From: oppedahl@panix.com (Carl Oppedahl)
Newsgroups: misc.legal.computing
Subject: Re: Patent info request
Date: 8 Nov 92 05:31:54 GMT
Distribution: misc
Organization: PANIX Public Access Unix, NYC

In <bhayden.721143602@teal> bhayden@teal.csn.org (Bruce Hayden) writes:

>berryh@huey.udel.edu (John Berryhill, Ph.D.) writes:

>>Both Carl Oppedahl and Bruce Hayden have told you that step one is
>>to get a patent attorney.  

I don't believe either Mr. Hayden or I said this.
Can the writer back this up with a quote?
Two quotes, actually.

>>That's not surprising since they are both
>>patent attorneys.  However, you should know that there is a much
>>cheaper alternative since practice before the patent office and the
>>board of appeals happens to be one area of law where non-lawyers can
>>be admitted (and, yes to the patent attorneys, the Supreme Court has
>>ruled that such practice properly constitutes the practice of law).

>>Among the other publications that you'll find at your local Patent
>>Depository Library (of which I'll post the list as soon as I remember
>>to bring it home from work), is a directory of registered patent attorneys
>>and agents.  Patent agents are people who do not have law degrees, but
>>who DO have technical degrees and have passed the examination to
>>practice before the U.S. Patent Office.

>>To suggest that a patent attorney is necessary for obtaining a decent
>>patent is quite simply wrong.  

I don't believe either Mr. Hayden or myself said this or suggested this.
 
>>It is true, however, that unless you
>>want to spend quite a bit of time learning a somewhat arcane body of
>>rules, laws, and cases, you are best advised to seek professional
>>guidance - but that guidance need not be provided by a lawyer.

>>-- 
>>                                                John Berryhill, Ph.D.

>Actually, as one of the patent attorneys mentioned above, you may
>surprised to discover that I do not disagree with JB. Patent agents,
>probably because they don't have the time invested in law school that
>we do, are almost allways cheaper. Unfortunately, it is harder to find
>them, since the local bars invariably try to keep them limited in
>their advertising. Dr. Berryhill's suggestion is a good one for finding
>one. You can also get the publication from the PTO. In fact, that is
>the only way I know who the patent agents are in Colo. where I
>practice.

>Technically, there are a couple of services that we (as patent attys)
>can provide that a patent agent cannot. A patent agent cannot tell you
>whether a patent is valid or not. That would be interpretation of a 
>legal document for another, and thus the unlicensed practice of law.
>He possibly may not be able to tell you if the prior art makes your
>invention unpatentable. However, this latter is borderline since he
>definately can take the same prior art and write an application that
>claims around that prior art.

>The place where I would draw the line is that if you want to obtain 
>a patent, a patent agent is an excellent choice. However, if someone
>accuses you of patent infringement, contact a patent atty.

>Also, I want to reitterate my point that you look for someone (whether
>agent or atty) who understands software and software patents. I see
>every day what I consider malpractice by otherwise competent patent
>attys. when they try to deal with software.

>Bruce Hayden
>bhayden@csn.org
>(303) 758-8400

Of course an inventor can apply for a patent without hiring anyone
to represent himself/herself.  Neither Mr. Hayden nor myself has
ever, so far as I can recall, suggested otherwise.

And of course an inventor can hire a patent agent (as opposed to 
a patent attorney) to represent himself/herself in attempting to
get a patent.  Again, neither Mr. Hayden nor myself has ever,
so far as I can recall, suggested otherwise.

I believe that one factor worth considering when selecting someone
to prepare a patent application is whether the candidate has
litigated patents as well as prepared patent applications.  I
believe that one who has litigated patents will draft a patent
application with the benefit of the litigation experience, and 
will be able to choose and fine-tune the language of the application
informed by that experience.  By definition, one who has litigated
patents is an attorney.

I have tried to imagine what made the commenter think that Mr. Hayden
or I said those things.  All I can think of are the standard
disclaimers that all lawyers must necessarily place in their
writings.  I often will say something like "This is not legal 
advice.  For legal advice on this subject, see a lawyer."
But it would be wrong to try to stretch such a disclaimer into 
the sorts of things above which were being put into my mouth.

And it is true that patent agents cannot give "legal advice", but
can only represent inventors before the patent office.


Carl Oppedahl AA2KW  (intellectual property lawyer)
30 Rockefeller Plaza
New York, NY  10112-0228
voice 212-408-2578     fax 212-765-2519
Newsgroups: misc.legal.computing,misc.legal