Patent Attorney or Patent Agent?

What a Patent Attorney and Agent Have in Common

A patent attorney and patent agent both must pass a federal exam administered by the U.S. Patent and Trademark Office. This exam is commonly known as the patent bar exam. It typically has less than a 50% pass rate. A person who is a member of a state bar, and who is licensed to practice law in one or more states, receives the title of patent attorney.  A person who is not, receives the title of patent agent. In general, to sit for the patent bar exam, a patent attorney or patent agent must have a science, engineering, or technical university degree. Patent attorneys and patent agents both have their federal licenses regulated by the U.S. Patent and Trademark Office’s Office of Enrollment and Discipline (OED).

When it comes to patent practice before the U.S. Patent and Trademark Office, patent attorneys and patent agents are essentially equivalent.

Patent agents and patent attorneys are also licensed to do all of the following tasks:

• Write, file, and prosecute U.S. patent applications.
• Render a legal opinion on a patentability search.
• Appeal to the Patent Trial and Appeals Board.
• Invalidate competitor’s patent through re-examination or inter-parties review.
• File third-party submissions.
• File international or PCT applications.
• Work both with foreign patent attorneys to coordinate the filing and prosecution of foreign patents.
• Patent agents enjoy privileged communication with their clients on patent matters with the U.S. Patent Office, just as patent attorneys do; see In re Queens University (Fed. Circuit 2016).

Differences Between a Patent Attorney and a Patent Agent

There are some differences between a patent attorney and patent agent you should be aware of. Patent attorneys are also licensed to practice law by individual states and are licensed to practice patent law by the U.S. Patent and Trademark Office. Patent agents are only authorized to practice patent law before the U.S. Patent and Trademark Office.

A patent attorney can do the following task that a patent agent cannot:

•  draft contracts and royalty agreements.
• advise if you are infringing on a competitor’s patent.
• advise if a competitor is infringing on your patents.
• file trademarks and advise you on trademark protection.
• A patent attorney who specializes in litigation can go to court and defend your patent rights.

In addition, privileged communication between a patent agent and client only extends to communication directly related to the patent agent’s federal license.

How to Choose the Right Patent Attorney and Patent Agent for You

More important than choosing between a patent attorney or patent agent is finding the right patent attorney or patent agent to write, file, and prosecute your patent application. Ask yourself the following questions:

• Does the patent attorney or patent agent have experience successfully writing, filing, and prosecuting patent applications in your industry?
• What is their track record or success rate?
• Are their clients happy? Does the patent attorney or agent have meaningful recommendations or testimonials?
• Is the patent attorney or patent agents billing practices consistent with your needs and expectations? Do you prefer flat fee pricing or per hour pricing?
• Does the patent attorney or patent agent outsource some of the work or is the work all done in house? Is the person you initially spoke with the same person who will consistency work on your patents? Will this be a lead patent attorney or agent or will it be a associate or junior patent attorney?
• Do you need a proactive patent attorney or patent agent or is that not important to you? Is the patent firms policies consistent with your expectations of pro-activeness?

Most of these questions can be answered by asking your potential patent agent or patent attorney these questions directly. The web is also a great source of information. Some patent attorneys and agents show testimonials on their website or their LinkedIn profiles.

You can also get a very good idea of the quantity of the patent attorney or patent agent’s work by looking at published patent applications and issued patents where they are listed as attorney or agent. You search by patent attorney and patent agent on free patents online using the AGTN operator. Note that this only shows you published patent applications and issued patents. The patent attorney or agent may have many unpublished applications that will not show up in the search.

If you want to dig even deeper, once you have a list of patent applications and issued patents, you can have your staff review the patent attorney or patent agent’s prosecution history. You can do this using a free tool from the U.S. Patent and Trademark Office call Patent Application Information Retrieval or PAIR.

What Differentiates My Practice from Many Patent Attorneys

I started my practice as a patent agent after a long and successful career in new product development. I managed a $1.5 million annual R&D budget. I was responsible for research and development, quality assurance, and product management for a $20 million product line. My budget included over $100,000 per year for securing patent protection for our products. I am also an inventor on 21 U.S. patents. I had the privilege of working with many excellent patent attorneys during my career. I was fortunate to experience a first-rate patent program early in my career when I worked for Sony.

I took several ideas to heart from these experiences and incorporated them into my practice:

• Make the cost of patent protection budget-predictable and affordable.
• Create a quality product. Dig deep and don’t be afraid to ask questions. Focus on the needs of my clients.

• Be accessible. Be a member of the team. Be willing to educate my clients. Be on the lookout for ways to help my client’s business thrive.
• Make patents part of a comprehensive business strategy. Work with executive staff to create patent incentive programs with measurable outcomes. Provide workshops for key stake holders such as engineers and product managers.
• Offer insights, based on experience, that a patent attorney without business experience cannot offer.

Notes:

• Refer to Code of Federal regulation, 37 CFR 11.6: registration of patent attorneys and patent agents
• Sperry v. Florida – 373 U.S. 379 (1963) The Supreme Court ruled that the practice of patent law before the U.S. Patent and Trademark Office is governed by federal statute. It is not regulated by the states. A patent agent, like a patent attorney, has the right to practice patent law before the U.S. Patent and Trademark Office. 
• All patent agents and patent attorneys are registered in the U.S. Patent and Trademark Office Patent Attorney and Patent Agent Registry.