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By J.D. Houvener
Patent Attorney and Founder

Hi everybody, I’m J.D. Houvener, your host of the Bold Today Show, where you, the adventurer, entrepreneur, business owner, get your daily dose of inspiration to make the world a better place. [Music]

Alright, we’re talking about patent applications, and we’re looking at all your different options. You’ve got this week; back on Monday, we talked about the fact you could just straight up not file a patent application. That is an option. You could file on your own, or you can hire a cheap company online like Legal Zoom. And today, I’m going to talk about the fourth option you have, which is hiring a patent agent, as opposed to a patent attorney, to do the job for you, to file that application.

So, all these options we’ve talked about are truly available to you. As we’ve talked about the different options in terms of time and money and investment you put into moving your invention forward, none of these options seem to really fit, seem to be worth it, and are really not viable for you moving forward.

This last one here I want to explain in different terms. I’ll help you understand the difference between a patent, usually, get a patent attorney. A patent agent is someone who’s a technologist, someone that’s gone through engineering school or has got the equivalent number of credits through study hours and earned some sort of a science degree. And then they have sat for what’s called a patent bar. So, you don’t have to go to law school; you simply take the tests that patent attorneys take. They just don’t go to law school. And so, patent agents don’t really have an understanding of the law, but do have a good understanding of the patent procedures manual. It’s called the MPEP, that manual for patent examination.

In essence, an agent has just as much knowledge as an examiner at the Patent Office. And so, while they’re not legally trained, they are eligible and can legally represent inventors and file applications.

One of the major issues with looking at moving ahead with a patent agent, you know, if you really are concerned about the long-term game, you’re not just looking to get the patent filed, you want it to be a patent that will have enforceability if you ever had to use that technology and use that patent to cease to sue an infringer. You want to make sure that those claims as written are going to be enforceable in a court of law.

And a patent agent may be able to help you write the spec and claims and drawings such that you can get around an examiner. But they’re probably not going to be able to help you formulate the right claims and think strategically about how this is going to be enforced should it end up in the unfortunate case in front of a judge and jury.

So, thinking of what, in terms of these specifications, patent agents will tend to write much more strictly in line with what your first invention, your first iteration was, or as a patent attorney is going to take a look at that spec and look at recent case law to see what juries are looking at, what judges are determining infringement on when they’re looking at claims. They’re trying to come up with what’s called a Markman hearing in Section 271 of the patent law. They have to go to determine claim construction, what do certain words mean. And so, what a patent attorney is going to be sharp to listen for is recent case law at the district court or Federal Circuit or even Supreme Court that has decided cases based on how claims are interpreted, whether it’s the broadest reasonable interpretation, and putting that spec, that written description together, such that it’s going to be favorable to the patent holder.

So, this has been educational. I hope you understand the fact that, you know, while working with a patent agent is an option, it really is not your best option in terms of really fortifying.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/