What Is the Difference Between Patent Attorneys & Patent Agents?
Are you an inventor who wants to patent a new tool, manufactured product or a business method? Both patent attorneys and patent agents are thoroughly knowledgeable about the art of successfully drafting and filing patent applications with the United States Patent and Trademark Office. Both attorneys and agents perform essentially the same function with respect to ensuring that an inventor's patent is approved by the PTO, with one big difference--only a patent attorney can represent you, the inventor, in legal matters.
The Patent Agent
When it comes to patent applications, the PTO requires a very specific legal and scientific language to be used in the description of the utility, plant or design that an inventor wishes to patent. A patent agent is skilled at drafting patent applications, specifically the independent and dependent claims that an invention asserts. To pass muster with the PTO, the "specification" portion of the patent application that contains these claims must clearly describe how an invention can be made and used in great detail. Additionally, a patent agent must know if part of the invention relies on "prior art," such as a battery that makes an electric tool run, so as to not include that in your patent's claims.
The Patent Attorney
A patent attorney is an attorney at law recognized by the PTO to represent inventors in legal matters. Like a patent agent, a patent attorney can also assist you in drafting and filing your patent application and getting the patent through PTO's arduous patenting procedures, a time-consuming but necessary process known as "prosecution." However, only a patent attorney can represent inventors in a federal court of law should the inventor file suit against another inventor for infringement--or defend an inventor who is accused of infringement. Only a patent attorney can draft legal documents (such as a contract that assigns a patent's license) and offer legal advice.
Patent Attorney Qualifications
A patent attorney usually has an undergraduate degree in science or engineering, in addition to a law degree and must be licensed to practice in at least one state. The PTO maintains a registry of attorneys who are permitted to represent inventors and oversees all complaints of attorney misconduct. The PTO even has the power to disbar a patent attorney.
Patent Agent Qualifications
The PTO requires patent agents to have a bachelor's degree in engineering or physical science. Additionally, patent agents must pass an examination before they can assist inventors in the prosecution of a patent. As in the case of patent attorneys, the PTO can also suspend a patent agent if there is a valid complaint of misconduct.
Where to Find a Patent Attorney or Patent Agent
Make sure your patent attorney or patent agent is acknowledged by the PTO. The PTO's website contains a search engine where you can find an attorney or agent licensed to practice before the PTO. Inventors who want to be assured that the attorney or agent they hire is "PTO-approved" can search for the attorney or agent by name. Also, new inventors can locate a patent attorney or agent by searching within their region (see Resources).
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