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What Should My Patent Agent Do?

What Should My Patent Agent Do?

President John F. Kennedy said: “…ask not what your country can do for you, ask what you canListen Respond

do for your country.” Both the inventor meets and the patent agent should us that as a motto

from the first time they meet.

From their first meeting, the inventor and agent share a common goal: getting a patent granted on

the invention. The inventor is the undisputed expert in the technology behind the invention. The

agent has experience in the legal requirements for getting a patent granted. Together, the inventor

and agent go through a four stage process. The stages are disclosure of the invention, preparation

of a patent application, filing of the application and examination of the application.

Typically, the inventor has much less experience in the “examination” than the agent. The

agent’s experience in examination of cases relating to other inventions means they can offer

guidance to the inventor during disclosure of the invention and preparation of the patent

application. Here is a brief description of how the inventor and agent can interact during the for


Disclosure of the Invention

Since the inventor is the undisputed expert in the technology behind the invention, this is the

stage where the inventor is most active. The agent’s role at this stage is to guide the inventor in

providing relevant material in an appropriate format and with sufficient detail. During this stage

the inventor and agent should discuss topics such as how the invention differs from previous

solutions to a similar problem, which portions of the invention are new and which portions

merely employ existing technology to perform its traditional function, and how the invention fits

into a business plan. It is important that the inventor disclose the invention to the agent before

making any public disclosure (e.g. presentation at a conference or trade show; publication of an

article; advertisement; Internet site or solicitation of a production contract from an outside


The inventor can save time and money by coming to an initial consultation prepared to discuss

these issues and with drawings and/or text to accompany their verbal explanation. At the end of

this stage agent and inventor should both understand what portions of the invention are essential,

and which features are optional.

Preparation of a Patent Application

During this stage, the agent is more active but the inventor still plays an active role. Together the

agent and inventor agree on a set of patent claims which define the scope of protection desired.

The agent should explain the role of independent claims and dependent claims so the inventor

can offer meaningful input at this stage. It is often appropriate to organize the claims in sets, with

each set directed to a different aspect of the invention.

Once the claims are agreed upon, the agent can proceed to write a complete application. During

writing, additional questions may occur to the agent. The inventor should do their best to answer

these questions in as much detail as possible.

The agent provides a complete draft of the application to the inventor for review. The inventor

should thoroughly review the entire application and make comments. It is the inventor’s job to

make sure that all relevant details are presented in a way that will be understood by someone that

reads the application. Any concerns the inventor has should be addressed by the agent.

Once the inventor and agent agree that the application is accurate and complete, the application

is ready for filing.

Filing of the Application

This stage is purely administrative and is done by the agent. Prior to filing the inventor and agent

should discuss whether the application is to be a provisional patent application (PPA) or a

regular utility application. Once that decision has been made, the agent will provide any

necessary forms for inventor signature. Filing is typically done online and a filing confirmation

can be provided the same day.

Examination of the Application

This is often the most frustrating stage for the inventor for two reasons.

The first reason for frustration is that it takes a long time. The average time for receipt of a first

Office Action (Examination Export) in the United States is about 17 months. If you file your

application as a PPA add 12 months to that figure. Depending on how many rounds of

examination there are, the total time to grant can be much longer.

The second reason for frustration is that it patent Examiners typically reject all claims in the first

Office Action. The inventor needs to be prepared for this. The fact that all claims are initially

rejected does not necessarily mean that no patent will be granted.

Once the Office Action is received the inventor has the opportunity to provide a written

response. The written response should point out reasons why the grounds for rejection are


There are two categories of reasons why the grounds for rejection may be incorrect.

The first category of reasons why the grounds for rejection may be incorrect is technical reasons.

Technical reasons are based upon an incorrect interpretation of cited references by the Examiner.

The agent will try to identify as many technical reasons as they can, but the inventor has an

important role to play here in identifying technical reasons and/or criticizing technical reasons

proposed by the agent.

The second category of reasons why the grounds for rejection may be incorrect is legal reasons.

The agent takes primary responsibility for formulating legal reasons but the inventor will have

valuable input here. Many legal arguments rest upon what a hypothetical “person of ordinary

skill in the art” (POSITA) would or would not think or understand based upon the teachings of

the application under examination or based upon the teachings of reference(s) cited by the

Examiner. The inventor is often in a better position to evaluate what a POSITA might think than

the agent.

Once the agent and inventor have discussed the rejections in the Office Action and any relevant

legal and/or technical arguments they are in a position to formulate a response strategy. The

response strategy may include amendments to the language of the claims so long as the

amendments are supported by the application as filed. Before filing claim amendments it is

important that the inventor discuss the impact of the proposed amendments on the business plan.

Once an amendment strategy has been agreed upon, the agent prepares a draft response for

approval by the inventor. As with the application, the inventor should review this response to

make sure that it is complete and accurate.

In many cases, follow up of the written response with a telephone interview can be productive. If

your agent does not suggest a telephone interview, you may want to ask about the possibility of

an interview.

If an interview is scheduled, preparation of a list of talking points can be helpful. Interviews are

typically limited to 30 minutes and it is rare to get more than one interview per office action. A

list of talking points can help the agent present arguments in a logical and convincing order.

Even though the arguments are all present in the written response, discussion can help make the

Examiner more receptive.


View your patent agent as partner in pursuing a common goal. Let their expertise complement

your own and cooperate fully with requests to provide information or review documents.


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