What legal service/advice can you get from a patent agent, and is it confidential/privileged?

When it comes to legal rights, in pertinent part, property rights, there are licensed professionals who offer help in exercising or protecting your rights. Lawyers. 

Patents are a kind of property, specifically intellectual property (it is a right claimed under Article I, Section 8, Clause 8 of the US Constitution). A patent is the right to prevent others from making, using, or selling your invention. Property rights are your rights to enforce. You can do this yourself, but usually it is far more effective and efficient to hire a professional as the patent laws are complex and detailed.  An improperly filed and/or drafted patent application may prevent you from asserting your rights against potential infringers. 

The professionals that deal with personal property, real property, and intellectual property are lawyers, with one exception. Among the bundle of intellectual property rights are  patents. The USPTO issues patents, and registers professionals to practice before the office. Being a lawyer does not get one registered to practice before the USPTO, registration requires a separate application and examination process. In other words, an attorney needs to take an additional bar in order to be allowed to communicate with the USPTO (“prosecute”) on a client’s behalf regarding a patent.

Only those licensed to practice before the USPTO can prosecute a patent. Only patent practitioners (patent agents and patent attorneys) can prosecute patents, attorneys cannot. Whether a patent practitioner is a patent agent or a patent attorney is determined by whether the patent practitioner is a member in good standing of a state legal bar – a lawyer. Thus, while patent agents prosecute only patents, patent attorneys can also prosecute other legal rights. 

Patent agents are not authorized or licensed to give legal advice in general. With that said, the US Supreme Court has held that patent agent activities incident to the preparation and prosecution of patent applications, even beyond the representation before the USPTO, like advising on potential patentability of an invention is permitted.

Patent agents can give legal advice during the drafting and prosecution of patent applications. This is not open ended. The usual forms of this legal advice are opinions on prior art, novelty, patentability, patent validity, and infringement. Patent agents can help with ownership and licensing by clearing up legal misconceptions about patents and recording assignments. Patent agents can also handle reexamination proceedings before the USPTO if the prior art shows that the claims should be narrowed or cancelled. 

However, for some patent related matters like lawsuits for infringement, assignments, or employer/employee rights, you should discuss these things with an attorney who specializes in that area. Your best attorney choice may not be a patent attorney. I maintain relationships with attorneys I trust should you need to engage an attorney and need a referral.

The advice and interaction with a patent agent is covered by the same confidentiality standard as an attorney, so, client communication is held in confidence and is protected under privilege. Patent agents hold the same basic professional liability insurance as that held by attorneys, just limited to the practice of patent prosecution. 

Gregory D Carson, Patent Agent

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