What Does a Patent Agent Do?
A patent is government-sponsored protection given to an inventor that disallows others from producing, using, or selling an invention without permission during a designated period of time. A patent agent is a specially qualified person who has received recognition from the United States Patent and Trademark Office (USPTO) as having met their qualifications to be able to prepare and file patent applications, as well as process them. A patent agent may be an attorney as well, in which case, he or she would be called a patent attorney and have extended capabilities. One can be a patent agent without being an attorney, however.
In the Bureau of Labor Statistics categorization of occupations, a patent agent is a member of the category B034 Business and promotion agents, along with others who represent clients in business dealings. Other occupations in this category are advance agent, booking agent, boxing promoter, film booker, literary agent, membership director, and theatrical agent. This categorization clearly differentiates a patent agent from a patent attorney, who receives the classification A178 Lawyers.
In the patent agent’s work, he or she negotiates patent agreements, as well as drafting them, and prepares documents for processing and filing. The patent agent may liaison with both product developers and their legal team to make sure filing is done properly.
The patent agent may use the U.S. Patent and Trademark Office's patent electronic filing system (EFS-Web), a web-based tool for submitting applications and documents to the USPTO. The use of this tool also makes it possible to track pending applications and the progress of a patent application, but it requires knowledge of the forms and documents that work with it, how to set up one’s web browser to interface with it, and keeping up with new versions.
A patent agent may also be involved in prosecution or may contribute to the long-term management of a client’s patent portfolio. In the latter case, a patent agent may work with developers, the business team, other patent agents and patent attorneys. In addition to a thorough knowledge of USPTO rules and the Manual of Patent Examination Procedure (MPEP), the patent agent may be required to know the rules, regulations, and documents associated with the International Patent Cooperation Treaty (PCT).
Related areas into which a patent agent may be asked to venture, depending on his or her employer, include intellectual property (IP) issues, trademarks, and issues related to non-disclosure agreements (NDAs) and licensing. A patent agent may also be involved in patent review committee management, publication review, and invention disclosure review. Interference practice and opposition practice may also come into play.
Written by Mary Elizabeth
