Patent Attorney or Patent Agent – What is the difference?

I have been asked from time to time what are the differences between a patent attorney and a patent agent. For the sake of saving me from having to the explanation in the future (and for a reason to direct people to TacticalIP.com), I believe this topic is ripe for an article!

Both patent attorneys and patent agents are required to be recognized by, and registered with, the U.S. Patent and Trademark Office to be licensed to prepare and prosecute patent applications for their clients. Prosecuting a patent is just a fancy way of describing the negotiation between the patent attorney/agent and the USPTO over the allowability of the patent application to issue as a valid U.S. patent. To be recognized by the USPTO, both patent attorneys and patent agents may possess a sufficient technical background and pass a grueling examination on the policies and procedure , which is informally known as the “Patent Bar.” Failure rates for this exam is typically around 50%, give or take depending on the period of administration. As an example, the FAILURE RATE for the October 2000 administration of the patent bar was 63%! For patent attorneys, this examination will likely be on a level of disfavor with the state bar exam he or she took to become a licensed attorney. For patent agents, this examination is a whole new animal and likely the worst exam the agent will ever take in his or her lifetime.

So, now that we know how amazingly fun the patent bar can be, why doesn’t everyone take it? Well, most people don’t qualify to even sit for the exam. In order to be eligible for enduring the six hour pain train delivered by the patent bar, you have to possess a college degree in engineering or physical science, or the equivalent of such a degree. For attorneys, this rules out over 99% of the law practicing population. I know, it’s a big shocker that not many people that end up practicing law come from math or science backgrounds. Those with an appropriate technical background usually do end up practicing patent law.

But, although both patent attorneys and patent agents have a similar process to become registered to represent inventors before the USPTO, what distinguishes one from the other? First, patent agents cannot prepare any legal documents relating to the patent application, and (hopefully) resulting patent. These legal documents typically include assignment contracts, but may also include business and corporate documents that discuss intellectual property. Also, patent attorneys can represent clients in litigation matters relating to patent infringement. By being involved in patent litigation, the patent attorney may gain a unique perspective on how a patent may interpreted by a discerning court and/or jurors. Furthermore, patent attorneys can analyze and render opinions at to whether an invention is likely infringing on a patent, whether a patent could withstand a challenge to its validity, or whether a business should proceed in manufacturing its product without fear of drawing out litigants that cry infringement.

Patent attorneys and patent agents are both extremely valuable to inventors in their respective ways. Patent agents are typically less expensive than patent attorneys, but may lack some of the perspective acquired through the practice of law. Conversely, patent attorneys may require higher fees, but may provide a larger number of services that are tailored to the client, since the attorney will have a wider understanding of the client’s business and unique needs.

There also exists a large number of differences between patent attorneys and general intellectual property attorneys, but that is a subject best reserved for another article.