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 a government agency, like the United States Patent and Trademark Office (USPTO), as having met the qualifications to be able to prepare and file patent applications, as well as process them. This person may be an attorney as well, in which case, he or she would be called a patent attorney and have extended capabilities. A person can do this job without being an attorney, however.

A patent agent negotiates patent agreements, as well as drafting them, and prepares documents for processing and filing. He or she may liaison with both product developers and their legal team to make sure filing is done properly.

In the US, the agent may use the USPTO's patent electronic filing system (EFS-Web), a web-based tool for submitting applications and documents to the office. 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 a 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, this individual may work with developers, the business team, other agents and patent attorneys. In addition to a thorough knowledge of USPTO rules and the Manual of Patent Examination Procedure (MPEP), the individual may be required to know the rules, regulations, and documents associated with the International Patent Cooperation Treaty (PCT).

Someone who works in this field may also be involved in related areas, including 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.