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[Yellowfin]

Dear All,

I have a BSAE and AS-Drafting, and my current boss had me read NOLO's do-it-yourself book to help him write his patent apps, partly to make me a more marketable CAD engineer.   I/we THOUGHT it might be feasible someday to also advertise myself as a patent application writer.  But reading this and other sites, I have some grave concerns:

1) Can one even be a self-employed, legitimate "agent" or "liason" without passing the PTO exam?  (i.e., To do someone else's searches and write specs and claims, why do I need an exam cert. if the inventor can legally do it himself?  That seems a bit like saying it's illegal to have a non-laywer represent you.)

2) Two self-employed patent draftsmen (not firm agents, mind you) warned me they exist as 24/7 slaves to attorneys filing PPAs.  Can this be mostly avoided if one limits his scope to side-work with small business?  Or is my current cozy situation not a realistic expectation?

3) One of those draftsmen (a physics PhD.) said she quit writing apps for private inventors because most simply didn't know what they were getting themselves into   , and she found herself either co-inventing or stepping on attorney territory.  Is this a common experience?

4)  If there's no such thing as the "perfect art search" and no search template to go by, what is $6K a year in malpractice insurance for?  And maybe I'm answering that right now - but if someone's claim, that you discussed with him/her and wrote for them under contract is defeated in court someday, what's to stop them from flippantly coming after you for "negligence"?

I know that's a lot.  But if my kind-hearted boss is leading me in the wrong career direction, now's
a good time to find out.  Any and all help is much appreciated.

[Wiscagent]

Can one be a “patent agent” without being registered with the USPTO?
-      NO

Can one be a “patent liaison” or a “patent searcher” without being registered with the USPTO?
–      YES, provided that you do not mislead your clients into believing that you are a patent attorney or patent agent.

Two self-employed non-practitioners told me they work for attorneys.  The non-practitioners are not happy with their work.
–      Many people are not happy with their work.  The non-practitioners are low on legal totem pole.  They can not provide legal advice, they can not work with the USPTO, and all of their work must be supervised.  It is likely that they do not have a good understanding of USPTO procedures or patent law.  It is unfortunate that they are frustrated in their work, but from the attorney’s perspective the non-practitioners are semi-skilled, easily replaceable employees.  Of course that doesn’t justify poor treatment; but that’s another topic.

… she quit writing apps for private inventors because most simply didn't know what they were getting themselves into, and she found herself either co-inventing or stepping on attorney territory.  Is this a common experience?
–      I don’t know if it is a common experience, but it is not unexpected.  The typical private inventor has meager understanding of intellectual property in general or patent in particular.  There was a show on TV last week “American Inventor”.  I don’t want to discuss the show, except to note that few, if any of the “inventions” were inventions from a legal / patent perspective.  Watch the show this week  - and consider - these people could be your clients.

What's to stop a disgruntled client from flippantly coming after you for "negligence"?  
–      Not much.  Of course before you agree to work for them you would carefully explain (and document) what services you are providing, and the limitations of those services; don’t over promise.  You should have malpractice insurance.  Bottom line – If you are providing services you may be sued for activities related to your work – it doesn’t matter if you are an MD, a plumber, an attorney, a landscaper, or a patent agent.

Yellowfin, my suggestion is that you study, pass the registration exam, and then consider if you want to do patent work as your career path.

Good luck,

Richard

[Yellowfin]

Richard,

Thank you for your take.  The PTO set me straight on the legality issue; for now, this will be an interesting learning experience working strictly for this fellow, but it pays to think ahead.  If I decide I'd rather draw for a living than write for attorneys and TV stars, 'will give the exam a look.  Thanks also for the bit about insurance and an answer I didn't want to hear.  It's not stuff we like to think about, but I guess if I do go SE as anything, I won't have a choice.  Such is life.

American Inventor - Thursday at 9 Eastern!

- Chris

[KaPra]

Hi all,

I have a masters in chemistry, with two years of experience in an IP firm. Drafting (technical writing for US, EP, IPO), searching, landscapes studies, basic knowledge of US and Indian patent laws are my key strengths and skills.

I wanted to know about the kind of jobs are available for my profile.  I would be particularly interested in the combination of business development with IP and management of IP assets of companies.

Further, please advice if I should go ahead for a JD or an MBA degree in case I would want to be a part of the IP strategy planning functions of firms.

Looking forward to views and comments.

KaPra