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An inventor may come up with what she believes to be a unique idea for a product. Yet a talented and experienced patent agent will be able to spot the similarities to something that already exists in the market, and work with the inventor to refine and improve the idea into something worthy of a patent. Yabing Luo has worked nearly nine years in this area, including about seven years as a patent agent. Prior to this, she worked as a patent engineer. The 1L wants to further her career prospects, as well as be in a position to better serve her clients, by earning a J.D. at IU McKinney.

Patent agents must hold a bachelor's degree in a field of engineering or physical science, and must apply to, take a test with, and be registered with the United States Patent and Trademark Office.

Luo is originally from Chengdu in China, where she earned degrees in radio physics. After moving to the United States, she received an advanced graduate degree in electrical and computer engineering at Brigham Young University. Luo works for a firm based in Salt Lake City, Utah, with an office in Los Altos, California. After many years working in this area, she wants to be able to provide her clients all of the answers to their patent questions, rather than needing to involve an attorney colleague.

"I may provide technical advice to a client, but not legal advice, which is sometimes not good enough," Luo explained. "For clients, they do not care about what types of questions they are asking. They only wants answers from me, not from different people."

Patent agents help inventors ensure they are entitled to the intellectual property right that prevents others from using their invention in any way for a certain period, and that there are no other similar inventions that would prevent it from receiving a utility, design, or plant patent from the USPTO. Patent agents also can serve as intermediaries between the USPTO and the inventor, and may serve in prosecuting patent violations.

A typical prosecution process includes two parts: filing patent applications and responding to office actions. Attorneys are involved when the client begins the patent process, but a patent agent may work with the client independently during the application and response process. The agent helps the client prepare an invention disclosure that establishes the date, the scope and technical features of the invention. Based on the invention disclosure, the agent draws figures to outline the invention and prepares claims to identify the novel idea that the inventor wants to protect.  The agent then drafts the specification based on the figures and claims to detail the invention and explain the claims the inventor is making for her novelty. This usually requires rounds of interactions with the client. Then the patent application, including figures, description, and claims, is filed with the USPTO for examination. During the process, Examiners issue office actions to reject the application, and the agent files responses to address these rejections. If every rejection is overcome, the application becomes a patent.

Luo loves this area of the law, and being the first to know about the latest innovations.

"In this area, I can see all kinds of new technology, usually before many people know," Luo said. "This is great!"