What is a patent agent vs. patent attorney?

  • A patent agent is someone who has passed the Patent Bar through the U.S. Patent and Trademark Office (USPTO).
  • A patent attorney is a person who has gone to and graduated from law school. This person has passed the state Bar exam as well as the USPTO exam.

Both are registered with the USPTO and are able to prepare, file, and execute applications for patents on behalf of individuals or clients.

Patent Agent vs. Patent Attorney

Patent attorneys are able to practice at the U.S. Patent and Trademark Office. Additionally, they are able to practice in court. They can advise individuals in relation to contracts, and they can be involved with trials involved patents and trademarks.

Patent agents are people who have a great deal more education in terms of technical subjects and they likely possess a greater background in either science of engineering. Many agents will come to the law field after a career in a technical one.

The vast majority of inventions are ones that involve an aspect of engineering or science, so the USPTO does ask that individuals who become patent agents have a background in one of these two fields. This background is necessary before being able to take the Bar.

Patent agents are only specifically allowed to practice patent law through or with the USPTO. However, these individuals are often hired by law firms due to their extensive technical backgrounds. Legal departments for larger corporations will hire these people at times for the same reason. Patent agents may also be preferred to patent attorneys due to a more diverse background.

Who Is Better?

Patent attorneys and agents are similar in a lot of different ways. Both of these professionals are able to prepare, execute, file patent applications with the USPTO. The main difference between these two individuals is the larger capacity for them to be able to practice law.

Patent agents are not lawyers, and thus they cannot give any legal advice. Specifically, they cannot give legal advice when it comes to licenses and possible infringements on already licensed patents. Attorneys are the only people who are able to draft contracts and other documents like non-disclosure agreements. The lawyers are the ones who can represent clients during legal proceedings that involve the state or federal court system.

There are a wide variety of patent attorneys who actually start off as patent agents and then go to law school to become patent lawyers.

Experienced patent agents are individuals who are able to capably prepare patents in a complete manner. This is true of attorneys as well, and who is better really depends on the experience held by the individual when it comes to the work and assistance they are able to provide you.

For most patent agents, it takes several years of training minimally to operate at an optimal level of competency. Make sure to speak to agents and ask about their experience before working with them. Ask questions about education, training after college, and practice.

While less experienced agents may ask for smaller fees, this may not turn out to be a bargain down the road. Basically, a lawyer may be needed to fix the application completed by an inexperienced agent.

When it comes to looking at attorneys and their experience, a person with three years of law school, a law degree, and a license to practice after passing the Bar is a good requirement to go by.

You should not consider lawyers who have practiced patent law only. Individuals who are experienced in a range of law subjects are a better choice. Also, a lawyer who has worked to prosecute patent infringement cases, litigate intellectual property concerns, and prepare paperwork in relation to trademarks may be a good choice. In many cases, a patent attorney can be considered for all legal matters involving patents, trademarks, infringements, and other legal matters, while a patent agent can only assist with patent applications and filings.

Choosing a Patent Agent or Attorney

Ultimately, your decision about whether to hire a patent agent or a patent attorney should be based on what tasks you need them to do. A patent agent has restrictions on what they can do regarding patents, applications, and inventions. All they do is write up an application for a patent and file it for you with the U.S. Patent and Trademark Office. They can serve as a liaison between you and the Patent Office, dealing with communication as required on a timely basis.

A patent attorney can do much more, including offering you legal advice as you navigate the system while working to obtain a patent for your invention. Hiring an attorney from the beginning can save you the effort of hiring one later on if legal issues should come up.

Although a patent attorney can handle a wider range of tasks, for most inventors' needs, it won't matter if they choose a patent attorney or patent agent. A patent agent may not charge as high a rate, however. Therefore, the most important considerations are their experience, training, and skill.

Make sure your patent agent or attorney is a registered practitioner. If they are not, they will not be legally allowed to file a patent. Just because a company advertises its ability to assist with obtaining a patent, do not assume its agents are registered. You can look them up at the OEDCI page on the U.S. Patent and Trademark Office website.

Without specialized knowledge, it's hard to tell who will be a good patent agent or attorney. However, here are a few tips to help you choose:

  • Find out how long the patent agent or attorney has been practicing, so you can see how much experience they have with patents.
  • Ask them about their background; it's helpful if they specialize in your invention's industry or field.
  • Make sure they are registered with the U.S. Patent and Trademark Office.
  • See if they have any certifications, and find out where they received training.
  • Look for referrals and reviews.
  • Check references, including a list of patent applications they have written in the past.
  • Ask for their price, which may be a fixed-fee quote for the job you need them to do. Armed with this information, you can make an educated decision on which agent or attorney to hire.
  • See how well they communicate with you and whether or not you can have a comfortable working relationship. This may be the most important consideration of all.

Thinking of Becoming a Patent Agent?

After reading about the comparison between patent agents and attorneys, perhaps you're considering this as a career choice. Patent agents have many opportunities. They may work in an attorney's office, or find employment at major corporations in their legal department. They can also work as independent patent agents or even work for the U.S. Patent and Trademark Office as a patent examiner.

The USPTO reports that in 2013, there were over 42,000 registered patent practitioners. About one-quarter of these were patent agents, and the other 75 percent were patent attorneys. Another report from the same year indicates that the average salary for a privately employed patent agent was about $92,000.

Getting a Patent: Where to Start

There are a few parts of the patent application process you can do yourself before choosing and hiring a patent agent or attorney. First, you can conduct a free patent search at the U.S. Patent Office website. In order to see patent drawings, you will need software to read TIFF images; this is available through a link on the Patent Office website. You can also search for patents at www.google.com/patents.

Tips for Getting a Patent

Do not be tempted by companies that advertise their help with submitting your invention, as many of them are scammers. If you sell your invention, offer to sell it, use it in public, or publish information about your invention before filling out the patent application, you could lose your ability to get a patent.

It's recommended that you do a patent search as a first step. It's not required, but helpful. It is also recommended that, if appropriate, you make a working prototype of your invention before applying for a patent.

If you need assistance in creating and executing a patent, you can post your legal need on the UpCounsel marketplace. We offer legal assistance through the expertise of our vast pool of legal professionals. We accept only the best, meaning you will be served by the top 5 percent of the lawyers in the country who have worked with businesses like Google, Menlo Ventures, and Airbnb.