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.

11.09.21

by Gerard Fowke

Dear My 1L Self- this is going to change your life.

This week, we’ve got a very special “Dear My 1L Self.” You know, the classic series where Law Librarians, Upper-class Law Students, and other former 1Ls write actual, time-traveling letters to their 1L selves, giving them that priceless quality of advice that can only result from hindsight. Of course, our one true hope is that some of this advice will also helpful in the here and now, for current 1Ls. In today’s installment, we also get some fond nostalgic insights into everyone’s favorite law school from Leila Lawlor, Director of the Academic Success and LL.M. programs (and GSU J.D. holder)…

Dear 1L Leila,

I have so much to tell you, but I will try to make this somewhat quick because I know you have a lot going on—fulltime job, family, and LAW SCHOOL AT NIGHT! I know you love it at the College of Law. It may seem kind of uncool to love law school, but it’s okay by me. Here’s a secret for you, 1L Leila. You are going to end up working at the COL someday!! It really is your happy place, isn’t it?

So, 1L Leila, continue to work as hard as you feasibly can, but remember to keep life balanced! The hard work really will pay off. The COL is going to change your life. After law school graduation, you can quit your current job (the one that is not a great fit for you). You are going to be challenged intellectually in ways you can’t imagine. Here’s something that will blow you away: some of your professors will become LIFELONG friends! You didn’t see that one coming, did you? And here’s another piece of wonderful news: someday, when you work at the COL, some of your students will also become enduring friends, long past their graduation.

So, 1L self, enjoy the 1L experience. Enjoy the classmates around you. See the picture below? Several of your classmates in that picture from 1993 will still be your best friends in the whole world 28 years later! That photo was taken in the old law school building (the COL will get a new building in 2015). You are in the middle of the photo, standing up, and yep, you are pregnant. I know you think you have a lot going on in your 1L year, but you have no idea how much you will have going on when that baby arrives in your 2L year. Trust me, 1L Leila, you will get through it. You will thrive because of support you have at the College of Law. You have my word.

Note: There are NO laptop computers in the room! That’ll change soon. And the soft drink in the pink can (Tab) will soon be replaced with something called Diet Coke!

And here you are at your hooding in a couple of years, 1L Leila! See, you are going to make it through this!

Best wishes,

Leila

10.19.21

by Terrance Manion

Dear My 1L Self- You Are in the Right Place

The GSU College of Law Library is excited to post another exciting installment of “Dear My 1L Self.” In this series, Librarians, Law Library GRAs, Law Students, and other interesting folks write actual, time-traveling letters to their 1L selves, giving them advice and telling them what to expect from law school and the practice of law. We hope that some of this advice will be helpful for our readers. Today, we get to hear from Terrance Manion, our Discovery & Research Services Librarian and a GSU Law graduate…

Dear 1L Terrance,

I want to offer you a couple of words of encouragement and reassurance as you begin your law school career.

Law school is a challenge, yes, and attending the part-time evening program at Georgia State Law while working full time is a truly unique challenge. The program is a marathon that runs for four to five years, depending on whether you take your summers off. Pace yourself and do not count the hours until nearing the end (particularly after that second calendar year). Take comfort in the following:

First, Georgia State Law is dedicated to the part-time evening program being as academically rigorous and meaningful as its full-time day program. It is not a satellite program taught by adjuncts or a less ambitious program as some part-time law programs seem to be. It will be the same curriculum. All Georgia State Law faculty will teach in the evening program. All of the college’s educational opportunities (Law Review, Moot Court, experiential learning, study abroad, etc.) are accessible to evening students, albeit you may need to prioritize which opportunities are most important to you. Take confidence that you will be on equal footing at graduation with your full-time counterparts, if not better because you have actual life and work experience, right?

Second, in the part-time evening program, you will not find professional students but student professionals, each facing the same challenges you are facing. They are juggling jobs, classes, personal lives, and copious amounts of reading and outlining. Their days start when they get to their jobs in the morning and do not end until classes wrap up around 9 PM (and 10 PM when you take evidence). They commute home (sometimes making a stop at a bar) knowing they will do it all over again tomorrow. They have the same anxieties about managing their time and energy. They have the same questions about whether they still have the intellectual stamina and aptitude for learning. They, too, have been out of school for a couple of years, if not longer. Because of this shared starting point (and the fact they will be in all your classes for two years), there is an inherent camaraderie in the part-time evening program. You will learn soon enough that your fellow students are not your competition. They are your safety net. They are your foundation. You will look after each other. They will become some of your closest friends and remain a resource and support network for the rest of your career.

*Former GSU Law Library Director (& Associate Dean) Nancy P. Johnson*

Third, you are incredibly fortunate, and I am not talking about having the most manageable commute from your office in the law library to the classroom. You have a mentor and boss in Nancy Johnson that also navigated the part-time evening program at Georgia State Law. At the very least, she will offer a little misery-loves-company, but you know she never does the very least. She will be your advisor, cheerleader, coach, sounding board, counselor, and yes, teacher. You will take her class, and you will not get the highest grade in that class. It will haunt you the rest of your days; however, knowing your study partner, good friend, and fellow part-time evening student got the highest grade makes it a little more bearable. She’ll have you teaching the class in the a year or so anyway.

Nancy will provide the space and support foundation for you to be successful, both in the part-time evening program and at your day job. While not all of our part-time evening students are fortunate enough to have a mentor of Nancy’s caliber, I’m nonetheless confident that the support of their friends, colleagues, teachers, and librarians will be a defining feature of their success.

In short, you are part of this community, you can do this, and you found the right place to do it.

Librarian Manion

P.S. While in law school keep a list of the books you want to read for your own enjoyment. You do not get much time to read recreationally in law school but when you graduate, you will go on a reading binge like at no other point in your life. Have the list ready.

09.20.21

by GSU Law Student

Dear My 1L Self- Find your Formula for Success

The GSU College of Law Library is excited to post this 5th installment of “Dear My 1L Self.” In this series, Librarians, Law Library GRAs, Law Students, and other interesting folks write actual letters to their 1L selves giving them advice and telling them what to expect from law school and the practice of law. We hope that some of this advice will be transferable to our readers, and show that even the most experienced of us have made a lot of mistakes. Today, we’ve got a dispatch from (and to) 3LP (and Law Library GRA) T.C. Deveau…

Dear My 1L Self,

Work smarter, not harder.

Your 3LP self recently read a twitter feed proffering advice to 1L’s and rising 1L’s that went something along the lines of “you should be working every minute you’re not in class, sleeping, or eating.” This is terrible advice.

Do not put in work simply for the sake of putting in work. This is especially true if you are a non-traditional student with other obligations outside of the classroom. Just like sleeping with a book next to your head won’t help you learn, grinding for the sake of grinding won’t help you in the long run. Law School is a marathon, and you don’t want to burn out by sprinting from the starting line.

Every student is different and there is no “catch all” approach to being successful. Everyone has their own formula for success. Don’t forget to take a step back and figure out what is working for you and what isn’t. Figure out your formula.

If you grasp a topic easily, think about why that might be – was it simple, or was there some way you learned or approached the material that aided your understanding? Was there a teaching style the professor or course material used that helped you out? When you run up against a weakness, how will you address it? Should you read an additional 20 cases on the same topic with different fact patterns, or can you apply the approaches you took to subject matter you mastered to your weak spots and get there quicker? Is there a resource at GSU that may aid your understanding without hitting your head against the wall too many times?

Don’t reinvent the wheel. Take advantage of the resources GSU has to offer. Professors and GRAs always make themselves available. Campus organizations maintain wonderful outline banks for the benefit of younger students to supplement their own notes and outlines. The Law Library maintains an extensive study aid collection that is freely available to existing GSU students (can be found here: https://libguides.law.gsu.edu/studyaidfinder). Alumni are plentiful in the Atlanta law community and almost always willing and available to help mentor. Finally, your peers are always there to help out, and the GSU COL student body is widely supportive of one another. Study groups are your friend.

You made it to law school. You are driven. You are bright. You are insightful. Use that insight and be introspective. Take note of your strengths. Take note of your weaknesses and come up with a plan to tackle them. You will finish law school and pass the bar. You got this.

-Todd (a.k.a. “T.C.”) Deveau, Ph.D.

GSU COL 3LP

09.07.21

by GSU Law Student

Dear My 1L Self – Breathe.

The GSU College of Law Library is excited to post this 2nd installment of our all new Blackacre Times Series – “Dear My 1L Self.” In this series, Librarians, Law Library GRAs, Students, and maybe even alumni will write letters to their 1L selves giving them advice and telling them what to expect from law school and the practice of law. We hope that some of this advice will be transferable to our readers, and show that even the most experienced of us have made a lot of mistakes. So, without further ado, here’s 3LP (& Reference GRA) Meri Elkin…

Dear My 1L Self,

Take a breath. Maybe take a few breaths. Are we consistently breathing yet? Great! Now, go to office hours. Show up to talk to the GRA that aced this class before you. Swing by the Professor’s office that teaches the class. Do not wait until we get our first Lawyering Foundations memo back to ask questions. Do not wait until after our first cold call in Civil Procedure to admit we could possibly be confused. Go now. Ask the questions!

As it turns out, we do not know all of the things. If I am being honest, we don’t even know what we don’t know. We are going to spend a lot of time reading, listening, and trying to formulate coherent responses. Real talk: we do not always formulate coherent responses. We do not always have the right answer. Just remember, it does not do to dwell on missed cold calls. Let it go. Thank me later.

Look around, and find friends who will keep a smile on our face when we are sleep deprived and studying for finals. We will have some truly great days at GSU COL! Though, and this is not to scare you, 1L Self, we will also have some less than great days. All days are better with friends. True story.

Are we doing okay? Breathe! Law school is not a sprint. Fast forward, and it is 3LP year. We still don’t know what we don’t know. We still don’t always have the right answer. Some days are still less than great, but we learned to embrace the journey and get outside of our comfort zone. We built a network of friends, classmates, mentors, and faculty to turn to when we stumble. It may take a minute to find our footing, but take a breath and know that we will hit our stride. Trust me.

Still breathing,

3LP Meri