Patent Agent vs. Patent Attorney

A patent practitioner is someone registered with the United States Patent and Trademark Office (USPTO) to represent others in matters related to patent prosecution. A patent practitioner may be either a patent agent or a patent attorney.

In September of 2023 the USPTO reported that of the 50,425 active patent practitioners, close to 26% are patent agents, while 74% are patent attorneys.

This article will examine the differences between patent agents and attorneys.

What Is a Patent Attorney?

A patent attorney is a person who is both (1) a registered attorney and (2) a registered patent practitioner.

A typical route to become a patent attorney includes obtaining a bachelor’s degree (or higher) in a scientific discipline, obtaining a J.D. degree, passing a state bar exam to become a registered attorney, and passing the patent bar. All of this while maintaining high moral and ethical character to the satisfaction of the USPTO.

Role of a Patent Attorney

The role of a patent lawyer is to advise and represent their client in patent related matters. The client can be an inventor or an entity such as a corporation. Patent related matters include a range of legal work, from patent drafting and filing to patent infringement litigation.

A patent attorney may offer services across the legal field or choose to specialize in performing one service. For example, one patent attorney may advise and represent their clients on all legal matters related to patents. Whereas another patent attorney may only focus on performing patentability searches and writing patentability opinions.

Responsibilities and duties of a patent attorney include the following:

• Understanding patent law
• Providing consultations and legal advice
• Conducting patent searches
• Authoring patentability opinions
• Preparing and filing patent applications
• Prosecuting patent applications
• PTAB appeals
• IP portfolio management
• IP licensing and negotiation
• Infringement analysis and opinions
• Patent litigation and enforcement

Qualifications of a Patent Attorney

The general requirements to become a patent attorney include the following:

1. Obtain necessary scientific and technical qualifications.
2. Admitted to practice before the USPTO.
3. Admitted to a state bar.

Necessary Scientific and Technical Qualifications

Inventions are complicated. To ensure competent representation, the USPTO requires that patent attorneys have a background or experience in a hard science discipline.

There are three categories that can qualify an individual under this requirement:

1. Category A: Obtaining a bachelors, masters, or PhD in hard science (ie. engineering), from an accredited university.
2. Category B: Obtaining a bachelors, masters, or PhD in another subject and having enough course work in a hard science (24-40 credit hours depending on the coursework).
3. Category C: Obtaining any bachelor’s degree and passing the Fundamentals of Engineering (FE) examination.

Admitted to Practice Before the USPTO

Once an individual has met the scientific and technical qualifications they may apply to practice before the USPTO. If the applicant meets all requirements the USPTO will approve the applicant to take the patent practitioners examination, also known as the patent bar.

The examination is 100 multiple-choice questions administered over two three-hour sessions. The patent bar is a difficult exam with a typical average passage rate between 40%-50%. Passing the patent bar demonstrates that the applicant understands patent law and procedure enough to adequately represent a client.

The USPTO will register an individual as a patent practitioner if they have passed the patent bar and have no previous ethical violations. An attorney who is registered as a patent practitioner is called a patent attorney.

Admitted to a State Bar

To become an attorney an individual must attend, graduate, and obtain a J.D. from an accredited law school. After graduating, that person must also pass a state bar examination and be admitted to practice law in at least one state.

Cost of a Patent Attorney

The typical cost of a patent lawyer per hour is between $250 – $650 with a median in the range of $350 – $500.

An applicant for a patent should expect to pay between $5,000 – $15,000 in attorney fees.

What Is a Patent Agent?

A patent agent is a registered patent practitioner who is not also a registered attorney. A patent agent has passed the patent bar and is registered with the USPTO to represent others in matters related to patent prosecution.

Role of a Patent Agent

A patent agent represents patent applicants before the USPTO. A patent agent can write an application for a patent and prosecute patent applications.

A patent agent can also provide various other services related to patent prosecution. Typical services patent agents offer include the following:

• Patentability searching
• Authoring patentability opinions
• Patent application drafting and filing
• Patent prosecution
• PTAB appeals
• IP portfolio management

A patent agent may not provide legal advice or any other additional legal services for a patent applicant if they are not otherwise a registered attorney.

Qualifications of a Patent Agent

The general requirements to become a patent agent include the following:

1. Obtain necessary scientific and technical qualifications.
2. Admitted to practice before the USPTO.

Necessary Scientific and Technical Qualifications

Inventions are complicated. To ensure competent representation, the USPTO requires that patent agents have a background or experience in a hard science discipline.

There are three categories that can qualify an individual under this requirement:

1. Category A: Obtaining a bachelors, masters, or PhD in hard science (ie. engineering), from an accredited university.
2. Category B: Obtaining a bachelors, masters, or PhD in another subject and having enough course work in a hard science (24-40 credit hours depending on the coursework).
3. Category C: Obtaining any bachelor’s degree and passing the Fundamentals of Engineering (FE) examination.

Admitted to Practice Before the USPTO

Once an individual has met the scientific and technical qualifications they may apply to practice before the USPTO. If the individual meets all requirements the USPTO will approve the applicant to take the patent practitioners examination, also known as the patent bar.

The examination is 100 multiple-choice questions administered over two three-hour sessions. The patent bar is a difficult exam with a typical average passage rate between 40%-50%. Passing the patent bar demonstrates that the applicant understands patent law and procedure enough to adequately represent a client.

The USPTO will register an individual as a patent practitioner if they have passed the patent bar and have no previous ethical violations. A patent practitioner who is not also a registered attorney is called a patent agent.

Cost of a Patent Agent

The services of a patent agent should typically cost less than a patent attorney with a similar level of experience in patent prosecution. A patent agent will likely charge somewhere in the range of $50- $400 per hour.

Key Differences Between Patent Agents and Patent Attorneys

A patent practitioner is someone who has passed the patent bar and is registered to practice before the USPTO.

Both patent attorneys and patent agents are patent practitioners and can represent a client before the USPTO in matters related to patents.

The difference between a patent attorney and a patent agent is that a patent attorney is also admitted to a state bar to practice law.

All patent practitioners are bound by the ethical obligations in 37 C.F.R. § 11.101.

Patent attorneys are allowed to engage in representation that is considered the practice of law, while patent agents are not. The practice of law includes litigating patent infringement lawsuits, drafting and negotiating patent licensing agreements, and consulting on business and other legal considerations relating to intellectual property.

Choosing a Patent Attorney or Patent Agent

Should you hire a patent attorney or a patent agent to represent you before the USPTO? It depends on your unique situation. Factors to consider when hiring a patent practitioner include the technical aspects of your invention, your financial situation, and the goals you have for the invention.

For example, say your invention is a highly technical electrical device. A patent agent with 20 years of hands-on electrical engineering experience might be more proficient in drafting a patent than a patent attorney whose background is in biology.

Alternatively, consider the invention of a simple small handheld kid’s toy. Your goal is to get a design patent on the toy and form a company centered on developing, selling, and marketing this toy. A patent attorney can help you get a design patent as well as provide auxiliary legal services such as drafting contracts, providing legal advice, and providing representation in a court of law.

Typically, patent attorneys tend to charge higher rates than patent agents. Many law firms employ patent agents to prepare and draft patent applications for the firm. You may unwittingly find yourself in a situation where you hire a patent attorney, but a patent agent is the one drafting your patent behind the scenes.

If you need any additional legal advice beyond filing and prosecuting a patent application, you should use the services of a patent attorney over a patent agent.