The practice of patent law is by its very nature in a state of perpetual change. In order to remain well qualified to practice, a patent agent or patent attorney must constantly stay abreast of additions and revisions to the federal patent statutes, the rules of practice in the United States Patent and Trademark Office, and current patent related federal court decisions that define new case law. When selecting a patent agent or patent attorney, a client should seek an individual who proactively pursues continuing education opportunities in order to stay current in this dynamic field.
There is another aspect of the change that is occurring in patent practice, and it relates to the recent rapid advances and assimilation of software tools and information technology. These advances are making it possible for clients and their patent agents or patent attorneys to communicate more efficiently than ever before, and for the entire patent application preparation process to be simplified and compressed. They are essential elements in a patent practice in the 21st century.
When you are evaluating a patent agent or patent attorney as a candidate to handle your patent matters, here are some criteria to help you determine if the patent agent or patent attorney is engaged in a 21st Century Patent PracticeSM. Don’t hesitate to ask the agent or attorney these questions directly if you are unsure of the answers.
- Does the patent agent or patent attorney have at least basic proficiency in the use of the latest modeling software tools to facilitate and accelerate the process of preparing a patent application?
New software tools offer a great opportunity to integrate product engineering, design, and prototyping activities with patent application preparation. The results are better quality patent applications in less time at lower cost. As an example, take a look at the images to the right. The upper image is from the 3D model of the OmnivoreTM grinder pump by Liberty Pumps of Bergen NY. The middle image is Fig.2 from U.S. Patent 7,159,806. All of the drawings in this patent were prepared from images extracted directly from the model file – in a fraction of the time that typical patent drawings take to prepare. Quality. Speed. Low cost. Want more information? See the complete article on this at IPFrontline.com.
- Is all practitioner-to-client correspondence done via paper over a matter of days, or via e-mail in a matter of minutes?
A related question to consider is whether it is reasonable to receive a bill for every letter and forwarding of routine Patent Office correspondence, when the same result can be accomplished by electronic transfer in less time than it takes to prepare the bill.
- Does the practitioner’s firm have an electronic docketing system for efficient and reliable tracking of your patent matters, or is it still a "paper practice"?
This is another tool that can prevent costly filing and prosecution errors, and improve communication between you and your patent agent or patent attorney. And it should enable your agent or attorney to check on the status of your application in seconds - so you don't get billed for a phone call just to make a simple inquiry.
- Does the practitioner’s firm make full use of PAIR in the USPTO?
PAIR is an acronym for Patent Application Information Retrieval in the Patent Office. “Private PAIR” provides registered agents and attorneys with secured access and up-to-the-minute information on any Patent Office actions that have occurred on their clients’ applications. It is an essential tool for a patent agent or patent attorney to electronically monitor actions without waiting for paper mail delivery (which unfortunately, occasionally fails to happen).
- Does the practitioner’s firm make full use of electronic filing in the USPTO?
EFS-Web, the electronic filing system in the Patent Office, was implemented in late 2006. It has been a very effective tool. From beginning to end – from application filing to issue fee payment – pretty much everything in the filing and prosecution of a patent application can be done on-line. So you should expect your agent or attorney to say goodbye to paper – and the billing for the time it takes to process it.