Subject: Patent Agent FAQ
From: "Roger Schlafly"
Archive-name: legal/patents/agent-faq
Last-modified: 2007/10/13
Posting-Frequency: Biweekly
Copyright: Roger Schlafly

Patent Agent FAQ

What is a patent agent?

In the USA, A patent agent is someone who is licensed by the United States Patent and Trademark Office (USPTO) to represent clients in patent proceedings before the USPTO.

Is that the same as a patent attorney?

Yes and No. Yes, as far as the USPTO is concerned about patent proceedings. No, in that a patent attorney can represent a client outside of a USPTO patent proceeding, such as in trademark proceedings in the USPTO, in an appeal of a USPTO decision to federal court, or in patent litigation.

Licensing of patent agents and attorneys outside the USA may be different, and is not addressed in this FAQ.

Can patent agents give legal advice?

Again, yes and no. Patent agents will give legal advice during the drafting and prosecution of a patent application. And this advice can go beyond the representation before the USPTO. The US Supreme Court has held that activities incident to the preparation and prosecution of patent applications, such as advising on the potential patentability of an invention are also permitted. But there is no clear line here, and you may want to discuss some patent-related matters, such as assignments or employer-employee rights, with an attorney (not necessarily a patent attorney) who specializes in the area.

But no, unlike a patent attorney (or any other attorney licensed by the state), a patent agent is not authorized to give legal advice in general.

Can I get a patent myself?

Yes, you can always represent yourself. The best how-to book is Patent It Yourself, by David Pressman.

After seeing the complications and pitfalls described, many inventors hire a patent agent.

Where can I get more legal information?

The US PTO has copies of patents online, and a lot of other info.

An excellent treatise on copyrights and patents is available online. Legal Protection of Digital Information, by Lee Hollaar.

Here is some useful info and links about obtaining a patent.

Here is some info about marketing your invention.

Can patent agents help with ownership and licensing issues?

Yes. Many inventors are not sure who owns their inventions, and suffer from various legal misconceptions about patents. A patent agent can help with those issues as he investigates the patentability of your invention. Patent agents commonly do things like executing a patent assignment and recording it with the US PTO.

Can patent agents give patent infringement opinions?

Yes. Patent agents sometimes have to, such as under MPEP 708.02, so it is within the skill set and license of someone who practices before the US PTO.

When you get notice of a patent infringement claim, it is usually best to get a competent opinion on whether the patent is valid and whether your product infringes. Otherwise you can be liable for triple damages if a court finds willful infringement.

A patent agent can also handle a reexamination before the US PTO, if prior art shows that a patent's claims should be narrowed or cancelled.

My lawyer says that only lawyers can practice law. Who is right?

The state of Florida tried to regulate patent agents in 1963, and the US Supreme Court ruled 9-0 that federal law preempts state law, and that patent agents are licensed to practice patent law by the US PTO. No state has tried to regulate patent agents ever since. See Sperry v. Florida, 373 U.S. 379 (1963).

There is a common misconception that patent agents cannot perform services which the state considers to be practicing law. Eg, see the US PTO's "General Information" pamphlet.

But most of the states define the practice of law in a way that appears to include drafting patent applications, and the US Supreme Court says that patent agents can practice law in that way. There are some people who believe that Sperry v. Florida limits a patent agent to activities incident to the preparation and prosecution of a patent examination, but that is not the position of the USPTO on other activities before the Office, such as reexamination.

The US PTO is currently proposing to revise the ethics rules for patent agents and attorneys, and the new rules continue to keep a single register for agents and attorneys, with all of them equally authorized to practice law before the Office in patent matters. It adds rule 11.102(c) saying that an agent can voluntarily limit his responsibility with a client, if he wishes.

Is patent advice covered by attorney-client privilege?

Advice is usually privileged and confidential if it reflects a legal question from a client, such as in a patent infringement opinion. Such an opinion would normally only be revealed if the client decided to rely on it at a trial. In almost all jurisdictions, patent agent advice has the same privilege as attorney advice.

In federal court, information is privileged if it is prepared and submitted primarily for the purpose of obtaining legal advice on patentability and legal services in preparing a patent application. See In re Spalding Sports Worldwide, 203 F.3d 800 (Fed. Cir. 2000).

Can patent agents represent me in a patent infringement trial?

You need a lawyer to handle a court case. He does not have to be a patent attorney under the rules.

Are there any restrictions on patent agents preparing patent-related legal documents?

Possibly, in some states. Currently, none of the 50 states have any statutes or regulations specifically limiting such practices, and no state has successfully brought an action against a patent agent for such a matter since Florida failed before the US Supreme Court in 1963. Some people think that it is possible that some state will try to regulate patent agents, and that some limited regulation might survive legal scrutiny under existing precedents. Others think that such regulation is unlikely or impossible.

As an example of how patent attorneys have (unsuccessfully) tried to limit the practice of patent agents, here is a 1972 NJ advisory opinion from a committee of lawyers. It is doubtful whether these proposed rules are enforceable.

To my knowledge, no patent agent in the USA has been successfully prosecuted or punished for practicing patent law.

I have an invention to patent. Whom should I hire?

Many patent agents and attorneys specialize in particular technological areas, so make sure that you hire someone who understands your invention. Beyond that, there are the usual considerations of price, skill, reputation, availability, timeliness, etc.

The US PTO has a list of all the registered patent agents.

How do I get copyrights and trademarks?

Patent agents usually just handle patent matters. If you want someone to represent you in a legal dispute, then you probably want a lawyer. If you just want to register a copyright or trademark, the process is relatively simple and you can do it yourself. Nolo Press has some self-help legal books and information.

How do I become a patent agent?

You can find some info here:

This Patent Agent FAQ is an attempt to concisely and accurately describe patent agents, without the bias towards patent attorneys that is common on some lawyer sites that have never accepted that 1963 Supreme Court decision. It is not an attempt at consensus among all those who have opinions on the subject. This FAQ will be kept here:

Disclaimer: I believe that I have described the situation accurately. I will cite contrasting views, if they are backed up by some authority. Send comments and corrections to me at: