Kevin Mark Klughart

PhD, PE, JD, MIP, LLM

Patent Attorney / Engineer

 

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About Me

 

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Core Principles

A core foundation of my patent practice is the belief that good patents require a high level of technical expertise in the patent practitioner.  A driving force in my pursuit of patent law as a profession was my experience in industry that many patent attorneys/agents lacked the basic educational background to properly understand and describe an applicant's invention.   Without this core educational background and industry experience it becomes problematic as to whether properly drafted patents can be expected from a patent attorney who frankly lacks the background necessary to fully understand the technology to be protected.  Statistics indicate that most patent practitioners do not have relevant industry experience (entering law school directly from undergraduate engineering or science backgrounds) and in general lack advanced educational degrees to put them on par with the inventors they are expected to represent before the USPTO.

Some interesting statistics on patent attorneys

A recent analysis by some professors at Franklin Pierce Law Center of the patent agent/attorney database at the USPTO revealed some interesting statistics on the technical background of patent attorneys and agents.

First, the analysis reveals that only 25% of the agent/attorneys have backgrounds in electrical engineering and/or computer related fields:

In other words, 75% of the patent attorneys you encounter do not have the technical background as an undergraduate to properly understand and understand these types of inventions.

The claimed technical background of these applicants only includes about 33% who claim electrical engineering as their main technical background:

In other words, 66% of the patent attorneys you encounter do not have the technical background as to properly understand and understand inventions in the electrical engineering arts.

What is very surprising are the statistics on exactly how much industry experience the patent agent/attorney pool has.  The following chart summarizes the amount of hands on technical experience achieved before moving from engineering to patent law:

 

Here it is obvious that with respect to patent attorneys, about 66% don't have 10 years of technical experience in a real engineering environment.  In fact 33% have almost no practical engineering experience - they went directly from undergraduate engineering to law school with no actual engineering experience at all!

 

Finally, the most telling chart which depicts the lack of technical depth in the patent agent/attorney ranks is the following chart that depicts the number of patent attorneys with a doctorate (PhD) in their field:

 

Here we see that only about 3%, or one-in-33 patent attorneys with an electrical engineering background has a PhD in their field.  Those of you in the real world realize that it has been the norm now for over a decade that most engineering firms hiring EEs require a minimum of a Master's degree and experience (or alternatively a doctorate) just to qualify for the position.

 

I ask you why shouldn't the same standard be applied to patent attorneys practicing in the electrical arts?  How can you expect a patent attorney to fully describe an invention that he/she doesn't have the technical background to understand?  This concept is one that is obviously not lost on persons in the biological and chemical arts, so why it such a problem for the EEs?

Why Choose Me as Your Patent Attorney?

While USPTO ethics rule prohibit patent practice in areas outside of the practitioner's area of technical expertise, this in fact happens all the time in the industry.  Most inventors are generally unprepared to question the technical credentials of their patent attorney, and as such this continues to be a problem in the industry.  In response to this observation I ensured that before pursuing a career as a patent attorney I obtained education and experience necessary to properly represent clients in a variety of technical areas.  A summary of these relevant credentials is as follows:

Undergraduate degree in Electrical Engineering from MIT

Masters and Doctorate degrees in Electrical Engineering from Texas A&M University

Juris Doctor (JD) and Master of Intellectual Property (MIP) degrees from Franklin Pierce Law Center

Master of Laws (LLM) in Taxation from Boston University

Registered Patent Agent/Attorney since 1995 with 135+ patent applications prepared

State Bar Licensed in MA,ME,NH,TX,VA.

Licensed/Registered Professional Engineer (CA,MA,NH,TX).

Industry related experience includes more than 10 years as a software engineer and subsequently as an integrated circuit designer/staff level engineer.

Not board certified in any legal specialty except patent matters, but authorized by state bar license to practice in all matters before any state/federal court in MA,ME,NH,TX,VA.

I encourage potential clients to rigorously inspect the educational background and industry experience credentials of their potential patent attorney.  I believe that my background in many cases is great fit for the inventor, especially  the input I often provide to clients regarding improvements in their inventions and the scope of patent protection available.

What you should know about patent attorneys

While any inventor may write his own patent application and prosecute it before the USPTO, any person who performs this function for the inventor must be licensed and registered by the USPTO.  This licensure/registration process generally requires that the person have an engineering or scientific educational background and pass an examination given by the USPTO to verify their minimal competence in areas of patent law and practice before the USPTO.

While many firms hire "technical experts" to draft patent applications on behalf of inventors and have a licensed patent attorney "sign off" on his/her work, this practice is a end-run around the USPTO licensure/registration process and in my opinion a fraud on the Patent Office.  I caution prospective clients to be wary of any patent practitioner who has not obtained USPTO licensure/registration, as there is no guarantee that this individual is competent to draft their patent application.  Furthermore, since only patent agents and attorneys have the benefit of client privilege protection, revealing your invention to a "technical specialist" may constitute a public disclosure of your invention, resulting in the loss of important patent rights.  Note that premature public disclosure is one of many weapons an adverse attorney may use to invalidate your patent if it is ever infringed or litigated.

Persons passing the required USPTO qualifications and exam may be non-attorneys or attorneys.  Non-attorneys in this context are identified as Patent Agents and attorneys as Patent Attorneys.  Patent agents may only prepare and prosecute patent applications before the USPTO.  They may not provide any other type of legal service or consulting.  This would include providing legal documents, prosecuting copyrights, trademarks, or providing any aid with respect to client legal matters outside of the context of the USPTO.

As of March 2010, the USPTO Attorney/Agent roster contained approximately 40000 names, about 25% of which were patent agents.  If you exclude provisional registrants (those who have provisional registration but are not fully licensed), patent agents, government employees, and individuals residing outside of the United States, the total patent attorney count is about 29000.  If you limit this to patent attorneys who are below retirement age this number drops to about 25000.  This number is dwarfed by the total number of attorneys in the U.S., estimated at 1,143,358 in 2007.  Thus, patent attorneys represent about 2% of all U.S. attorneys, with approximately 1 in 50 attorneys being licensed to practice before the USPTO.

What is unique about my background?

While all patent attorneys must be licensed by the USPTO, there are several aspects of my background that if not unique, are certainly rare in the field of patent practice:

Advanced Engineering Degrees.  A small percentage of patent attorneys hold a master's degree in any area of engineering.  The percentage of patent attorneys holding a doctorate in any area of engineering is VERY small.

Engineering Licensure.  A very small percentage of patent attorneys are Registered Professional Engineers.  This state licensure requires a minimum of 5 years industry experience in addition to examinations in general engineering principles as well as discipline-specific testing.

Graduate IP Training.  Very few patent attorneys have completed an additional graduate law degree specializing in intellectual property law, such as a Master of Intellectual Property (MIP) or Master of Laws (LLM) in Intellectual Property.  One reason for this is that these advanced degrees are expensive to obtain.  The other reason is that there are only about a half dozen good schools in which to obtain such an advanced degree.  The importance of this degree in an IP protection context is that most patent attorneys learn their trade after exiting law school and during the first five years of practice within a law firm context.  However, this form of training does NOTHING to prepare the trainee for anything other than patent practice.  Generally speaking, other areas of IP such as copyrights, trademarks, trade secrets, and the like may be completely ignored in this training phase.  Thus, the trainee end up with a very narrow experience with respect to protecting the client IP.  A graduate IP degree addresses this deficiency by providing training on general IP principles

Passing the Patent Bar.  A very small percentage of patent attorneys pass the USPTO patent bar BEFORE entering law school.  Most patent attorneys require one or more years of study after passing the state bar exam to sit for the USPTO patent bar exam.  I am one of few patent attorneys who passed the patent bar before entering law school without the assistance of working at a law firm.

Patent Practice Experience.  I have been writing patent applications for more than 15 years with over 135 applications drafted so far.  While there are approximately 40,000 patent attorneys registered to practice before the USPTO, about 75% of the active practitioners have not been practicing as long as I have.  Experience counts in this arena, and like it or not, many of the current patent practitioners simply lack sufficient client and patent drafting experience to provide broad and competent IP protection for their clients.

Multi-State Bar Licensure.  It is very rare for any attorney to be licensed in five states given the difficulty of passing a separate bar exam in each individual state.  I am currently licensed to practice in MA, ME, NH, TX, VA.

Additional Graduate Legal Training.  I don't know of ANY patent attorneys who also have a Master of Laws in Taxation.  One reason for this is the expense of the degree.  Another reason is that most patent attorneys ignore many of the tax related issues associated with startup businesses, license negotiations, IP transfers, and inventor estate planning.

As you consider the 40,000 or so patent attorneys registered to practice before the USPTO as candidates to prepare and prosecute your patent application, please consider the unique background presented above.  Hopefully you will conclude that I have prepared myself well to serve your needs in the area of Intellectual Property protection!

 

Contact Information:

Kevin Mark Klughart

Registered Patent Attorney, USPTO

3825 Leisure Lane, Denton, TX 76210-5589

tel: 800-353-1211 / 940-320-0580  -  fax 940-320-0581

Kevin@Klughart.com   email  -  web    www.Klughart.com

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