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