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   Re: Advice for a new patent agent
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   Author  Topic: Re: Advice for a new patent agent  (Read 1409 times)
eric stasik
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director, patent08

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Posts: 391
Re: Advice for a new patent agent
« on: Jul 14th, 2005, 8:57am »
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on Jul 13th, 2005, 3:27pm, ttglink wrote:

I need advice in following:
(1) If patent I file for client end up into litigation stage, would my R &D business/ background become liability?  One practicing attorney told me that it is easy for litigator to create a perception of conflict of interest during litigation.  

ttglink, First congratulations. It may be nitpicking, but it seems wrong to me for an agent to refer to the registration exam as a the patent bar exam. There is no patent bar, the USPTO is not a court of law and passing the exam doesn't grant you membership to any court of law. As a fellow patent agent, I generally go to great lengths to make it clear that I am not an attorney at law, avoiding the term "patent bar" is just one way of doing this.  
Not being an attorney, but having been involved in a number of patent litigations, your background could be as much of an asset as a liability. It depends on the circumstances and facts. For what its worth, your profile matches that of quite a few patent agents I know.  
on Jul 13th, 2005, 3:27pm, ttglink wrote:
(2) The biggest problem is getting part time assignments.  Is it advisable to take pro bono assignments (i.e. if offered) from a local law firm?  
(3) What is the best way to get acquanited with field when you have no legal experience and cannot work full time? 

Having passed the registration exam, you are (IMHO) about 25% qualified to draft and prosecute applications. Drafting is hard, writing claims is hard, the procedures are extremely complex and until you have about 3-5 years of doing this under the guidance of an experience practitioner, you should not be flying solo. This is one problem I have with the US procedure - it gives agents and attorneys the right to represent clients in front of the USPTO long before they are really qualified to do so. In contrast, a European patent attorney (who is not an attorney at law) is required to have several years of drafting and prosecution experience under the guidance of a EPO patent attorney before they are even allowed to sit for the exam.  
Thus, what you should do is to find a law firm, or patent agency, with an experienced staff and work at their slave labor wages until you have acquired the experience you need. I see no reason that this cannot be done part-time. Once you have a portfolio of patents under your belt it will be easier to demand higher wages and get other work. With your tech background you are more useful to a patent prosecution firm than a newly minted patent attorney who has only the minimum technical requirements and a head full of law school blather.  
There really aren't any shortcuts.  
Good luck,
Eric Stasik
IP Logged

eric stasik

patent engineering,
business development,
and licensing services
postbox 24203
104 51 stockholm
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