Business Metamorphosis LLC

Patent law in its practice requires a sound knowledge of science and/or engineering in order to establish and effectively protect the inventor's property rights in his or her patentable invention. This is true during the patent procurement period before the United States Patent and Trademark Office (PTO) and also during the patent exploitation period that comprehends drafting patent contract agreements, enforcement litigation before the federal courts (for infringement under the patent statute) and before state courts (for license and assignment contract interpretation and enforcement).

Because of the signal importance of scientific and/or engineering training in patent law, this branch of law may be practiced before the PTO by lawyers and non-lawyers alike if they have the requisite scientific and/or engineering education and if they pass the PTO examination that establishes the required level of skill in patent law. Very few administrative agencies of the U.S. Government admit non-lawyers to practice law before them. The PTO is the only administrative agency that requires both attorneys-at-law and non-lawyers to pass a special examination to demonstrate their level of competence. An attorney-at-law who has passed the examination is denominated a patent attorney. A non-lawyer who has passed the examination is denominated a patent agent.

In order to be admitted to the PTO examination, the candidate must show scientific and technical qualifications sufficient to render effective and valuable service in the preparation of applications for patent. This requirement can be met by the candidate's having a Bachelor's degree from a recognized U.S. college or university in fields of engineering or science specified by the PTO.

Patent lawyers and patent agents are equally privileged to practice patent law in all respects before the PTO. The registration of attorneys and agents for practice before the PTO is controlled by Title 37 of the Code of Federal Regulations sections 10.5, 10.6, and 10.7.

A patent agent may not undertake representation for a client of any legal matter other than a patent matter before the PTO. Thus, an agent may not handle a trademark proceeding even though it would be processed within the PTO. Nor may an agent deal with other forms of intellectual property that are not in the PTO, such as trade secrets or copyrights. A patent agent may not draft a patent license or assignment. A patent agent may not bring patent infringement litigation under the patent statute in the federal courts. A patent agent may not bring a contract litigation involving a patent license or assignment in the state courts. Indeed, a patent agent may not even appeal the rejection of patent claims by the PTO to the United States Court of Appeals for the Federal Circuit even when the agent originally wrote and prosecuted those claims. A patent agent may, however, appear as an expert witness on patent practice when such an appearance is appropriate in litigation before state and federal courts.

In short, the law domain of the patent agent is all patent proceedings within the PTO, including appeals to, and proceedings before, the U.S. PTO Board of Patent Appeals and Interferences.