The field of patent law is unique as it has additional requirements for an attorney to meet before they can represent clients as a patent attorney.
This article will examine the qualifications of a patent attorney, the difference between patent attorneys and patent agents, and what a patent attorney does.
What Is a Patent Attorney?
A patent attorney is a person who is (1) a registered attorney and (2) a registered patent practitioner.
To become a registered patent attorney, an individual must meet all the requirements, and submit an application to practice before the United States Patent and Trademark Office (USPTO). The USPTO Office of Enrollment and Discipline (OED) reviews applicants and makes the final determinations whether to register an individual as a patent attorney.
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 and becoming a registered attorney, and passing the patent bar. All of this while maintaining high moral and ethical character to the satisfaction of the USPTO.
The general requirements to become a patent attorney include the following:
- Obtain necessary scientific and technical qualifications.
- Admitted to practice before the USPTO.
- 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 applicant under this requirement:
- Category A: obtaining a bachelors, masters, or PhD in hard science (ie. engineering), from an accredited university.
- 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)
- 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.
Patent Attorney vs. Patent Agent
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. This includes litigating patent infringement lawsuits, drafting and negotiating patent licensing agreements, and consulting on business and other legal considerations relating to intellectual property.
In June of 2023, the USPTO reported that of the 50,360 active patent practitioners, a little more than 25% are patent agents, while a little less than 75% are patent attorneys.
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 kids 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 located in your state 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.
» Learn More: How Much Does a Patent Lawyer Cost?
Responsibilities of a Patent Lawyer
A patent lawyer advises and represents 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.
1. Understanding Patent Law
A patent attorney’s most useful tool is their knowledge of patent law. Patent law in the US is under the exclusive jurisdiction of the federal government and has been developing since the nations inception.
Patent law is rooted in the multiple patent acts passed by Congress. The most recent change to patent law is the 6th patent act enacted in 2011 and is known as the America Invents Act (AIA). The AIA changed the priority in the US patent system from a first-to-invent to a first-inventor-to-file system. The AIA also brought other aspects of US patent law in conformity with international standards.
When patent law cases are brought in federal court, the court must interpret patent law, address new questions of law, and set new precedent when necessary. The Supreme Court of the United States (SCOTUS) has the final say in patent law cases.
The USPTO periodically publishes practical guidance outlining how the application of patent law changes based on court interpretation and precedent.
It is important for patent attorneys to maintain up to date knowledge of patent law and new court rulings that may impact how patent law applies to their clients. Changes in patent law may affect how the wording of a patent is interpreted, how a license agreement determines royalties, or the extent of legal rights of a patent owner.
In addition to having the technical knowledge necessary to understand an invention, a patent attorney must command legal knowledge necessary to adequately represent their client.
2. Conducting Patent Searches
A patentability search (prior art search) should be performed before a patent application is drafted and filed. This search seeks to find any published literature showing aspects of the invention that already exist.
A patent will not be granted for anything that already exists in any published literature. A patent attorney uses the results of a patentability search to draft a patent application that avoids claiming things that already exist.
» Learn More: Can You Patent Something That Already Exists
Patent attorneys may conduct the search themselves, or they may have someone else conduct the search. Many law firms use the services of patent search companies.
Some law firms hire non attorneys to perform their searches. The most important requirement for the person conducting the search is that they understand the technology behind the invention.
The bottom line for patentability searching is that utilizing patentability search results while drafting a patent application increases the likelihood of drafting a novel patent.
3. Preparing and Filing a Patent Application
Preparing a patent application includes drafting:
- An abstract
- A written description of the invention
- Strong claims
- Patent drawings
There are strict formatting and form requirements that must be met in a patent application. The written description must inform the reader how to make and use the invention. The claims define what the invention is, and establish the legal protection granted by the patent.
Drafting a patent application that protects as many aspects of an invention as possible is a difficult task. A patent practitioner can draft claims that provide strong patent protection for an invention. It is highly advisable to use the services of a patent practitioner to draft a patent application.
A patent application also requires submitting several forms, including:
- Information disclosure statement (IDS)
- Application data sheet (ADS)
- Oath or Declaration.
Information in these forms impacts important aspects about the application including inventorship, ownership, and priority claims to another patent. A patent practitioner should be used to accurately submit the correct forms in the patent application.
Once a patent attorney has prepared and filed the patent application with the USPTO, that patent application is on the attorney’s docket. That attorney is now responsible for the prosecution of that patent application. Any correspondence from the USPTO will be sent to that attorney.
» Learn More: How to Get a Patent
4. Dealing with the Patent Office
The USPTO examines patent applications and determines if a patent will be granted. Most patent applications are not initially approved. The USPTO issues an office action (OA) and states the reason for the rejections or objections.
The patent attorney can then make changes to the application and resubmit it. A patent attorney seeks to fix all the issues in a way that keeps as much patent protection as possible. Understanding how to get around the USPTO’s rejections is an essential skill of a successful patent attorney.
5. Portfolio Management
Keeping patents valid costs money. The more patents an entity owns the more difficult they are to manage and the more expensive they are to keep. Many patent attorneys work in-house at corporations managing their portfolios. This includes paying maintenance fees, monitoring for infringement, advising business leaders on patent strategy, and managing outside patent counsel.
6. Licensing and Negotiation
When a patent owner chooses to license the patent rights to another, they should use an intellectual property (IP) attorney. The term IP attorney includes patent attorneys and attorneys that are not registered patent practitioners yet still offer legal services related to IP.
Many IP attorneys assist clients with structuring and negotiating IP licensing deals. Any attorney barred in the appropriate jurisdiction can assist a client with drafting and negotiating a license agreement. However, using the services of an IP attorney who has previous experience with IP licensing would be more advisable than using a local criminal defense attorney.
7. Patent Litigation and Enforcement
Patent infringement occurs when someone makes, uses, sells, or imports an invention protected by a patent without permission from the patent owner. When infringement occurs, a patent owner has the right to initiate a civil lawsuit with a claim of patent infringement in federal court.
An IP attorney can advise a patent owner on the best course of action after infringement occurs. Options include sending a cease-and-desist letter, negotiating a licensing deal, or initiating a lawsuit. The IP attorney would represent their client throughout the litigation process.
An IP attorney that provides litigation services does not have to be a patent attorney, but many are.
Do You Need a Lawyer to File a Patent?
No, you do not need a patent lawyer to file a patent application. An individual inventor may file their own patent application. However, it is highly advisable to use the services of a patent attorney. The process of drafting a strong patent and prosecuting the application is very difficult. A registered patent practitioner is the best person to help an inventor draft and file a patent.
Sheldon received his training of the patent system at the United States Patent & Trademark Office. He works with universities and consultants to provide analytics and guidance for technology commercialization from patents.
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- N.A. (2023, June 30) Patent Practitioner Home Page. Retrieved from https://oedci.uspto.gov/OEDCI/practitionerhome.jsp
- N.A. (2023, May) General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office. Retrieved from https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf
- N.A. (2022, October 11) Registration exam results and statistics. Retrieved from https://www.uspto.gov/learning-and-resources/patent-and-trademark-practitioners/registration-exam-results-and-statistics