Inventors Eye
Inventors Eye | Jan2011 | vol two issue one0

The USPTO's bimonthly publication for the independent inventor community

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Working with a Patent Practitioner

While filing your own patent application as a “pro-se” inventor is acceptable at the United States Patent and Trademark Office (USPTO), it is strongly suggested that you use the services of a registered patent attorney or agent. Filing a patent application is a legal process and requires an extensive knowledge of patent law to be able to prosecute your application before the office. It can be done, but requires a significant amount of homework on the part of the applicant to be versed enough to draft your claims, respond to office actions and determine when to pursue and when to abandon. The USPTO requires either the inventor or a registered patent attorney or agent prosecute a patent application.

A patent attorney has a law degree, can prosecute applications before the USPTO, and can represent you in patent litigation or infringement cases. A patent agent can prosecute applications before the USPTO, but not in a court of law. To be a registered patent attorney or agent, one must pass an exam administered by the USPTO. A roster of all registered patent attorneys and agents that is searchable by name or geographic location is available on the USPTO’s website. The USPTO’s attorney roster contains approximately 31,000 registered patent attorneys and 10,000 registered patent agents.

Of the more than 40,000 attorneys and agents registered to practice before the USPTO, finding a suitable patent attorney or agent can be challenging. Here are a few suggestions to consider when hiring a patent practitioner.

  • Ask for recommendations from other inventors or from local inventor groups. Often times, inventors who have been through the process have great insight and suggestions. For a list of local inventor organizations within your area, please visit the "Organizations for Inventors" column in Inventors Eye.
  • Contact more than one attorney or agent. Nothing says you have to go with the first practitioner you contact.
  • Ask if they have experience working with independent inventors. Some practitioners have more experience with independent inventors and a better understanding of things they may or may not know.
  • Find an attorney or agent that has experience in the area of your invention.
  • Contact the USPTO Office of Enrollment and Discipline to ensure they are in good standing with the USPTO at 571-272-4097.

After you select a patent attorney or agent, please do the following before your meeting.

  • Prepare for your initial meeting by having a good understanding of the patent process. There is information on the USPTO’s website about what can and cannot be patented, the different types of patent applications, and the fees for each type of application you want to register. Additionally, you can contact the Inventors Assistance Center at 1-800-786-9199 for basic information on the patent process. And you can visit a Patent and Trademark Depository Library (PTDL), which provides a range of services to assist inventors with the patent process. The better versed you are as the inventor, the better you can relate the information to your attorney or agent.
  • Conduct a preliminary patent search to see what has already been patented and what makes your patent different. This can be done at the USPTO’s website or you can seek the services of the PTDLs which offers search assistance and other resources. 
  • Write down the names of the inventors and their contribution.
  • Write a brief description of your invention.
  • Write down when you publicly disclosed your invention. 

Before you sign your application, make sure that you read the written specification and claims. If you have any questions, ask your attorney or agent to explain. You will not be able to add anything new to your application once it has been filed with the USPTO.

Remember that once an application is filed by a patent attorney or agent, the USPTO will only communicate with the attorney or agent. Inventors often call the USPTO for updates, but they have a designated attorney or agent representing them. The USPTO does not engage in double correspondence with an applicant and a patent practitioner (37 CFR 1.33). Let them do the work for you. Also, know that it is very likely that your attorney or agent will need your input to respond to any office actions he/she receives, so keep the lines of communication open.

by Cathie Kirik : Inventors Assistance Center