How to become a patent agent

A detailed description of how to become a patent agent

Who is a patent agent?

A licensed agent of the United States Patent and Trademark Office, whose job is to advise and assist an inventor for getting patent or applying for a patent is known as a patent agent. Their main function is assisting an inventor for filing a patent application and all works associated with such filing. They help the applicant in search of prior art, completion of all paperwork involved in the course of application, and also to work on revising of rejected patent application.

The USPTO is of the opinion and prefers that for completion of the complex procedure of patent application an applicant should always take the help of a patent agent. A patent agent can perform many duties like representing an applicant in the USPTO. The patent agent, unlike a patent attorney, is not capable of appearing in the patent infringement court on behalf of the applicant.

The question is, how to become a patent agent and this article will help to understand the procedure in an easier way.

Difference between a patent agent and patent attorney:

A patent agent’s function may coincide with that of a patent attorney’s but there is a hairline difference between a patent agent and a patent attorney. A patent agent is a cheaper option when it comes to filing a patent application to the USPTO in respect to a patent attorney. The patent attorney will cost the inventor more bucks for just filing an application in which a patent agent is a specialist. But there are some functions which a patent agent cannot perform. An agent cannot represent a patent applicant in the patent infringement court, which a patent attorney is the only capable of.

Qualification required for becoming a patent agent:

The primary educational criteria for becoming a patent agent does not require attending law school or clearing the state bar examination. Any bachelor’s degree holder or even higher can be a patent agent. The USPTO has set a qualifying examination which is like a patent bar exam. If a candidate successfully clears the examination he is automatically registered with the USPTO as a patent agent.

The qualification of an aspiring patent agent is very much relevant because the patent granting procedure requires an agent’s expertise in science and technology.  The person applying should have documented evidence that he has studied and is knowledgeable enough in all physics, chemistry, mathematics and biology. This requirement is very crucial to judge an invention and help the inventor in the application for grant of a patent. Any person who has a degree in any other subjects must have had some scientific training or any other additional courses, the failure of which will make him incompetent for appearing for the patent bar exam.

A patent agent may be in the profession before appearing or while appearing for the patent bar examination and may also hold a PhD degree. The only requisite is knowledge of science and technology or from such relevant profession.

The pattern of the examination conducted by USPTO:

The examination conducted by USPTO focuses on judging the applicant’s knowledge about federal rules, patent laws, regulations, patent procedure and ethical guidelines. The questionnaire includes 100 questions of MCQ pattern, which is divided into two groups of 50 question each with a time limit of 3 hours for each group. The examination is conducted in two halves, the first session in the morning and second in the afternoon. The examination is conducted all the year round so the applicant can appear any time feasible.

Disqualifying ground for the patent bar examination:

After all discussion on how to become a patent agent, the points of disqualification should also be mentioned. Any person convicted of a crime or has completed a sentence for crime within two years are held incompetent for appearing in patent bar examination. For such person proof of reform and rehabilitation also does not apply.

Any person who lacks a good moral and has been debarred from their profession due to such reason are ineligible to appear for the examination.

The USPTO is the deciding authority as to the final selection of the candidates. Any unsuccessful candidate may reappear for the examination provides they are not disqualified for the above mentioned reasons.

Hope this will give a clear idea on how to become a patent agent and make it a profession.

Patent Application Preparation, Filing and Prosecution basics for Inventors

Patent Application Preparation

As an Inventor you need to be aware of some of the basics or components of preparing, filing, and prosecution procedures for a Patent Application.

Some of the components and related language of Patent Application are:
• Patent Specifications, patent drawings,
• The Filing Date,
• The Claims,
• The Priority claim,
• Patent Security recommendations,
• Patent Publication,
• Patent Pending,
• Patentable Subject matter.

The Patent Claims can be described as the most important part of the Patent, it describes what is new and original in the invention for which patent is being applied for, the patent claims also clearly states the scope under which a patent will be protected. Patent specification normally contains the details of the background and general overview of what an Invention is all about, it may contain figures, and data to back up claims or explain the invention, as well as an abstract and summary of the invention procedures, techniques and systems.

Different countries patent offices have different requirements in regards to Inventors’ Patent specifications and prosecution. It is advisable to get familiar with your country specific requirement to avoid any delay in patent processing.
The claims of a patent specification generally define the scope of protection offered on a patent. This is the legal description of an invention and it is one of the most important components that can speed up your patent application. Inventors use their claims to set out the component that can infringe the patent.

The claims made by an inventor can have some other dependent claims that can narrow down the protection of patents by defining other specific features of the invention.
The filing date of your patent application is the rule that sets up a cut-off period after which any public disclosures will not be allowed to be part of the patent filing procedure.

The rule of Patent application is that the first person to make an application for the protection of an invention will be considered as the owner of such patent, therefore it is important for inventors to note the filing date when preparing their applications.
In order to get a filing date, the regulations set out by the patent office must be carefully followed especially through the documents filed. The patent office usually notifies an applicant if the requirements for a filing date are not met. It is also possible to make any corrections on your patent application without any shift on your filing date.

Priority Claim references a situation where a Patent application claims priority from a previously filed application in order to take advantage of any information disclosed on such a previous application. Inventors can make use of the opportunity in priority claim to increase their chances of getting their inventions patented, most especially when the prior filing date reduces the number of disclosures you can make.
Security recommendations are integral part of the Patent application procedures.  Patent offices may ask inventors seeking a Patent to obtain security clearance before their application is approved or submitted. Security rules differ in different patent offices, but in most cases, all patent applications are normally reviewed and any security concerns will be communicated to the inventor applying for patent. Also, making Patent application in a country other than your home country may warrant some patent security checks.

The Patent Publication are normally made some 18 months to 24 months after the earliest priority date of the Patent application. Just before the publication date, a patent application remains confidential to the patent office, and some parts of the patent application remain confidential to the patent office even after the publication day. The publication date is the official date at which a patented invention is made available.

Patent Pending simply means a warning to a third party that is it infringing on the rights of the original inventor of an idea or invention. This warning is normally send to the infringement culprit after a patent has been awarded to the original inventor. Inventors are usually advised to label their inventions “Patent Pending” so that third parties who are not aware of the patent application will know.
The patentable subject matter is often a major issue of discuss among some concerned experts. Many have argued that the first inventor to submit a patent application on an invention may not always be the main inventor of such invention, therefore experts recommend that Patent offices will need to take some precautionary steps when awarding patent rights on some inventions , they need to consider any objection that can come from other inventors before deciding who originally owns an invention.

Protecting your inventions and getting a patent to cover it has now become easy, especially when you seek the help of professional patent attorney or Patent Agent to handle the legal procedures for you. Inventnet.com provides you a patent attorney directory where you can always refer to if you want a legal representation to protect your inventions and get your Patent application filed. Our dedication to patent rights , and application filing will guaranty your success.

Basics of Patent Application

Most independent Inventors are confused about revealing their inventions to potential manufacturers or third party partners without the risk of such people stealing their inventions. Luckily there are several Patent Application agents that offer legal services to inventors who want to follow the authorized procedures when disclosing their inventions.
Few inventors will rely on trust especially when disclosing their new inventions, but with a credible agency, there is no need to worry about such issues. New Inventors also need to be aware of the recent patent law revisions that state that, any public sale or disclosure prior to filing a patent application will seriously reduce your chances of getting approval for patent application. Apart from the revisions in Patent rules, new Inventors should be aware of some Patent basics.
Patent Application can be referred to as a “Patent pending” at a Patent office for the purpose of acquiring a patent for a genuine invention that has been described and claimed by the Applicant. The application for a Patent is supported by application forms as well as Patent specification {a description of the invention}.
The application for a patent is usually supported by some correspondence that relate closely to the Invention. In order to receive a grant of patent on an original invention, the applicant must file an application at a regional Patent office and the office examines all supporting documents before granting a patent in a specified Geographical region.
Patent Prosecution is normally one of the procedures for Patent application and it is the process of arguing or negotiating and interacting with the patent office before the patent is granted. Patent Defense is quite different from Patent prosecution; Patent defense involves some legal proceedings on any third party claiming infringement on a patented invention.
There are different types of Patent application and depending on the office where your application is filed; you may get a National, Regional or International Patent. There are also four different types of applications for patent, these are;
• Standard Application,
•Provisional application,
•Continuation application, and
• Divisional application.
A Standard Application can be described as a type of Patent application that normally involves all the necessary parts of the application; these parts include claims and written descriptions of the Invention. All the necessary parts of this application are needed before a Patent can be granted. An applicant for this type of patent may or may not be successful; it all depends on findings from preliminary observations or examinations by the Patent office. A standard application for patent is also referred to as the “Non Provisional application”.
Provisional patent Application is a type of application that can be filed at any patent office, it allows the applicant place an application on file, and obtain a filing date. Provisional application for patent is often less time consuming than Standard applications because some of the complexities in standard applications can be avoid here. The disclosure for provisional application for patient is normally within 1 year and it can be incorporated into a standard application. You need to renew a provisional application for patent because it expires normally after 1 year.
Continuation Patent Application is an application that can be filed as a continuation of a previously filed application. This type of application is quite convenient especially if you want include more materials when the priority year has expired. This type of application can be a refinement of your previous application for patent; therefore it can be a continuation patent, or a continuation-in-part patent application.
Divisional Patent application is a type of application that has been divided from a previous application. This application simply is made when a component of an invention needs to be patented separately by the inventor. A divisional application can only be filed on a single subject matter that has been separated from its parent invention. Though a subject matter may be awarded a divisional patent, it will still retain the filing and priority date of the Patented Parent. Divisional patent is the most suitable for individuals who make new inventions out of a single primary invention.
Depending on the type of Patent application you filed, you might get a Regional, National or International Patent grant. The Regional grant gives you a patent over an invention within your locality or region, this simply means, your patent right confines your invention within the specified area. The National Patent right gives you the right to own your invention all over your country while the International Patent right gives you the right to own your invention all over the world {or in some other countries specified}.
The best possible way to simplify your Patent application procedure is to get the services of a Patent Attorney and this is why Inventnet is right there to help you protect your Interest. You can quickly locate an Attorney on our website- inventnet.com by searching our Patent Attorney directory. We have helped thousands of other inventors like you, let Us help you too!

NON-DISCLOSURE / NON-COMPETE AGREEMENT

NON-DISCLOSURE / NON-COMPETE AGREEMENT

This agreement is made as of the 23rd day of June, 2002, by and between: ACME Inc. located in CITY, STATE and JOHN INVENTOR located in CITY, STATE.

This Agreement shall govern the conditions of disclosure by JOHN INVENTOR to ACME Inc. of certain “Confidential Information” including but not limited to prototypes, drawings, data, trade secrets and intellectual property relating to the “Patent Pending” invention named “Mouse Trap” invented by JOHN INVENTOR.
With regard to the Confidential Information, ACME Inc. hereby agrees:
1. Not to use the information therein except for evaluating its interest in entering a business relationship with JOHN INVENTOR, based on the invention.
2. To safeguard the information against disclosure to others with the same degree of care as exercised with its own information of a similar nature.
3. Not to disclose the information to others, without the express written permission of JOHN INVENTOR, except that:
a. which ACME Inc. can demonstrate by written records was previously known;
b. which are now, or become in the future, public knowledge other than through acts or omissions of ACME Inc.;
c. which are lawfully obtained by ACME Inc. from sources independent of JOHN INVENTOR;
4. That ACME Inc. shall not directly or indirectly acquire any interest in, or design, create, manufacture, sell or otherwise deal with any item or product, containing, based upon or derived from the information, except as may be expressly agreed to in writing by JOHN INVENTOR.
5. That the secrecy obligations of ACME Inc. with respect to the information shall continue for a period ending 3 years from the date hereof.

JOHN INVENTOR will be entitled to obtain an injunction to prevent threatened or continued violation of this Agreement, but failure to enforce this Agreement will not be deemed a waiver of this Agreement.

IN WITNESS WHEREOF the Parties have hereunto executed this Agreement as of the day and year first above written.

ACME Inc.

By: _____________________________ Date: _____________

Title:___________________________

JOHN INVENTOR and SIGNATURE

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*** This is a sample and is not to be considered as legal advice of any sort. ***

Have an Idea? What is next?

From idea to invention

There are many different methods used by professional inventors designed to assist them through the invention process. Below, I will attempt to illustrate how the process should basically go from my personal experiences.

Disclaimer: I am by no means a patent lawyer or patent agent, I am an inventor. This is not legal advice and should not be constituted as such.

The first two things you can do for yourself are as follows:

Don’t be caught unaware and unprepared. Educate yourself by reading books, attending conventions and networking with other inventors to learn all you can about the entire invention process.

Do not trust promoters on invention and invention geared advertisements on the television. 99% of these are fraudulent and will cost you time, effort and a lot of money. Keeping yourself educated will help prevent you from being taken advantage of by con artists.

For a free reference and resource site, do not hesitate to subscribe to the InventNET forums, where you can connect with other inventors and find information that is vital to your line of work. This is an email based discussion group where inventors can receive quality answers to many questions.  Included among these may be answers to questions regarding the patenting process, the idea creation process, how to sell or license an invention and questions on problems you encounter while working on your own invention.

If you have questions about patenting and invention, don’t forget to check the United States Patent and Trademark Office for the information you are looking for. As all US patents are required to be registered with the USPTO, you may be able to find the answers you are looking for.

If you have an idea that you think is creative and new, you can follow the steps below in order to develop your idea.

1: Get a piece of paper and a pencil. Writing down all of the information you can on your idea is the first stage in creating an invention. This may require research, to ensure that you have the proper calculations behind your project written down. It is important to make sure you have as much detail as can possibly have for future stages of the project.

2: The next thing you need to do is explore the current markets for information on similar technologies. If your project will eventually become a consumer product, go to stores that would be likely to sell such products and look for things that are similar. Speak with the managers of each store to find out their opinions on your product, use the Internet to find more information regarding users, manufacturers and distributors of similar products. Contact these companies to find out specifications such as price and product information. You may need to visit these companies in person to discuss more in depth the requirements your product would have to meet to have a place in the current market.

3: After you have gathered all of the information you can, it is time for you to compare your invention with that information. You should be studying the novelty of the item, the marketing potentials, usefulness, productivity, price, and ease of manufacturing to begin with. This information will be able to help you form a firm foundation on what your product needs to really do. This may create some alterations to your original design, but it may be necessary in order to sell the product. It is suggested that you now go out and talk with potential users of your product and discover their opinions on it.

4: Now is the time where you must decide whether this project is worth patenting or not. This is a difficult decision to make, as you have to calculate the probability that this project will be a success. As marketing your product can cost up to 90% of all of your resources you put into it, you have to be very sure the risk is worth it.

REMEMBER: Only two percent of all patented items are successfully marketed. If your product looks risky, drop it and take on another one that will have a higher chance of success. This will save you a lot of time and effort.

When you are seeking to obtain a patent, there are several steps you will have to go through. The first is performing a patent search on the type of invention you plan on creating. A patent lawyer or patent agent basis his or her patentability opinion on a patent search. This search is used to determine whether someone has patented an invention similar to yours, which may have anticipated your invention. If this is the case, a patent examiner would have to reject the patent. This allows you to save you time and money, should a patent already exist for your idea.

Making certain that a patent doesn’t already exist that covers the same invention you are attempting to create can be done with the patent search. The first thing you will need to do in this case is perform a Classifications search. This is a part of a Preliminary search, which is free at the USPTO website. Doing this will save you money, as if your product is shown to not be a new, novel idea, then you won’t waste your time or resources working on something you cannot receive a patent for.

If you require further information on patent searches, you may read this Patent Search Tutorial.

In addition to doing your own search, you should also have one done professional. These experts are trained in doing searches for patents of various Classifications, which means you will have a definite answer on how good your chances are of receiving a patent. In general, patent searching experts will cost you $400-$800. This includes his or her patentability opinion.  As the patent process does cost several thousand dollars, this is a bad place to make a mistake.

5. Besides having technological knowledge, there are two aspects you must keep in mind before registering a patent. This process takes time and money. It will take you over 16 months to get your patent in most cases, sometimes up to as much as over two years. Expect to pay, at a minimum, of at least one thousand dollars. Most patents cost more than that, however. This is strictly dependent on what type of patent you are applying for.

6. If you have enough funds on hand, this would be an excellent time to find a patent attorney or agent to assist you through the rest of the process. Your choice should be determined by several factors. The first is to find a lawyer or agent that does not charge you for the initial visit. They must also charge a flat fee for their services. You can expect to have to pay between $2,500-$10,000. This agent or lawyer should be PTO registered.

7. If you do not have the funds required to hire a proper registered patent lawyer or agent, you may patent your invention on your own. This is a cheaper alternative. However, this can be a frustrating process. While it is not impossible, it is not easy, either.

There is now an on line patent application form available from the USPTO’s website.

8. If you are not comfortable with the final draft of your patent application, you may hire a patent agent or lawyer to proof read the draft for $500-$1,000.

9. If you have neither the time nor the money for the fees required to apply for a patent, you may consider going into partnership with an investor or another inventor, with the agreement that you will be sharing future royalties on the invention.

10. If you disclose the information about your invention to anyone before you have applied for a patent, you may not be eligible for a patent in most countries. The United States is one of the few exceptions to this rule, as they have a one year grace period in which you may apply for an application. You may, however, disclose the information on your patent prior to applying if you have had the viewer sign a non-disclosure agreement. This will not start the one year period in the United States, nor will it cause your invention to be inapplicable elsewhere.

11. A program called the Provisional Patent Application (PPA) helps you establish a priority right for your invention. This is an inexpensive way to show others that you have a patent pending. At a cost of $100, it is well worth the investment. You will have one year after you apply for this program to file a proper patent application.

IMPORTANT: This is not a patent and the information you send will not be examined, approved or denied by the USPTO. The information you provide will be filled and establish priority date for your invention only if you file a standard (real) patent application within 12 months.

To participate in this program you have to send a copy of the description of your invention to the United States Patent and Trademark Offices. You must be certain to include a clear and complete explanation of the manner, process and use of the invention in sufficient detail where a person with ordinary education in that field of study can reproduce and use this invention. The PPA should include sketches or drawings of your invention. The description of this item should match the one you send in with your real patent application or you will not be applicable for priority rights. To learn more about the PPA, you should go to the USPTO website and read the information on the pages you find there. This will give you a more precise and accurate description of the process required to make use of this program. Should you decide to file an application in this program, you can download and use software will all the requirements you need to make the process very simple.

For more information on the patent process, you can buy books that will help describe the process in further detail. One such book is Patent it Yourself by David Pressman.  Reading these books will give you access to information on how to describe your invention, and how drawings and claims are created. You will also find information on why you can place “Patent Pending” on inventions after you have filed your patent application.

Marketing your Inventions

You have established by now that your invention is unique and marketable. Now is the time where you make a plan for making money with your invention. You have two primary decisions you can make. First, you can sell or license your invention to others. Second, you can start your own business based on your invention.

There are many books that you can buy that will help you understand how to market your invention. These include, but are not limited to The Inventor’s Bible by Ron Docie, Marketing Your Invention by Thomas E. Mosley, Stand Alone, Inventor! by Robert G. Merrick, and Bringing Your Product to Market by Don Debelak.

Marketing your invention should start immediately after you have filed a patent application. Due to the time and effort involved in selling or licensing an invention, you should use every minute you have. This is something you can do by yourself. You may also choose to find someone else to do this for you. However, you should never pay any money up front to anyone. If they believe your invention has potential, they will do the marketing for a percentage of future royalties. This is where you want to make a list of manufacturers and potential users of your product. Contact the company managers and present yourself as a product developer and arrange a meeting. Do not introduce yourself as an inventor, in this case.

At this phase, you do not want to send any written presentations of your invention without a signed NDA, or Non-disclosure agreement.
Make a prototype that will show and demonstrate your invention’s performances better than words. Now is the time you want to participate at trade shows and inventing shows to display and show of your invention. You will also want to learn how to finance your own business based on your invention. Look for partners and venture capital to finance your new business.
At a very last resort, contact a contingent-fee invention broker to sell or license your invention to manufacturers.

The most important thing you should keep in mind is that you should not contact or use any invention submission company that charges you money in advance. As an Inventor, you need to be aware of invention scams, as they are out there waiting to take advantage of you. Do not market your invention until it is protected.
The subject of Invention and patenting is a vast one, and it is not my intention to present it here in complete form. Consider this short presentation as a starting point in your research.

Patent Searching

Tutorials

Patent and Trademark Resource Center (PTRC) staff are available to provide training on U.S. patent search processes and research tools including the PubWEST database, and the USPTO website .

 Classification

  1. Brainstorm keywords related to the purpose, use and composition of the invention.
  2. Look up the words in the Index to the U.S. Patent Classification to find potential class/subclasses.
  3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification .
  4. Read the Classification Definitions to verify the scope of the subclasses and note “see also” references.

Access Full-Text

    5. Search the Issued Patents and the Published Applications databases by “Current US Classification” and access full-text patents and published applications.

Review and References

  1. Review the claims, specifications and drawings of documents retrieved for relevancy.
  2. Check all references and note the “U.S. Cl.” and “Field of Search” areas for additional class/subclasses to search.

The USPTO has a lot of information regarding patent searching including a video tutorial.

You can search, view or print patents online at:

USPTO Search Patents and Published Applications

GOOGLE Patents

EUROPEAN PATENT OFFICE