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
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
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.
Not all intellectual property attorneys are
patent practitioners.
Ask your intellectual property attorney if he or she
is registered to practice before the U,S.P,T,O,
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.
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
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.
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

Get Protecting Your Ideas now with the O’Reilly learning platform.

O’Reilly members experience books, live events, courses curated by job role, and more from O’Reilly and nearly 200 top publishers.