An understanding of the technology surrounding an invention is one of the most critical qualifications of a patent agent or attorney. To sit for the Patent Bar Exam, a person must have one of a select few accredited engineering or science degrees or the equivalent of education and experience. There is no express requirement that the agent undergo any formal legal training, other than passing the exam.
While it is important that the agent understand the actual invention, only the highest quality patents can be written by someone who has a very broad background.
Writing a patent requires a fundamental understanding of the invention in order to describe the invention properly. If the patent describes the operation of a device, but that description is in error or technically inaccurate, the value of the patent can be diminished, especially in the defensive aspects of patent protection.
The patent agent should see the invention within the context of the existing prior art, the current state of the art, and, as best as possible, how the invention could be used in the future. Often an inventor may see the device only within the particular embodiment of his invention.
For example, let’s say that an electronics firm develops a special style of connector for a particular instrument. This connector has special mechanical and electrical functions that were needed for their particular application and addressed their specific needs. As a patent agent, I see the connector not only as a solution to their specific problem, but also solving somewhat similar problems in every application I can imagine for any type of electrical and mechanical connection. A mediocre patent will address the specific functions within the context of the client’s niche industry. An excellent patent will broaden the coverage so that the patent could be used in many other industries and contexts. Such a patent could be licensed to companies outside of the client’s industry.
My background is extremely diverse, which comes from an ever present quest to learn more about different technologies. I have worked in aerospace, disk drives, cellular phones, consumer products, high vacuum processing, and many other fields. Over the years as a design engineer, I have some 21 issued patents.
My education emphasized understanding the fundamental underpinnings of how things work. My view is that a good education is learning how to think and how to understand things, in addition to the specific formulas or subjects.