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Wednesday, 4 March 2015

What does a patent agent do?

The coolest patent agent that I know of is Calvin's dad, from the "Calvin and Hobbes" comic strip. Bespectacled, good-intentioned, and hardworking, he always tells his son to put up with unpleasant things because they will "build character". In one comic he got annoyed with Calvin for calling him at work. Calvin wanted a story, and Calvin's dad responded:

Pretty cool, right. Can you imagine Calvin's Dad saying, "And they all lived happily ever after"? Probably not.

So just what does a patent agent do? If you want the short answer, a patent agent is someone who takes your invention and helps you to file an application for it. He's like the gynaecologist (or midwife) who helps mummies bring their babies into the world -- only, in this case, you're the mummy and your invention is the baby.

In Malaysia, which is governed by the Patents Act, a patent agent is someone who has passed the patent agent examination, and is registered with the Malaysian patent office (MyIPO, or Malaysian Intellectual Property Office) as a patent agent. Registration must be renewed every year, so the patent agent who wants to continue drafting and registering patents must pay subscription every year to MyIPO.

Perhaps it would be more suitable to talk about the "functions" of a patent agent. When I went to study my Masters in Management, I learned that managers have four functions: planning, leading, organizing, and controlling. You could say that patent agents have similar functions. Here, I will name them as: clarifying, crystallizing, drafting, and prosecuting.

A. Clarifying

A patent agent must clarify with the inventor what the inventor has invented. For example, some of the questions that a patent agent should clarify are as follows:

  • What is the invention? -- perhaps as brief a description as possible.
  • What is the invention not about? -- list down all that it isn't.
  • What are the capabilities of the invention? 
  • What problem is the invention supposed to solve?
  • How does the invention solve these problems?
  • What prior art has been created that precede this invention?
  • What prior art solves the same problems?
  • What are the shortcomings of the prior art?
  • In what way is the invention new?
  • Is the invention obvious to someone who is in that art or profession?
  • If a competitor would want to "work around" the patent, what is the best way?
  • How could we draft the patent to prevent competitors from "working around" the patent?
  • Is it possible that the invention be presented in another form?
  • Is the form presented by the inventor (e.g. the prototype or drawing) the only possible form for the invention?

And so on and so forth. All the questions and answers will lead to the next function, which is:

B. Crystallizing

The patent agent must find the right words to use for the invention. All the results of the prior art must be arranged in such a way that they show a natural progression (if the prior art is referred to, at all). The patent agent must describe the invention in such a way that captures the "main essence" of the invention. Naturally, this means trying to describe it in total, and comparing every description with the prior art. At the same time, there is an on-going process, iterative in nature, where the patent agent continually refers with the client (i.e. the inventor) to confirm -- "Is this your intention? Is this acceptable?"

Basically, in this stage, a patent agent is trying to move from an understanding to putting it into words. It's like moving from understanding your emotions to trying to put what you wish to say into the words that you should use.

C. Drafting

Now, comes the fun bit! The patent agent is engaged for the drafting of a patent application. All that clarifying and crystallizing is now turned into a proper format, which is bound strictly by the regulations (found in the Patent Act). Believe me, a patent examiner, working in the stuffy rooms of the patent office, would be happy to reject a patent application that doesn't comply to the rules. Line spacing, font size, numbered lines, etc. -- all of these look petty, but they do count. Think of first time authors who have submitted their first manuscript to an editor, and you'd understand. The editor would reject any manuscript which even appears to be bad -- nevermind that the manuscript may be good.

In the drafting bit, two important parts come into play. The first part is the description of the invention, which basically goes in this order:

  • Abstract
  • Prior art
  • Description of invention
  • Description of drawings
Then comes the second part of the invention -- the claims -- which is the most important of all. The claims basically represents the "fence around the house". It has to be wide enough to cover the bases of the invention, but it can't be too wide so that it covers things that it is not supposed to. For that reason, some patent agents tend to make a rather generic independent claim (e.g. "Claim 1"), and follow that up with more detailed dependent claims (e.g. "Claim 2") which extend and apply to the independent claims ("The invention as mentioned in claim 1 with ..... and .........")

The main thing to remember is that more claims = more cost. For the client, i.e. you, these may seem to be heavy and unworthy of your time, but do remember that if your patent is contested and made the subject of an invalidation suit, you will be thankful for wider scope.

D. Prosecuting

Finally, a patent agent's function includes prosecuting patents. This means, filing the patent at the patent office, seeking for examination of the patent, filing division of the application if necessary, etc. Patent prosecution may also include when the patent is being pushed by a foreign patent agent under the PCT treaty. Basically, whenever a patent application has been filed, from that second onward and until the day the patent application is granted (or rejected...) everything that the patent agent does can be called "patent prosecution".

Bear in mind that the patent office might raise objections on technical grounds (font size, row height, etc.) or otherwise, and the patent agent must make corrections. All that, no matter how petty it may seem, are crucial points in the life of a patent application. Failure to respond could mean certain death for your patent application -- beware! Responding and correcting the complaint doesn't mean that the patent application will be granted for sure -- again, beware!

The flowchart for the patent application process is attached below -- please click it to view in bigger size. Everything in that chart -- from filing, up to grant -- is part of what is called "patent prosecution."


In conclusion, a patent agent has four functions: clarifying, crystallizing, drafting, and prosecuting. And a patent agent will help you file an application for your invention at the patents office. I hope that you have enjoyed reading this piece. 

Thank you.

Kevin Koo
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Ronny Gage said...

well explained. there is no other way to describe this, well done. A patent agent protects your creation.