The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.
Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.
Most inventors employ the services of registered patent attorneys or patent agents. The law gives the USPTO the power to make rules and regulations governing conduct and the recognition of patent attorneys and agents to practice before the USPTO. Persons who are not recognized by the USPTO for this practice are not permitted by law to represent inventors before the USPTO. The USPTO maintains a register of attorneys and agents. To be admitted to this register, a person must comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he or she has the legal, scientific, and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree.
The USPTO registers both attorneys at law and persons who are not attorneys at law. The former persons are now referred to as “patent attorneys,” and the latter persons are referred to as “patent agents.” Both patent attorneys and patent agents are permitted to prepare an application for a patent and conduct the prosecution in the USPTO. Patent agents, however, cannot conduct patent litigation in the courts or perform various services that the local jurisdiction considers as practicing law. For example, a patent agent could not draw up a contract relating to a patent, such as an assignment or a license, if the state in which he or she resides considers drafting contracts as practicing law.
Some individuals and organizations that are not registered advertise their services in the fields of patent searching and invention marketing and development. Such individuals and organizations cannot represent inventors before the USPTO. They are not subject to USPTO discipline, but the USPTO does provide a public forum (www.uspto.gov/web/offices/com/iip/complaints.htm) where complaints and responses concerning invention promoters/promotion firms are published.
The USPTO cannot recommend any particular attorney or agent, or aid in the selection of an attorney or agent, as by stating, in response to inquiry that a named patent attorney, agent, or firm, is “reliable” or “capable.” The USPTO maintains a directory of registered patent attorneys and agents at des.uspto.gov/OEDCI.
The telephone directories of most large cities have, in the classified section, a heading for patent attorneys under which those in that area are listed. Many large cities have associations of patent attorneys.
In employing a patent attorney or agent, the inventor executes a power of attorney, which is filed in the USPTO and made of record in the application file. When a registered attorney or agent has been appointed, the Office does not communicate with the inventor directly but conducts the correspondence with the attorney or agent since he or she is acting for the inventor thereafter although the inventor is free to contact the USPTO concerning the status of his or her application. The inventor may remove the attorney or agent by revoking the power of attorney.
The USPTO has the power to disbar, or suspend from practicing before it, persons guilty of gross misconduct, etc., but this can only be done after a full hearing with the presentation of clear and convincing evidence concerning the misconduct. The USPTO will receive and, in appropriate cases, act upon complaints against attorneys and agents. The fees charged to inventors by patent attorneys and agents for their professional services are not subject to regulation by the USPTO. Definite evidence of overcharging may afford basis for USPTO action, but the Office rarely intervenes in disputes concerning fees.