What is the difference between a patent agent and a patent attorney? 5 Answers as of July 28, 2011

Is a patent agent attorney also? Do I need to hire a patent attorney in addition to an agent?

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The Law Offices of Mark Trenner
The Law Offices of Mark Trenner | Mark Trenner
A patent agent has a technical background and has passed the patent bar exam. A patent agent is not licensed as an attorney. A patent attorney has a technical background, has passed the patent bar exam, and is licensed as an attorney in at least one state. An inventor can hire a patent agent or a patent attorney to represent him or her before the US Patent Office. But the patent agent cannot offer any legal advice - including preparing assignment documents, licensing, or litigation.
Answer Applies to: Colorado
Replied: 7/28/2011
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
A patent agent is qualified to draft patent applications and prosecute them before the U.S patent and trademark office. Patent agents usually have technical degrees (often Ph.D.'s) but they do not have law degrees. While patent agents are allowed to draft and appear before the US patent and trademark office to respond to "office actions" and otherwise attempt to procure patent protection, they cannot appear before federal or state courts, nor can they represent clients in patent infringement suits. In short, patent agents often do a good job drafting patent applications and guiding them through the patent office, but they do not have the training or experience of a qualified patent attorney. In this regard, most inventors and companies find that they need to work with experienced patent attorneys-and not mere patent agentsto develop patent and IP strategies. This is because patent and IP strategies often require predictions about how courts will treat patents when they are challenged on grounds of invalidity and non-infringement during the course of litigation. A patent attorney, as opposed to a patent agent, is a licensed attorney qualified to practice in courts (as well as in the patent office). As a practical matter, many patent attorneys employ patent agents to assist them in carrying out technical work, such as drafting complex patent applications or searching the prior art. However, sophisticated clients almost always prefer to employ patent attorneys to represent them in prosecuting a patent application in the patent office. And of course, only an attorney can appear on behalf of a client in court.
Answer Applies to: New York
Replied: 7/27/2011
DANIEL NESBITT | Hasse & Nesbitt
A patent agent has a technical or scientific college-level degree or equivalent, and has passed the US Patent Office's examination. A patent attorney has a technical or scientific college-level degree, or equivalent, has a Juris Doctorate degree from an accredited law school, has passed a state bar examination, and has passed the US Patent Office's examination. Both patent attorneys and patent agents are permitted to prepare an application for a patent and conduct the prosecution in the USPTO. Patent attorneys can handle all aspects of patent, trademark and technology law. Patent agents, on the other hand, cannot conduct patent litigation in the civil courts or perform various services which the local jurisdiction considers as "practicing law". For example, a patent agent cannot draw up a contract relating to a patent, such as an assignment or a license, if the state in which he/she resides considers drafting contracts as practicing law.
Answer Applies to: Ohio
Replied: 7/27/2011
Devon & Associates
Devon & Associates | Marcia A. Devon
A patent agent is not an attorney and is not required to have any legal training. Both the patent agent and the patent attorney are required to have some technical background (e.g. 30 units of undergraduate courses in physics, engineering, biology and/or chemistry) but the patent agent most likely has not attended law school. A patent agent cannot provide legal advice or legal opinions such as opinions regarding patent infringement. Both the patent agent and the patent attorney take the same licensing examination to be eligible to practice before the USPTO. However, the patent attorney has also taken and passed at least one bar exam in at least one state and generally has years more education than a patent agent. Both the patent agent and the patent attorney can practice before the U.S. Patent & Trademark Office ("USPTO") after they pass the licensing exam. Both patent agents and patent attorneys can prepare patent applications and respond to USPTO rejections of the patent application. You only need to select either a patent attorney or a patent agent to assist you in obtaining a patent from the USPTO; you do not need to hire both.
Answer Applies to: California
Replied: 7/27/2011
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
No - a patent agent and a patent attorney are both registered to practice in front of the US Patent and Trademark Office. That is to say, they can both draft and file and prosecute patents on your behalf. (I assume that it is a patent you are looking for not a trademark) The patent attorney though can also appear in court on your behalf whereas the patent agent cannot. Both the agent and the attorney have the same technical background (say for example both are engineers) but the agent did not graduate from law school and pass the state bar to practice law.
Answer Applies to: Oregon
Replied: 7/27/2011
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