What is a Patent Agent?

What is a Patent Agent?

In Canada, only a registered patent agent is permitted under the Patent Act to represent applicants before the Patent Office in obtaining patent protection. A patent agent is not a lawyer although many agents are also lawyers. The role of a patent agent begins when an invention is first conceived. The patent agent assesses the invention, with insights to the field of invention from the inventor, by searching prior patents and other publications to determine if the invention is patentable. If the invention appears to be patentable, the patent agent works with the inventor to prepare a document called a patent specification which contains a description and drawings showing how the invention is made and operates. The specification is also drafted to contain claims which define, in words, the exclusive rights sought by the inventor for the invention.

Patent agents must have a technical background and good writing skills in order to describe the inventions they protect. Patent agents should have at least an undergraduate university degree (many have advanced degrees as well) in science or engineering. This background greatly facilitates communication with inventors and enhances the agent's ability to understand and describe even the most technically challenging inventions.

Typically, patent agents specialize in specific technical fields such as electronics or information technology. For instance, a patent agent with a background in biotechnology will prepare patent applications arising from the genetic engineering field, while patent applications relating to a telephone exchange will be prepared by a patent agent who is an electronic engineer.

After a patent application is filed, the Patent Office examines the application assessing the patentability of the invention in light of prior art on the basis of the claims. In a process known as "prosecution" the patent agent represents their client advocating the patentable features of the invention with a view to having the application allowed and issue as a patent.