Patents can be absolutely critical to your business, so it’s important to understand how patent attorneys and patent agents are alike and how they’re not – and which to hire when.
First, the Similarities
1.) Patent attorneys and patent agents are both trained and licensed to prosecute (prepare and file) patent applications.
2.) Both have taken and passed the patent bar, which allows them to prosecute patents before the U.S. Patent and Trademark Office (USPTO). To qualify to take the patent bar, applicants must have some formal education in a scientific or a technical field and be of “moral character,” as determined by the USPTO’s Office of Enrollment and Discipline (OED). Both patent agents and patent attorneys can prosecute patents before the USPTO.
Both patent agents and patent attorneys can prosecute patents before the USPTO.
Depending on the circumstances, a wide range of past issues can be a barrier, from having defaulted on a debt or having been charged with a drug or alcohol offense.
3.) Most patent agents and patent attorneys have a bachelor’s degree in engineering or other general science discipline (chemistry, biology or physics, for example), and some have more advanced degrees. Although some applicants don’t have degrees in these areas, they can still qualify to sit for the patent bar if they have taken or taken sufficient scientific and technical courses or have had training in these areas.
1.) As the name implies, patent attorneys are licensed to practice law. They’ve attended law school and have a J.D. degree (and even an LLM degree, or master of laws, in some cases.)
2.) In addition to having passed the patent bar, patent attorneys have taken and passed at least one state bar exam. With that comes additional professional requirements, such as following ethics rules, undergoing continuing legal education and registering each year with at least one state bar.
The bottom line is that patent attorneys are able to provide legal advice, but patent agents are not. The bottom line is that patent attorneys are able to provide legal advice, but patent agents are not.
The bottom line is that patent attorneys are able to provide legal advice, but patent agents are not.
The Hiring Decision
So, which professional should you hire?
If your company just needs someone to prepare and file patent applications, you may be able to get away with working only with a patent agent. (Usually, patent agents charge less per hour than patent attorneys, just as paralegals bill less than attorneys.)
However, if your company needs someone to draft licensing or non-disclosure agreements, or needs representation in other legal matters, you need to hire a patent prosecution attorney. The same is true if your company, like many businesses, is looking for long-term representation – maybe for the purposes of managing a patent portfolio – and would like to have someone take care of legal matters from time to time.
One additional twist: If you want to sue for patent infringement or defend your company against a patent lawsuit, you’ll need a patent litigator. Despite what they’re called, patent prosecutors (the other kind of patent attorneys) aren’t litigators.