NOTE FROM THE EDITOR:
In 1963, the U.S. Supreme Court ruled on Sperry v. Florida (373 U.S. 379) and changed who can give patent advice in the U.S. The Court ruled that the states may not prohibit a federally licensed patent agent (non-lawyer practitioner) from giving advice on patent law, even though it would constitute unauthorized practice of law at the state level. Below, Joy Bryant discusses the role of the patent agent today, 25 years after Sperry v. Florida.
In order to provide representation in the U.S. Patent and Trademark Office (the Office), an individual must fulfill the requirements set forth in 37 C.F.R. §10. Included in these requirements is the requisite that one must possess the necessary legal, scientific, and technical qualifications to render valuable service to patent applicants. Many general attorneys are not able to meet this requirement. This results in a shortage of attorneys able to provide representation before the Office. To supplement this shortage, the Office allows any citizen of the United States, who is not an attorney, and who fulfills the requirements of 37 C.F.R. §10 to be registered as a patent agent to practice before the Office. (37 C.F.R. §10.6) This registration to practice before the Office entitles an individual to represent applicants in the preparation and prosecution of patent applications.
The patent agent’s practice is limited to patent matters before the Office. Unlike a patent attorney, an agent is not allowed to practice contract law such as drafting assignments; take an appeal to the Federal Circuit; or advise a client on matters relating to patent infringement. This narrow focus creates a patent specialist who has sharpened expertise in providing representation before the Office. By concentrating on preparing and prosecuting applications, the patent agent becomes an expert in helping an applicant get a patent. Having only to focus on patent law, the patent agent is able to stay current and up to date on the interpretation of the patent laws.
According to a survey of its members conducted by the National Association of Patent Practitioners (NAPP)(www.napp.org), approximately 75% of the patent agents have advanced degrees in a technical field. Additionally, many patent agents have worked at least five years in a technical field prior to becoming a patent agent. This expertise in science and technology works to the applicant’s advantage. A strong understanding of the scientific and technical aspects of an invention helps the patent agent to prepare a technically sound patent application. The patent agent’s knowledge and understanding of the technology permits him or her to intelligently question the applicant and broaden the definition of the invention. Most patent agents make an effort to continue to remain current in their scientific fields. Thus, the patent agent usually has a good understanding of what the current state-of-the-art is with respect to technologies in his or her area of expertise.
The patent agent must also remain current with respect to changes in the patent laws. Many patent agents obtain their training on the job. Most have worked under the supervision of a skilled patent practitioner (either an attorney or agent). In this situation, the practitioner usually trains the patent agent how to conduct legal research. Some patent agents rely on advanced patent practice courses to keep their legal skills sharp, while others rely on reading the case law found in various journals and publications such as the United States Patent Quarterly (U.S.P.Q.). Whatever the mechanism, most patent agents make an effort to stay current with respect to issues in patent law.
Having a strong scientific background coupled with expertise in providing representation before the Office, a patent agent is able to find employment in various niche markets. Many corporations, such as Johnson & Johnson, 3M, and DuPont, employ patent agents as patent liaisons. In this position, the patent agent works with the inventor and a senior patent attorney or outside counsel to prepare and prosecute patent applications. The patent agent may also work on portfolio development and monitoring the patent activities of various competitors. Some patent agents are employed by patent law firms to work on preparing and prosecuting patent applications. In this employment situation, as with the corporate employee, a senior patent attorney reviews the patent agent’s work. Many universities are turning to patent agents to direct the institution’s technology transfer departments. In this position, the patent agent works on patent portfolio development, marketing the technology, and preparing and prosecuting patent applications or working with outside counsel on such matters. Although the positions for patent agents are not as numerous with the Federal government, they do exist. In most cases, a patent agent who works for the government is typically working under contract. For example, Oak Ridge National Laboratories employs approximately five (5) patent agents working under contract for Lockheed Martin Energy Research Corporation. Lastly, many patent agents have found their niche in solo practice. Approximately 50% of the patent agents who are members of the NAPP are in business for themselves. Most of these people were employed as patent agents or liaisons for several years (3 or more years) before venturing out on their own. As the job market changes, being self-employed becomes a viable option for the patent agent. In addition, it affords the advantage of being able to work from home making it easier to balance work-family issues. The largest disadvantage is the inability to interact with other patent practitioners on a daily basis. However, the NAPP has solved that problem by providing various forums for patent practitioners to communicate on a daily basis.
Recently, it appears as if many of the larger corporations and academic institutions are sending work to patent agents in solo practice. The sole practitioner, on average, charges lower fees than a larger firm and provides more personalized service. For the Start-up Corporation or an institution on a tight budget, using the services of a patent agent in solo practice may be a plausible solution.
In conclusion, the patent agent is an individual having expertise in providing representation before the Office. The patent agent’s sound scientific and technical background coupled with an understanding of the patent law allows him or her to better understand the technical aspects of an invention and to write a technically and legally sound patent application. In turn, the patent agent fills a niche market where there is a need for a technical expert having knowledge of patent law.
Copyright © 1999 Joy L. Bryant, All Rights Reserved.