Re: Re: Re: I need a patend agent .
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Posted by Patent Agent vs Patent Attorney on September 25, 2001 at 00:40:58:
In Reply to: Re: Re: I need a patend agent . posted by M. Arthur Auslander on September 24, 2001 at 07:26:33:
There is no difference between a Patent Agent and
a Patent Attorney practising before the US Patent
and Trademark Office in Patent Cases. The agent
simply uses PTO supplied forms for the Declaration
assignment (if required). In fact, most Patent Agents are former practising
engineers, often with many years of experience.
The stunning majority of Patent attorneys have
either no or very limited engineering experience
after graduating collage. Attorneys went onto
law school (JD) and then into Patent Law, often
right after graduating engineering school. It is interesting to note that lawyers per se
are "unqualified" to sit for the Patent Bar. The
PTO requires candidates to be Engineers. A law
degree is not required or preferred by the PTO for
the patent bar.
Patent law is a small subset of law.
It is easier to teach an Engineer a subset of
the law (e.g. no criminal or divorce law) than
to teach a lawyer 4-6 years of engineering.
Dosen't this make sense? Patent agents are more likely to see more
alternate embodiments of your invention as a
result of years of engineering design experience
than an attorney with next to no experience in
engineering. Consequently. applications written by
agents tend to be very difficult to design around.
A patent that you paid $10k-25k to obtain is
worthless if it can be designed around. Agents are
more likely to pursuade examiners on engineering
points rather than rolling allowed dependant claims
up into rejected independant claims (see Festo
descision)to get your application allowed. A person who graduates engineering school with
no experience is like buying all the tools at
sears and trying to fix a car without ever having
used the tools before. Who do you want to fix your
car, the guy who has done it for many years, or
the guy who just graduated "car Collage"?
and not ever used the tools? However, I would only
hire someone with at least a BS (preferrably
MS/PhD) degree in the field my invention was in.
Not someone who got may have got lucky on the
EIT exam. Note that the stunning majority of medium to large
law firms hire Patent Agents(practice patent law)
and Technology Specialists(cannot practice patent
law) Just for the reasons cited above....they are
tecnically stronger than the typical patent lawyer.
Law firms are pyramid structures like Amway.
The money you pay to have a patent application
drafted is often split 3 ways:
1) the associate writing/filing your
application, 2)the principal the associate works
for, and 3) the law firm coffiers. ADD to that a
contribution of a technology specialist who must
also be paid...4 way split now. Of course Lawyers can do things an agent cannot do: Draft
license agreements, litigate in state/federal
courts if your patent is infringed etc. .
However, if I were in an infringement case,
I would want someone expereinced in
infringment litigation rather than patent
prosecution. One approach might be seeking a Patent agent
with actual experience outside of collage in
the field your invention is in, preferrably
several years of experience. The more, the better.
This approach might also dictate having such an
agent prepare, file and prosecute your application
before the USPTO. When you want to license, sell or
otherwise exploit your patent, seek out an attorney.
If, forbid, you become involved in a infringement
suit, seek out an experienced litigation attorney. When comparing fees, bear in mind the basic
filing fee for a utility patent, for an individual
inventor is $370.00 as of 10/1/01 for up to 20
claims (often enough). The PTO maintains a searchable list of registerd
patent agents and attorneys on the USPTO web site.
I would make sure I consulted the list prior to
hiring anyone. Also note, if you go with the
cheapest, you may get what you pay for. Law firms
are profit driven, all while paying salaries of
$140k-$250k. What ever you do, seek competant advice and check
the PTO website.
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