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Original Article by:
Morrison Bennett
Los Alamos National Laboratory
Legal Counsel Business & Patent Law
Phone: 505-667-6989
mbennett@lanl.gov
Updated by:
Diane Albert
Peacock Myers PC
201 3rd St NW, Suite 1340
Albuquerque, NM
dalbert@peacocklaw.com
What are patent agents and patent attorneys?
A patent agent helps inventors or owners of inventions get patents on their inventions. In order to understand the technical nature of the invention, patent agents talk with scientists or engineers who have made the invention and entrepreneurs or business people who have acquired rights in the invention. The patent agent must then gain an understanding of where the invention fits in the technology it represents and in what ways it is unique and thus eligible for a patent. Next the patent agent presents the invention to the U.S. Patent and Trademark Office in the form of a patent application with claims to the invention. The patent agent has been trained in the rules for working with the U.S. Patent and Trademark Office to get the patent issued.
Patent attorneys, also known as patent lawyers, have been admitted to the practice of law. They may, like patent agents, help get inventions patented. Unlike patent agents, they may also provide legal services such as protecting a client’s patent rights in a court of law, and they may give legal advice on matters relating to patents and the licensing of inventions.
What makes a good patent agent or patent attorney?
Good patent agents and patent attorneys have curiosity about the way things work and the ability to understand technical concepts, processes, and apparatuses. Patent agents and patent attorneys must be excellent communicators, both verbally and in writing. They have to be able to explain the rules for patentability and procedures for obtaining a patent to the inventor or owner of the invention. Patent agents and patent attorneys have to be able to write a description of the invention that will enable others to use the invention, and write claims to the invention that communicate clearly what it is that the public is excluded from making, using, or selling without permission from the holder of the patent.
Patent agents and patent attorneys need excellent negotiating skills to get patent examiners at the U.S. Patent and Trademark Office to agree with them, the inventor, and, if the rights to the invention have been assigned, the owner of the invention, as to the nature of the invention and how much of the particular technical area can be claimed as the invention. Patent attorneys may further need to call upon these skills to protect or license a patent.
Patent agents and patent attorneys have to be detail-oriented and well organized so that they meet all deadlines imposed by the rules and U.S. Patent Office during the process for obtaining a patent, which often includes timely submission of a number of forms, requests for amendments to the patent application, declarations by persons skilled in the technical area, petitions for various procedures, and drawings of the inventions that meet very exact standards published by the U.S. Patent and Trademark Office.
What is life as a patent agent or patent attorney like?
Patent agents and patent attorneys most often work for a law firm or a corporation or enterprise that has research and development activities resulting in inventions or that purchases rights to inventions. A small number of patent agents and patent attorneys have been hired by national laboratories where research is taking place. Other patent agents and patent attorneys are self-employed and seek inventors or businesses or investors who desire patents; self-employed patent attorneys may also seek clients who wish to license their patent or protect their rights under an existing patent or license. These agents and attorneys may go to meetings of inventors’ clubs and entrepreneurial organizations, give talks on how to get patents on an invention, and get referrals from attorneys and business people who deal with inventors and small businesses. Most of a patent agent’s professional life is spent reading, writing, and talking with inventors, owners of inventions, and patent examiners employed by the U.S. Patent and Trademark Office. A patent attorney may also spend considerable time in court protecting a client’s rights to a patent, or giving clients legal advice on licensing issues.
How do I become a patent agent or patent attorney?
To become a patent agent or patent attorney you must have a science or engineering background, and you must be admitted to practice before the U.S. Patent and Trademark Office, a United States government agency. Admission to practice before the U.S. Patent and Trademark Office requires a college degree in science or engineering or equivalent experience and a passing score on an examination of your knowledge of the rules of practice before the U.S. Patent and Trademark Office. Patent attorneys must, in addition, be admitted to practice law in at least one state or territory of the United States and have the requisite legal training.
The most worthwhile high school courses are those that teach scientific or engineering concepts and those that help you develop communication and negotiation skills. Courses that develop your intellectual, scientific, and technical curiosity and the ability to organize ideas and pay attention to detail are important. College subjects needed are those that will result in one of the scientific or technical degrees listed by the U.S. Patent and Trademark Office as meeting the requirement for registration for practice before the U.S. Patent and Trademark Office as well as courses that build on the high school courses referred to above.
What/where are the jobs?
Jobs for patent agents or patent attorneys, especially if self-employed, can be anywhere in the United States. Many patent agent and patent attorney jobs are in cities like Washington, D.C., where the U.S. Patent and Trademark Office is located, and cities such as New York, Chicago, Los Angeles, and San Francisco, where many large corporate headquarters are located. A good number of patent agent and patent attorney jobs are in patent departments of the largest corporations with research and development departments in the towns and cities where the research and development facilities are located.
