Attorneys and Agents
(Excerpted from General Information Concerning
Patents print brochure)
The preparation of an application for patent and the conducting
of the proceedings in the Patent and Trademark Office to obtain
the patent is an undertaking requiring the knowledge of patent
law and rules and Patent and Trademark 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 Patent and Trademark Office 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 Patent and Trademark Office
the power to make rules and regulations governing conduct and
the recognition of patent attorneys and agents to practice before
the Patent and Trademark Office. Persons who are not recognized
by the Patent and Trademark Office for this practice are not
permitted by law to represent inventors before the Patent and
Trademark Office. The Patent and Trademark Office 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/she has the legal,
and 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
The Patent and Trademark Office 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."
Insofar as the work of preparing an application for a patent
and conducting the prosecution in the Patent and Trademark Office
is concerned, patent agents are usually just as well qualified
as patent attorneys, although patent agents cannot conduct patent
litigation in the courts or perform various services which 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/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 Patent and Trademark Office.
They are not subject to Patent and Trademark Office discipline,
and the Office cannot assist inventors in dealing with them.
The Patent and Trademark Office 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 Patent and Trademark Office publishes a directory of all
registered patent attorneys and agents who have indicated their
availability to accept new clients, arranged by states, cities,
and foreign countries. The Directory may be purchased in paper
form from the Government Printing Office or from the PTOs
Office of Electronic Information on the Cassis ASSIST CD-ROM
disc. It is also available on the PTO Web site.
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 or authorization of agent which must be
filed in the Patent and Trademark Office and is usually a part
of the application papers. When an 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/she is acting for the inventor thereafter although
the inventor is free to contact the Patent and Trademark Office
concerning the status of his/her application. The inventor may
remove the attorney or agent by revoking the power of attorney
or authorization of agent.
The Patent and Trademark Office 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 Patent and Trademark Office 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 Patent and Trademark Office. Definite evidence
of overcharging may afford basis for Patent and Trademark Office
action, but the Office rarely intervenes in disputes concerning
(Texto extraído do site www.uspto.gov, do Patent and
Trademark Office dos Estados Unidos da América).