Picking a Patent Attorney

• Author: Dylan O. Adams
• Profession: Seattle-based patent attorney
• Pages: 115-134

115

8

Picking a Patent

Attorney

“No individual will be registered to practice before

the Oce unless he or she ... (i) Possesses good moral

character and reputation; (ii) Possesses the legal, scientic,

and technical qualications necessary for him or her to

render applicants valuable service; and (iii) Is competent

to advise and assist patent applicants in the presentation

and prosecution of their applications before the Oce.”

—Title 37 of the U.S. Code of Federal Regulations , Section 11.7

A patent attorney should be carefully selected, just as a ny business

partner or advisor would be selected. Patent attorneys do more than

just dra and le patent applications for you—they should be integral

and active advisors in plann ing and executing a personalized intellec-

tual property strateg y for your business. e right patent attorney can

add great value to a company, whereas the wrong one will waste valu-

able capital resources that are best used elsewhere. Finding a tr usted

patent attorney who understands your business and invention and has

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116 PATENTS DEMYSTIFIED

experience craing a nd executing successful patent portfolios is there-

fore essential.

Patent attorneys must have special qualications to properly guide

clients in the complex landscape of patent law. Obtaining a patent

requires submitting an application with t he USPTO, and anyone who

represents clients before the USPTO must pass the “patent bar,” which

is a qualify ing exam (much like a state bar exam for attorneys) that

establishes competency in patent law and in the mechanics of dra ing,

ling , and examination of patent applications at the USPTO.

Additionally, given that patents relate to technology, the USPTO

also requires that any person sitting for the patent bar exa m must have

at least an undergraduate degree in a technical or scientic eld or

sucient equivalent experience. For example, a degree in electrical

engineering, c omputer science, or biochemistry qualies a n individual

to sit for the patent bar exam. While this is t he minimum required

educational background, it is not uncommon for patent attorneys to

have advanced degrees and even experience in industr y or academia.

Although the vast majority of patent professionals are attorneys,

there is not a requirement to be an attorney to represent clients at the

USPTO. Patent bar members who are not attorneys are known as “pat-

ent agent s.”

In the eyes of the USPTO, patent attorneys and agents enjoy equiva-

lent rights in terms of representing clients during the li ng and exami-

nation process. However, the main distinction between patent agents

and patent attorneys is that agents are not licensed to practice law, and

are therefore unable to perform even the most basic legal tasks, some

of which can be important to the patent process. For example, a patent

agent cannot dra legal documents, such as a l icense, a nondisclosure

agreement, or an assignment of patent rights, and may be limited to

the use of attorney-approved forms. Additionally, patent agents cannot

make legal determinations related to patent infringement because such

an analysis requires ex tensive knowledge of federal patent law.

Despite an inability to perform legal ser vices, patent agents should

not necessarily be overlooked when choosing a professional to work

with—their inability to practice law is one of many considerations

to weigh. However, given that the majority of patent bar members

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