The preparation of an application for patent and the conducting of the
proceedings in the Patent and Trademark Office to obtain the patent is
an undertaking requiring the knowledge of patent law and rules and
Patent and Trademark Office practice and procedures, as well as
knowledge of the scientific or technical matters involved in the
particular invention.
Inventors may prepare their own applications and file them in the Patent
and Trademark Office and conduct the proceedings themselves, but unless
they are familiar with these matters or study them in detail, they may
get into considerable difficulty. While a patent may be obtained in many
cases by persons not skilled in this work, there would be no assurance
that the patent obtained would adequately protect the particular
invention.
Most inventors employ the services of registered patent attorneys or
patent agents. The law gives the Patent and Trademark Office the power
to make rules and regulations governing conduct and the recognition of
patent attorneys and agents to practice before the Patent and Trademark
Office. Persons who are not recognized by the Patent and Trademark
Office for this practice are not permitted by law to represent inventors
before the Patent and Trademark Office.
The Patent and Trademark Office maintains a register of attorneys and
agents. To be admitted to this register, a person must comply with the
regulations prescribed by the Office, which require a showing that the
person is of good moral character and of good repute and that he/she has
the legal, and scientific and technical qualifications necessary to
render applicants for patents a valuable service. Certain of these
qualifications must be demonstrated by the passing of an examination.
Those admitted to the examination must have a college degree in
engineering or physical science or the equivalent of such a degree.
The Patent and Trademark Office registers both attorneys at law and
persons who are not attorneys at law. The former persons are now
referred to as “patent attorneys” and the latter persons are referred to
as “patent agents.” Insofar as the work of preparing an application for
a patent and conducting the prosecution in the Patent and Trademark
Office is concerned, patent agents are usually just as well qualified as
patent attorneys, although patent agents cannot conduct patent
litigation in the courts or perform various services which the local
jurisdiction considers as practicing law. For example, a patent agent
could not draw up a contract relating to a patent, such as an assignment
or a license, if the state in which he/she resides considers drafting
contracts as practicing law.
Some individuals and organizations that are not registered advertise
their services in the fields of patent searching and invention marketing
and development. Such individuals and organizations cannot represent
inventors before the Patent and Trademark Office. They are not subject
to Patent and Trademark Office discipline, and the Office cannot assist
inventors in dealing with them.
The Patent and Trademark Office cannot recommend any particular attorney
or agent, or aid in the selection of an attorney or agent, as by
stating, in response to inquiry that a named patent attorney, agent, or
firm, is “reliable” or “capable.” The Patent and Trademark Office
publishes a directory of all registered patent attorneys and agents who
have indicated their availability to accept new clients, arranged by
states, cities, and foreign countries. The Directory may be purchased in
paper form from the Government Printing Office or from the PTO’s Office
of Electronic Information on the Cassis ASSIST CD-ROM disc. It is also
available on the PTO Web site.
The telephone directories of most large cities have, in the classified
section, a heading for patent attorneys under which those in that area
are listed. Many large cities have associations of patent attorneys.
In employing a patent attorney or agent, the inventor executes a power
of attorney or authorization of agent which must be filed in the Patent
and Trademark Office and is usually a part of the application papers.
When an attorney or agent has been appointed, the Office does not
communicate with the inventor directly but conducts the correspondence
with the attorney or agent since he/she is acting for the inventor
thereafter although the inventor is free to contact the Patent and
Trademark Office concerning the status of his/her application. The
inventor may remove the attorney or agent by revoking the power of
attorney or authorization of agent.
The Patent and Trademark Office has the power to disbar, or suspend from
practicing before it, persons guilty of gross misconduct, etc., but this
can only be done after a full hearing with the presentation of clear and
convincing evidence concerning the misconduct. The Patent and Trademark
Office will receive and, in appropriate cases, act upon complaints
against attorneys and agents. The fees charged to inventors by patent
attorneys and agents for their professional services are not subject to
regulation by the Patent and Trademark Office. Definite evidence of
overcharging may afford basis for Patent and Trademark Office action,
but the Office rarely intervenes in disputes concerning fees.