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Players in the Patent Process

By Jill Gilbert Welytok

A patent prosecution is a rather quirky legal proceeding. It's a unique process where lawyers, engineers, software developers and scientists come together to hash out what knowledge will be taken out of the public domain and granted monopoly status for the duration of a patent term.

The Agency: The Patent and Trademark Office

The prosecution process begins in the U.S. Patent and Trademark Office (PTO). The PTO is the federal agency charged with reviewing patent applications and deciding what patents should be granted. The PTO itself is a division of the Department of Commerce and is headed up by the Commissioner of Patents and Trademarks.

You can find the rules that govern the activities and administration of the PTO in the Code of Federal Regulations, which is a compilation of regulations passed by Congress to add specificity to federal statutes. The PTO web site is located at www.uspto.gov. You can also access the following from the PTO site:

  • Forms

  • Publications explaining how to complete various forms and how the PTO operates

  • Patent statutes

  • Patents issued since 1790

  • Patent applications filed since March 15, 2001

  • A list of FAQ's about patents and PTO office procedures

The Advocates: Attorneys and Agents

You can prepare your own patent application just as you can prepare your own tax return or handle your own divorce. But the more you feel is at stake financially, the more likely you are to seek the services of a qualified professional. You can hire either a patent attorney or a patent agent who is registered to practice before the PTO to assist you in the patent prosecution process.

Patent attorneys are sort of a unique breed. Many of them are engineers as well as attorneys. To practice before the PTO, attorneys must have taken science and technical classes and pass an examination that demonstrates they have sufficient scientific and technical knowledge to understand the inventions.

Patent agents don't have law degrees, but they've met the PTO requirements for scientific and technical training, and have passed a patent examination identical to that taken by patent attorneys. Patent agents are authorized to help you prepare and prosecute, or process, patent applications.

Business Tip:
Patent agents may be able to offer you a more reasonable hourly rate, but they can't represent you in any litigation or engage in any activities that amount to the practice of law.

Whether you hire a patent attorney or patent agent, you must file the correct forms to let the PTO know who's representing you and is authorized to correspond with the office during the patent prosecution. If an attorney is representing you, you need to file a Power of Attorney form with the Patent and Trademark Office. If you're represented by an agent, you need to file an Authorization of Agent form.

The Applicants: Who Can Own a Patent?

Patent rights are a form of personal property that you can sell, license, transfer or leave to someone under your will. The actual inventor isn't always the owner of a patent. A patent application can only be filed by the owner or legal assignee of the technology.

Ownership issues come up in a variety of contexts:

Inventions by Employees - Inventions created in the context of the employer/employee relationship are governed by the workshop doctrine. This doctrine presumes that an employer is entitled to claim ownership of any invention created by an employee in the scope of his or her employment. This presumption can be modified by a written agreement. A major area or controversy often centers on whether an employment relationship exists, and whether the workshop doctrine applies. Courts usually apply factors derived from IRS regulations to decide whether there's an employment relationship.

Commissioned Inventions and Consulting Agreements - A commissioned invention is one where an inventor is paid to develop a technology as an independent contractor rather than an employee. Ownership of the patent is governed by the terms of the contract.

Joint Ownership of Collaborative Inventions - The PTO permits applications for joint ownership of a patent. Joint owners often detail their ownership contributions and obligations in a joint ownership agreement.

University Sponsored Research - Most colleges and universities that fund research require faculty to sign agreements assigning ownership of patent rights to the university and require their faculty members to actively cooperate in the patent prosecution process.

Government Contracts - What happens when an inventor's employee is the government? Or when the government collaborates with private industry to develop new technology? Special federal statutes cover inventions made with government assistance.1 The government can waive some or all of its rights in such inventions.

Assigned and Licensed Inventions - It's not uncommon for an inventor to lack the capital to bring his idea to market. Inventors may enter into agreements to assign total ownership or license some of their patent rights to manufacturers or other third parties.

1. 35 U.S.C. Sec. 200-11 et seq.

 

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