

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.
After you select a patent attorney or agent, please do the following before your meeting.
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.
The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.