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Patent Attorneys vs. Patent Agents

Patent agents and patent attorneys have expertise in assisting inventors obtain intellectual property (IP) protection of their ideas and inventions. Individuals claiming to be a patent attorney or agent must have passed the Patent Bar Examination. In order to qualify for the Patent Bar, patent agents and patent attorneys must have a university degree in an approved technical field, such as engineering, or an area of science, such as biology or chemistry. Patent agents and attorneys must continuously update their knowledge of IP issues. The IPWatchdog Web site provides details on the Patent Bar Examination.

The difference between patent attorneys and patent agents is straightforward—patent agents are not attorneys-at-law, and as such, cannot conduct patent litigation in the courts or perform certain other services which are considered by the local jurisdiction as practicing law. For example, a patent agent could not 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.

Otherwise, both patent attorneys and patent agents are able to prepare and pursue a patent application through the U.S. Patent and Trademark Office (USPTO). The USPTO typically regards patent agents to be just as well qualified as patent attorneys, as long as they are registered with the Office.

While the U.S. Court of Appeals for the Federal Circuit is a common legal forum used to address alleged patent violations, patent attorneys can also choose to enforce patent, copyright, or trademark laws in a state or federal court. By going to a court other than the Court of Appeals, a plaintiff can receive monetary damages or injunctive relief from someone who has used a patent, trademark, or copyright in a prohibited fashion.

There are many resources available to assist in searching for the right patent attorney or agent, including the Internet, trade associations, and local legal associations. However, the best first stop is the USPTO's Web site, which displays a master list of agents and attorneys licensed to practice before the Office.

Patent agents advertise that they are generally less expensive than patent attorneys in assisting the entrepreneur in gaining IP protection. Regardless of whether you are considering an agent or an attorney, you should first develop an understanding of your desired result and then ask how much it will cost to achieve. Most attorneys and agents will provide a general fee quote upon request.

Individual inventors or small technology companies may apply for their own IP protection. The USPTO provides application instructions and cost estimates. The application must conform to rigid USPTO requirements. Good applications for IP protection are typically complex and can take some time—18 to 24 months is not uncommon, especially for patent applications—so it might be worth the cost of obtaining a professional's services for peace of mind.

There are major pitfalls to be avoided when considering obtaining IP protection for a product or idea. The first rule is to always know who you are dealing with when seeking professional advice and expertise.

The National Inventor Fraud Center was founded to serve as a central clearinghouse for known examples of individuals and companies who advertise a registry service and do not follow through with their obligations. The Center's Web site lists some common rules that provide protection to IP novices and includes links to other helpful Web sites. These rules include:

  • not rushing, or being rushed, through the IP process;
  • taking time to investigate and educate yourself;
  • recognizing the value of third-party evaluation;
  • making sure your IP professional possesses the experience and technical expertise needed for your particular technology; and
  • checking references, checking references, and checking references.

Following these suggestions will also likely save you money. As an example, there are a number of Web-based and other resources available to help you gain a good understanding of what other IP has already been established relating to your technology. The more you know about these related technologies and the IP associated with them, the better prepared you'll be to deal with the IP professional you ultimately choose to do business with.