Guidance on choosing an agent
It can be difficult to write a correct patent application, which gives you the protection you need. Whether or not you choose to get help writing it is, therefore, an important question. In many countries, the applicant is legally required to have an authorized agent. Sweden does not have such requirements, but PRV's statistics show that an application filed by a professional patent agent is far more likely to lead to a patent than one filed by the applicant themselves. PRV cannot recommend which patent agent to use, but here are some general tips on what to consider.
What should I consider when I choose a patent agent?
- All patent agents do not have the same level of expertise in all technical areas. Larger patent agencies often have many employees covering a broad field of competency. On the other hand, an agent who runs their own firm or works in a smaller organization might have just the specialist knowledge you need. In any event, the agent's knowledge of the patent system and regulatory framework should be comprehensive.
- You can investigate which patent agents are particularly active in your technical area. In the Swedish Patent Database, you can see which agents appear in different types of patent application case. However, do consider the risk of conflicts of interest. An agent who you can assume has built up a relationship with one of your potential competitors, will not be able to take on your case and it is probably best not to contact them.
Swedish Patent Database
- Read other's published patent applications within your technical area and take note of the specific expressions that appear in the applications. Pay particular attention to the wording of patent claims. In that way, you will get a basic understanding of the work of a patent agent. You can find patent documents in the databases Swedish Patent Database or esp@cenet
- Ask for an impartial meeting with one or more patent agents. In person, you can get a better idea if the agent has the right skills, if there is a commitment to the relevant aspects of your operation and, above all, if you will get along. As you will be working closely together, it is important that you have confidence in the patent agent you choose.
- Confidentiality is very important in the patent world. So make sure that the patent agent you choose is bound by ethical rules, including professional secrecy.
- In order for you to be able to benefit – and hopefully make money – from your patent, it is important that the patent agent you choose also understands the business context and the use you have of a patent. It is an advantage if the patent agent you choose is able to, when necessary, give help and advice regarding licensing, confidentiality agreements and assignments, as well as protection for designs, trademarks and domain names. If the agent does not have such broad knowledge, perhaps because they are niched in a certain technical area, you should be directed to contacts with complementary expertise within or outside of the agent's organization.
- If you are also planning to apply for patents in other countries, it is important that the agent or patent agency you choose has an international network of contacts. You can then easily get help to find knowledgeable local agents, who are needed to deal with patent applications in other countries. When necessary, your Swedish agent can also consult with foreign colleagues regarding different countries' IP laws and practice.
- Many of the rules for patent applications and patents relate to formalities. Therefore, it is important that the agent you choose has access to a stable and experienced organization, which can safely and reliably monitor time limits for replies, payments of fees and more.
- In Sweden, many professional agents are part of the organization Svenska patentombudsföreningen (SPOF). The members of SPOF are bound by the organization's ethical rules, including professional secrecy, meaning they are obliged not to disclose what they find out during confidential contact with clients.
- As mentioned, no mandatory authorization is required to act as an agent in Sweden. However, an agent can voluntarily seek authorization from the Swedish Patent Attorneys Board, which is an independent government authority responsible for the authorization and supervision of patent agents. Patent agents authorized by the Swedish Patent Attorneys Board are bound by professional secrecy and cannot even be called to witness in a trial regarding confidential client information. The Swedish Patent Attorneys Board has the power to revoke a patent agent's authorization in cases of misconduct. In less serious cases, it can give out a warning. You can find a list of authorized agents on their website.
Swedish Patent Attorneys Board
- Before the Swedish Patent Attorneys Board was formed in 2010, patent agents could choose to seek authorization from the Swedish Intellectual Property (IP) Attorneys Association. The Swedish IP Attorneys Association is a private organization that supervises its authorized members. A special disciplinary committee can, for example, give out warnings and even suspend a member from the association. Swedish Intellectual Property (IP) Attorneys Association
- The Association of Intellectual Property Law Firms in Sweden (SEPAF) is the joint organization for companies in the industry, with ethics rules for the employees of member companies, among other things. SEPAF
- When you apply for a European patent, the agent you use must be qualified to appear before the European Patent Office (EPO). Normally that requires that the agent has passed an examination to become an authorized European patent agent. All European patent agents are members of the Institute of Professional Representatives before the EPO (epi). As such, they are bound by certain ethical rules. Particularly important is that all confidential information from clients is covered by professional secrecy.
Search for epi members on EPO's website