Patent Agent

As a patent agent, you are primarily responsible for drafting patent applications based on invention disclosures and interacting with the U.S. Patent and Trademark Office (USPTO) to help inventors obtain a patent for their inventions. You will also educate inventors to help them understand their options for filing a national and/or international patent application.

ADAPT Professional Guide

"This multidisciplinary career exposes me to law, science, and business. Being a patent agent gives me the opportunity to work in patent law without going to law school. In other words, it is a test-drive before I decide if patent law is a right fit for me. My experience as a patent agent gives me the opportunity to be at the forefront of cutting edge technologies and work with some of the world’s most innovative companies.”

Patent Agent, Vault Law 100 Firm.

Qualifications

Undergraduate degree in engineering/science. Advanced degrees may be required to practice in the life sciences technology area.

Passed the USPTO Patent Bar.

Job Description and Responsibilites

IP/Patent Manager

Tech Transfer Firm:

In a tech transfer role, you will lead internal and external patent analysis projects of all sizes.

You will be relied upon to provide individual patent analysis for both internal projects and external clients, including performing patent quality analysis. You may also be responsible for supporting more senior employees.

Your duties will include reviewing invention disclosures and searching literature and patent databases to determine the patentability of inventions. You will also draft written assessments of the prospects of obtaining patent protection and, subsequently, draft patent applications.

You will prepare responses to communications from the USPTO. Your responsibilities will also include assisting in evaluating patents for licensing, clearance, and/or litigation purposes, including evaluating the scope of patent claims, comparing patent claims to prior art and products/services of interest, and assessing the market value of the patented invention.

In-house:

Assist with operations of the company's patent transaction program. Coordinate inventor engagement activities.

Raise awareness around the patent strategy across the company. Evangelize the company’s patent strategy. Actively pursue new opportunities for exploring the patentability of assets.

Streamline review of inventions with internal legal team and outside counsel.

Track progress from invention disclosure to filing a patent application.

Create awareness about different ways IP can be developed at the company.

Patent Agent, Litigation Support

Firm:

In a patent litigation support role, you will assist attorneys in developing technical arguments and presenting scientific and technical data. This can be achieved through assisting with document review, preparation of expert witnesses, preparation of exhibits for trial, and more.

Patent Agent, Prosecution Support

Firm:

As a patent agent at a law firm, you will prepare, file, and prosecute patent applications. You may also defend patents before the U.S. Patent and Trademark Office (USPTO).

Your duties will include reviewing invention disclosures, participating in discussions with inventors to understand their technologies and innovations, and searching literature and patent databases to determine the patentability of inventions.

Patent agents may also draft written assessments of the prospects of obtaining patent protection and provide patent reviews as part of the IP due diligence for a potential merger and acquisition.

In-house:

Inventor Education - discuss ideas for potential patentability

Review invention disclosures

Counsel business groups on possible patent approach

Facilitate communications with outside counsel and inventors

Review patents or applications in a portfolio for readiness or targeted efforts

Review portfolios for possible periodic pruning

Azie's Path

Patent Agent

In my current role, I focus primarily on preparing, filing, and prosecuting patent applications. Before I draft the patent applications, I review the invention disclosure form and conduct a call with inventors to discuss their invention. Then, I draft the claims, background, detailed description, and abstract of the invention. I also prepare drawings although sometimes I use a draftsperson to prepare the drawings for me. I also review the office action issued by the Patent Examiner. Sometimes, I interview the Patent Examiner to discuss details of the rejections included in the office action. I also draft a response to the office action, which may require written arguments to establish the patentability of a claimed invention.

And, this is the path I took to get here.