Posts Tagged: "Patent Agents"

Like so many things in life, experience is the best teacher, but finding a job without some experience can be extremely difficult. For that reason many times new patent practitioners, whether patent attorneys or patent agents, will decide to start a practice and begin representing clients. While there are many important aspects to starting a firm and representing clients, two critical pieces are signing up clients and holding unearned client money in appropriate client trust accounts prior to funds becoming earned.

Recently, however, the USPTO and the Federal Circuit have both clarified that a patent agent’s communications related to his or her authorized practice are protected in the same manner as attorney client communications, such as those by patent attorneys… Further, state courts are not bound by USPTO rules or Federal Circuit law. Accordingly, to the extent a patent agent’s communications regarding his or her authorized practice are at issue in a state court proceeding that can’t be removed to a federal jurisdiction, the communications may not have the same protection as that provided in a federal court or AIA proceeding. Although the circumstances under which communications between a patent agent and a client would be discoverable in litigation in state court are limited, the potential admissibility in various states leaves a gap in the potential privilege.

The point here is you need to be mindful that patent practitioners are frequently on guard when dealing with independent inventors. As with virtually everything in all walks of life, the more you know in advance the better prepared you can be… The patent attorney or patent agent you hire is there to represent you. They are not the inventor, and they need your assistance. If you really have an invention you know the invention better than anyone. Cooperation is critical. Communication is critical. The opportunity to establish a working relationship starts with the first meeting or contact, hence the need to be prepared.

The first thing to understand is that there is no such thing as contingency representation for purpose of preparing, filing and ultimately obtaining a patent. Patent attorneys and patent agents simply do not take contingency clients when the matter is patent procurement… Most inventors hate hearing this, but inventing is the easiest part of the entire process. This seemingly outrageous statement is perfectly accurate because inventing is the only part of the process that can be completely controlled. Once the invention is complete control shifts away from the inventor to others, like patent examiners and consumers, market forces take effect and even good inventions wind up being commercial failures.

Burns & Levinson announced this week that George Chaclas has joined the firm as a partner in its Intellectual Property (IP) Group. Chaclas, who has over 19 years of experience developing IP strategy for Fortune 100 and industry-leading companies, world-renowned academic institutions, startups, and entrepreneurs, was previously with Adler Pollock & Sheehan in Providence, RI. Also joining the firm from Adler Pollock are associate Daniel McGrath and patent agent Katherine Larson.

The firm has more than doubled in size with the addition of Darrin Auito, Hirotsuna Yamashita, Jessica Harrison, and James Judge. These new members bring many years of experience as counsel at top 25 law firms and examiners and senior level staff (SME and Central Reexamination Unit Supervisor) at the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (Chief Appeal Examiner and Director).

My fellow Australian patent attorney Andy Mukherji recently asked the question on this site: Are Australia’s listed IP firms doomed to fail? Doubtless the hyperbole was intentional, but Andy raises a fair point. The Australian IP professions – registered patent and trade marks attorneys (who, for the most part, would be recognized as patent agents rather than attorneys in the US) and IP lawyers – are currently engaged in what might well be regarded as a brave and daring experiment. Prior to 15 April 2013 the regulatory regime in Australia did not even permit patent attorneys to incorporate. Now, less than four years later, not only have many firms chosen to take up the option of incorporation, but Australia now has (to the best of my knowledge) the largest number of publicly-listed IP firms per capita in the world!

Gogoris and Davitz are well-known biotech and pharmaceutical patent attorneys. Their addition to Leason Ellis helps to solidify the firm as a powerhouse among biotech and pharmaceutical patent practices in New York and beyond. Also joining them are Patent Agent Jia Li and Scientific Advisor Svetlana Pavlovic.