyers who have passed a state bar

examination and the patent bar examination and are

registered to practice patent law before the U.S.P.T.O. in

addition to representing a client in a court of law.

WARNING:

Not all intellectual property attorneys are

patent practitioners.

TIP:

Ask your intellectual property attorney if he or she

is registered to practice before the U,S.P,T,O,

TIP:

Call the Office of Enrollment and Discipline (see

Appendix I) to find out if someone is registered to

practice before the U,S,P,T.O,

Patent attorneys can practice all aspects of patent law. Not only

can they help an individual get a patent but they may also:

9 prepare assignments;

9 negotiate and prepare licensing agreements;

9 render infringement opinions;

, give market clearances; and

9 litigate the patent.

129

,,

Patent Practitioners

Patent agents are specialists. They focus on preparing and pros-

ecuting patent applications. Patent agents are helpful because they:

9 specialize in procedure before the U.S.ET.O.;

9 focus on preparing and prosecuting patent applications; and

9 typically have advanced technical degrees or industrial

experience.

WATCH OUT FOR

INVENTION DEVELOPERS

Many inventors have been tipped-off by unscrupulous inven-

tion development firms. Some advertise on late night television, in

the classified sections of magazines, and more recently on the Inter-

net. They typically offer the inventor a supposedly low-cost way of

getting a patent and marketing the invention. They will claim to rep-

resent manufacturers who are looking for new ideas. Some will offer

a contract where they agree to help an inventor market and license

the invention. This contract usually has a large price tag ($5,000-

$10,000) associated with it. Reputable licensing firms usually do not

require large advance fees from the inventor.

TIP:

If an invention developer claims to have a relation-

ship with a certain manufacturer, ask for proof before

signing a contract with them.

Some invention developers charge high fees to file a Disclosure

Document in the U.S.P.T.O. An inventor can do this him or herself

for $10. Other firms have filed the wrong type of patent application

or they have filed no patent application at all and have charged the

client an unreasonably high fee to do so. Many inventors get conned