What is a patent agent?

Agents of Invention, Part 1

by T.C. Deveau, Intellectual Property Correspondent & Law Library GRA

Welcome to the first installment of Agents of Invention, our new series exploring the exciting world of patent agents by the law library’s own T.C. Deveau. T.C. has a PhD in Neuroscience and has worked as a patent agent for almost 7 years. He’s currently in the final year of GSU Law’s part-time program.

Imagine helping entrepreneurs ensure that they actually own the exciting inventions that they’ve dedicated so many hours to creating. Imagine collaborating with attorneys and scientists in an environment that where your technical background can make an enormous difference. Imagine a career that helps prepare you for a sophisticated area of legal practice, but doesn’t require a J.D.

If this scenario sounds appealing, have you ever considered becoming a patent agent? A patent agent is someone with a science or engineering degree (i.e., bachelors, masters, Ph.D.) who writes and prosecutes patents on behalf of inventors.^[1]Often, these patent agents/prosecutors work at law firms, but they can also work for other organizations, or even for themselves.

^{_{The USPTO HQ in Alexandria, Virginia.}}

Patent agents have taken and passed the U.S. Patent and Trademark Office Registration Exam (the “Patent Bar”), which allows them to represent clients (inventors, companies, or other organizations such as universities) in front of the USPTO. Patent agents can submit patent documentation to the Office and participate in the substantive examination of patents. Basically, patent agents can help clients with anything relating to obtaining a patent from the USPTO.

“Anything relating to…” sounds really broad, but it generally consists of the following:

Consulting with the client about their invention;
Working with them to determine a filing strategy that best fits your client’s interest (and budget);
Assisting with preparation and filing of the application;
Working with USPTO Examiners to get the application allowed; and
Working with the USPTO on procedural issues so that the patent is ready for publication and issuance.

For a given client, you may take a patent from start to finish in this manner, for others, you may only work on certain pieces of the puzzle.

While patent agent work is largely U.S.-centric, it’s important to keep in mind that the United States is not the only jurisdiction where intellectual property rights may be relevant or meaningful for a given client. Patent agent duties often include, coordinating patent application efforts not only in the U.S., but in foreign jurisdictions as well, such as Europe, China, and Japan. This involves working with attorneys or agents in other countries to further your client’s interest in these jurisdictions.

At law firms in particular, the duties of a patent agent often overlap significantly with those of patent attorneys involved in patent prosecution, although an agent’s duties are more limited in scope. While agents can help clients obtain patents, they cannot be involved in matters that involve giving legal opinions. Aspects of the field that follow grant of a patent, including patent invalidity, infringement, and licensing, must be handled by attorneys. When clients have questions like “what can I do with my patent after it is has been issued?” or “I think our competitor is infringing our patent, can you investigate it?,” it’s time to get an attorney involved.

Whether you’re interested in becoming a patent agent (remember, no J.D. required) or a patent attorney, GSU provides great opportunities to students looking to break into the field of patent prosecution. GSU provides many courses tailored to patent law, both from a doctrinal and a practical experiential perspective.

It is common for patent agents in and around Atlanta to enroll in the part-time J.D. program at GSU and take the next steps towards becoming an attorney. The part-time program provides a lot of flexibility for those looking to further their careers, and firms in the area even provide incentives to patent agents for going to law school (such as tuition reimbursement). While at GSU Law, students can further immerse themselves in the world of intellectual property beyond patents. GSU offers classes covering related topics like copyright, trademark, trade secrets, and contract drafting, all of which are quite helpful in becoming a well-rounded IP attorney.

Some of you reading this may be thinking, “but I’m already in law school—why do I care about patent agents?” Well, it’s not uncommon for students at GSU to take the Patent Bar, skipping the agent position entirely. Indeed, many students find GSU Law coursework—classes like Patent Law and Patent Drafting & Prosecution—to be a huge help in their Patent Bar prep (look for coverage of this in a future post).

Today, I’ve given you an overview of the patent agent position, discussing what it involves and discussing some of the requirements of the field. Stay tuned for our next installment of Agents of Innovation, where I’ll describe a thrilling “day in the life” of a patent agent.

[1] Did I mention that this position also allows you to call yourself a ‘prosecutor’? The ‘patent prosecution’ process refers to the process of applying for and pursuing patents.

04.13.22

by GSU Law Student

Why the NCAA sues over the use of ‘March Madness’

By Ross Crowell, Law Library Sports Law Correspondent

As the men’s NCAA Tournament just wrapped up with Kansas taking down North Carolina in the National Championship, one interesting legal issue that often arises around the tournament is the NCAA’s trademark on the term “March Madness”.

The NCAA has “aggressively protected” its trademarked marketing programs, including “March Madness”. The first time the phrase was first used as a reference to the NCAA Tournament was in 1982 by announcer Brent Musberger. The NCAA attempted to trademark the term in the 1990s, but the term was already trademarked by the Illinois High School Association, which previously purchased the term’s trademark rights from a Chicago television company.

The Illinois High School Association ended up suing an NCAA licensee to enjoin it from the use of the term. However, the NCAA won, as the Seventh Circuit found that “March Madness” had become a dual-use term, as it could reference both the Illinois High School Association and NCAA basketball tournaments. While both associations used the term for a period of time, the NCAA ended up buying out the Illinois High School Association’s ownership of the trademark.

Along with “March Madness”, there are several other basketball tournament terms that the NCAA has trademark protection over, such as “Elite Eight”, “Final Four”, “68 Teams, One Dream”, “March Mayhem”, “March to the Madness”, “Road to the Final Four”, “Selection Sunday”, “The Big Dance”, and even “Read to the Final Four”, among many other terms. Thus, the use of the term “March Madness” or any of these other NCAA trademarked terms requires NCAA approval.

As the NCAA has trademark rights to this term, that means the term cannot be used as a catchphrase by anyone else, even in an unrelated industry. For example, a local country club could not promote a golf tournament under the name “March Madness”, despite the event being completely unrelated to the NCAA basketball tournament.

While it is impossible for the NCAA to find every commercial use of the term in violation of its trademark protection, the NCAA often sends cease-and-desist letters to owners of bars, restaurants, and other companies that are using the trademark without a license.

The NCAA strictly enforces potential trademark infringements in order to maintain the rights to their trademarks. If the NCAA does not enforce protection of their trademarked terms, they could lose the rights to their protected use of the terms. For example, the terms “thermos”, “yo-yo”, “laundromat”, and “hacky sack” were once trademarked, but became revoked once the terms became generic due to not being protected by the terms’ owners.

Thus, while the NCAA may appear aggressive for vigorously protecting the use of “March Madness” and other trademarked terms, they police the use of the term in order to maintain their trademark privileges. The NCAA likely does not want “March Madness” to become a generic term, so it must enforce the use of the term, even if the use by other parties does not impact the NCAA’s business interests.

08.19.11

by Terrance Manion

The Real 8,000,000th

Earlier this week the US Patent and Trademark Office (USPTO) granted patent number 8,000,000 to Second Sight Medical Products Inc. for a device that helps people with degenerative vision problems to see better. It’s certainly a far cry from patent number one granted after the Patent Act of 1837 for enhancements to locomotives wheels.

Now I don’t want to crash anyone’s party, namely the USPTO’s party at the Smithsonian American Art Museum on Sept. 8, 2011 recognizing granting patent number 8,000,000, but patent number 8,000,000 is not actually the 8,000,000th patent granted. It is worth noting that patent number one is not the first US patent issued. Rather there were around 9,900 patents issued prior to patent number one. These patents were originally unnumbered; however, the USPTO has since gone back and numbered the surviving early patents, prefacing the number with an “X”. Today these patents are commonly known as the X-Patents. That being said I am unaware of these patents having any special mutant abilities, save an immunity to fire. Unfortunately less than 2,000 of the early patents survived the patent office fire of 1836.

So the US actually issued its 8,000,000th patent about 9,900 patents ago and with an eye to being more precise and giving credit where credit is due, I propose here that we instead recognize Mitsubishi Heavy Industries, Ltd.’s patent for a Battery control device for hybrid forklift truck —US PAT 7,990,100– as the closest thing we will ever come to a 8,000,000th US patent.

So please join in the USPTO celebration on September 8^th but also have a drink in the name of Mitsubishi Heavy Industries, Ltd 8,000,000th US patent and X-Patents.