Frequently Asked Questions
What is a Patent Agent?
A patent agent is someone with a suitable technical background (e.g., Electrical, Chemical, Mechanical, Biotechnological, etc.) who has been trained and has passed the Examination for Registration given by the United States Patent and Trademark Office (USPTO). This is commonly called the patent bar exam. One need not be an attorney to take the exam. Once passed, a patent agent receives a registration number and is legally permitted to file and prosecute patent applications through the US Patent Office on behalf of others. An agent may not perform any activities that are carried out in a court of law, nor render legal opinions that relate to invalidity or infringement.
How is a Patent Agent Different from a Patent Attorney?
Like the agent, a patent attorney must have a technical background and must also pass the patent bar exam. Unlike an agent, a patent attorney has earned a JD or equivalent degree and has usually passed a state bar examination. In addition to doing what a patent agent can do, a patent attorney may also litigate patent matters in a court of law, such as infringement disputes, invalidity hearings and the like.
Which should I select to help me?
Often agents and attorneys ("practitioners") work together, sometimes at a law firm or as a virtual team. Depending on the level of training and experience, an agent may have a greater grasp of the technical aspects of specific inventions and can be very effective in capturing, preparing, and prosecuting specific types of inventions. Often an agent may act as the main IP contact person for a company that only uses outside law firms, acting as the Manager of Intellectual Property for the company. So for preparation and prosecution, either an agent or attorney is satisfactory, and the selection is often made using the best fit between the practitioner's background and the specific technology involved.
An attorney is required when dealing with issues of infringement and patent validity, or to render an opinion regarding Freedom-to-Operate.
An agent may be sufficient and more cost effective, especially at the beginning of the patent process or at the early stages of a company, when "Patent First Aid" is the major concern. Once the company becomes more established and worldwide markets are involved, it is likely that additional patent attorneys will be needed to secure and defend those rights. In such instance, an agent may continue to act as the manager of the company's patent portfolio, especially if an outside law firm is used.
Why do I need to file a Patent?
You should consider filing a patent if you have an invention that has commercial value and could be easily copied once it is revealed to the public. Obtaining a patent can be a long and often expensive process, so the decision to file or not file an application should be carefully considered.
What rights are given to me if I have an issued patent?
Once you have been granted an issued US patent, you have the right to exclude others from making, selling, using or importing your claimed invention in the United States. Note that this does not give you the right to practice your invention, because to do so might infringe the patent of another. For example you may have a patent on a new compound, but the class of compounds may be patented by another.
How long is a patent in force in the US?
The current patent law allows that a utility patent, once issued, remains in force for 20 years from its earliest priority date. This date is generally the day the non-provisional application was filed.
Is there such a thing as a World patent?
No. However, the Patent Treaty Organization (PTO) accepts patent applications on behalf of its member states, and this single application serves as the effective application for each of those designated countries. This application is later published and is eventually prosecuted in each of the designated countries or patenting organizations. In countries which do not belong to the PTO, one must file an application in each.
Is there any situation where getting a patent is not advisable?
Purely scientific discoveries, even though breakthroughs, may not have any commercial value. Even though these discoveries might meet the requirements for patentability, a scientific publication might be the best course of action. Also, some patentable inventions might best be maintained as trade secrets if duplication by others would not be practical or likely. Trade secrets, unlike patents, do not expire, unless and until the secret is lost.
What are the basic requirements for getting a patent?
Assuming the invention falls into one of the classes of patentable subject matter (manufacture, machine, composition of matter, process of making), an invention must be
-Not obvious to someone of ordinary skill in the art
The law also requires that the inventor provides an adequate written description of the invention as well as provide sufficient enablement so that others could practice the invention without undue experimentation. Finally, the inventor must also include the best mode of practicing the invention.
US Patent law and patent practices are based on case law which often change, and a good patent practitioner is one who dutifully advises clients on how to meet these requirements. If not met, the patent may not be patent allowed, or worse, a patent could be invalidated when challenged in a court of law.
Keep in mind that there are other requirements which should be reviewed with a qualified practitioner.
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