Introduction
When seeking to protect your invention through the U.S. patent system, you may encounter two types of professionals: USPTO patent agents and patent lawyers. Both can help you secure a patent, but there are crucial differences in their qualifications, the services they offer, and the scope of their practice rights.
Qualifications and Credentials
- Patent Agent
- Must have a science or engineering background and pass the USPTO registration exam (often called the “Patent Bar”).
- They are authorized to prepare and prosecute patent applications before the USPTO.
- They do not necessarily hold a law degree and are not licensed to practice law outside of patent matters.
- They tend to be highly focused on patent prosecution because they don’t have to deal with the issues that licensed lawyers deal with (and they have time to write helpful blogs, like Don Debelak’s https://onestopinventionshop.net/blog/)
- Patent Lawyer (Patent Attorney)
- Must have a law degree, be admitted to at least one state bar, and also pass the USPTO registration exam.
- They are licensed attorneys, so they can provide both patent prosecution services (like a patent agent) and general legal advice related to contracts, infringement, licensing, and litigation.
Scope of Practice
- Patent Agents
- Can represent inventors before the USPTO in patent matters (e.g., preparing patent applications, responding to Office Actions).
- Cannot represent inventors in patent infringement lawsuits or give broader legal advice.
- Patent Attorneys
- Can do everything a patent agent does in front of the USPTO (e.g., file and prosecute applications).
- May represent clients in federal court on patent litigation or in other disputes.
- Can offer legal opinions on intellectual property contracts, licensing, and infringement risks.
Cost Considerations
- Patent agents often have lower hourly rates than patent attorneys because their practice is more narrowly focused on patent prosecution.
- Patent attorneys may charge higher fees, but they provide legal services beyond prosecution, which can be critical if you need litigation or comprehensive IP counseling.
Which One Should You Choose?
- If you only need to draft and file a patent application and communicate with the USPTO, a patent agent may suffice.
- If you anticipate broader legal needs—like negotiating a license, dealing with infringement issues, or enforcing your rights in court—a patent attorney may be the better choice. In addition, patent eligibility in the US has become very complex. I have had interviews with patent examiners where the one thing we can agree on is that the law on patent eligibility is so complex that nobody is sure what is patentable anymore. A patent lawyer, however, has the training to parse the many judicial decisions on the topic and reach a — well, not an answer, but a better guess.