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Inventors, and in many instances, managers or founders of high-tech companies are often in the position of deciding to retain a patent practitioner to act on their behalf in preparing, filing, and prosecuting patent applications in the United States Patent and Trademark Office (USPTO). It is common at this point for questions to arise regarding the difference between a patent agent and a patent attorney. This page provides an overview of some of the similarities and differences.
Federal law gives the USPTO the power to make rules and regulations governing who may represent inventors in filing and prosecuting patent applications in the Patent Office. Persons who are not recognized by the USPTO are not permitted by law to provide such representation. In general, the USPTO recognizes both patent attorneys and patent agents to practice patent law and represent inventors in the Patent Office. Additionally, U.S. patent agents and patent attorneys enjoy equal recognition by the World Intellectual Property Organization (WIPO) in the filing of international (PCT) applications.
To be admitted to practice patent law in the USPTO, a person must comply with the regulations prescribed by the Patent Office. The requirements include a showing that the person is of good moral character and of good repute and that he/she has the legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain qualifications must be demonstrated by the passing of an examination, which is commonly referred to as the “patent bar exam." In order to be admitted to take the patent bar exam, one must have a college degree in engineering or physical science or the equivalent of such a degree.
Thus in order to be admitted to practice patent law in the Patent Office, both patent attorneys and patent agents must meet the same set of criteria. Both must have certain “legal, and scientific and technical qualifications.” Both attorneys and agents must pass the same exam. Consequently, patent attorneys and patent agents have equal standing in the Patent Office with respect to preparing and prosecuting patent applications for their clients. So what is the difference?
In addition to passing the patent bar exam, a patent attorney has attended law school and obtained a law degree (such as J.D.), and has also passed one or more bar exams in state or federal jurisdictions. By being admitted to the bar, the patent attorney is licensed to practice law in the particular jurisdiction. The attorney can thus provide legal services in adverse proceedings such as patent litigation, and in contractual matters such as assignments and licensing agreements. In contrast, patent agents are not licensed to practice law in jurisdictions outside of the Patent Office, and therefore cannot provide such legal services.
It is important to emphasize that patent agents and patent attorneys have demonstrated the same basic qualifications for admission to the patent bar in the Patent Office, they have passed the same exam, and they have equal stature in the filing and prosecution of patent applications in the Patent Office. Thus in selecting a patent practitioner, whether it is an agent or an attorney, the decision should be based upon the individual’s qualifications to prepare and file a high quality patent application and prosecute it within the Patent Office at a reasonable cost, and to provide these services in a timely manner. The following are some criteria to consider when making a decision between a patent agent and a patent attorney, and in selecting a patent practitioner in general:
· The practice of patent law is by its very nature in a state of perpetual change. In order to remain well qualified to practice, a patent practitioner must constantly stay abreast of additions and revisions to the federal patent statutes, the rules of practice in the United States Patent and Trademark Office, and current patent related federal court decisions that define new case law. A potential client should seek an individual who proactively pursues continuing education opportunities in order to stay current in this dynamic field, regardless of whether the individual is an attorney or an agent.
· A common “career path” for a patent agent is to have obtained undergraduate and advanced degrees in science or engineering, to have practiced for many years in one or more technical fields in industry, to have obtained some initial exposure to the patent process as an inventor, and to have then taken and passed the patent bar exam. In contrast, a common path for a patent attorney is to have obtained degree(s) in science or engineering, to have attended law school and obtained a law degree, and to have then taken and passed the patent bar exam. Some patent attorneys have first practiced in their chosen field of science or engineering and obtained significant technical experience prior to pursuing a career in law. But in general, a patent agent is often much more knowledgeable, experienced, and current in the particular fields of technology in which he or she practices. This can result in 1.) faster turnaround at lower cost of patent application preparation due to a shorter learning curve required for the agent to understand the client’s invention; and 2.) a higher quality written description and drawings in the application that better meet the requirements of federal statute 35 USC 112. This statute states that, “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, and concise, and exact terms as to enable any person skilled in the art to which it pertains... to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
· A patent agent, by virtue of having remained highly current in technology, and by obtaining skills in the use of a variety of engineering and IT software tools is often more capable of engaging in a 21st Century Patent Practice.
· The hourly billing rate of a patent agent is often on the order of one half to two thirds the rate of a patent attorney in any given geographic region or other market demographic.
In summary, a competent patent agent that proactively stays current in patent law and in his/her technological fields of practice can often be an excellent choice in providing patent application preparation and prosecution services in the Patent Office, when measured against the standard business metrics of quality, speed, and cost.
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