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Agent vs Lawyer - Consulting the Right Professional about New Ideas and Products

Inventors Beware

Inventors are different from the rest of us; they look at the world slightly differently, which allows them to create new ideas. Another thing that distinguishes inventors is their passionate belief in their inventions. Unfortunately, for the unwary inventor, this faith in their idea makes them vulnerable to being taken advantage of. The best way for an inventor to avoid being taken advantage of, is to consult a qualified professional, either a lawyer or a registered patent agent to guide them through the complicated process of protecting their ideas.

When Should I Consult My Advisor?

The best time to involve a intellectual property law advisor, is at the beginning. It is best to know the rules before starting to play the game. Most intellectual property professionals will be willing to conduct an initial consultation with a prospective client, for a modest fee, for the purpose of providing some initial information and advice. At this consultation an inventor can find out more about what types of protection are available, and at what cost. Often a fee estimate can be made of how much it might cost to proceed with any further work.

How Do I Find One?

The best way, is to obtain a referral from your regular lawyer or accountant if you have one. They will often be familiar with a particular patent agent or lawyer, having had other clients who have dealt with them in the past. Another common way is by word of mouth; consult successful inventors and ask them who they use. Also, most patent lawyers and patent agents are listed in the yellow pages and can be contacted from there.

What Kinds Are There?

In Canada, we have two groups of professionals, agents (either patent or trademark) and lawyers who restrict their practise to intellectual property law, that is patents, trademarks, copyrights, industrial designs and the like.

Patent and Trademark Agents

Under the Canadian Patent Act, the only people who are entitled to prosecute patent applications on behalf of inventors, apart from the inventors themselves, are registered patent agents. The Register is kept by the Commissioner of Patents, and is a list of names of persons who are qualified to practice as patent agents. In order to qualify as patent agents, the people must have successfully completed a series of exams set by the Canadian Patent Office. The exams address four fundamental areas of patent practice including patent drafting, Patent Office practice and responses, validity studies and infringement analysis. Even before qualifying to take the exams, there are some prerequisites including a period of apprenticeship, and/or a technical degree from a recognized university.

There is a parallel register under the Canadian Trademarks Act, with a similar requirement of passing an exam in order to be permitted on the register. Only registered persons are permitted to use the designation of "Patent and Trademark Agents".

A patent agent or a trademark agent is the only person entitled to prepare and file a patent application or a trademark application, respectively, on behalf of an inventor in Canada. However, patent agents need not be lawyers.

Patent and Trademark Lawyers

Intellectual property lawyers are graduates of law school who have been called to their local provincial Bars. In order to qualify as lawyers, they must have completed three years of law school, obtained a LLB from the university, and, completed the articling requirements of their province. In Ontario for example, articling takes a full year, and is followed by a four month bar admission program. Then the graduates are called to the Bar as Barristers and Solicitors. Intellectual property lawyers are not permitted to prepare and file patent applications unless they are also qualified as patent agents. Patent agents on the other hand, are not qualified to appear in court, unless they are qualified as lawyers. Therefore, in general, intellectual property lawyers tend to focus more on litigation, and patent agents more on patent prosecution. As a result many professionals have qualifications in all areas, both as lawyers and as agents. However, both types of professional are needed to successfully obtain and enforce patent rights in Canada.

Who to Avoid

Avoid anyone or any organization that promises anything that is too good to be true. Inventors need to remember that there is no such thing as getting something for nothing. If you are an inventor, and are considering entering into any arrangement with respect to an idea you have, you should consult an intellectual property advisor, either lawyer or agent, prior to signing on the dotted line.

James Nenniger is a founding partner of the firm of Piasetzki Nenniger Kvas LLP, Barristers & Solicitors, Patent and Trademark Agents, a firm that restricts its practice to patents, copyrights, trademarks, industrial designs and related causes. Piasetzki Nenniger Kvas LLP is located in Toronto, Canada.