Short answer: Patent agents and patent attorneys are both registered with the U.S. Patent and Trademark Office (USPTO), and both can prepare, file, and prosecute patent applications. A patent attorney is also a licensed lawyer, so they can handle legal work outside the USPTO, such as lawsuits and contracts.
Both pass the same exam
To practice before the USPTO in patent matters, a person must pass the USPTO registration exam, often called the "patent bar." It requires a background in science or engineering. A patent agent has passed that exam. A patent attorney has passed it too, and has also graduated from law school and been admitted to a state bar.
What a patent agent can do
- Search prior art and give an opinion on patentability
- Draft and file provisional, non-provisional, and design patent applications
- Respond to office actions and interview examiners
- Handle the full prosecution of an application through allowance
- Represent foreign-domiciled applicants before the USPTO
What only a patent attorney can do
- Sue or defend you in patent infringement litigation
- Draft and negotiate contracts, such as license agreements
- Give legal advice outside patent prosecution, such as business or employment law
- Handle trademark filings, which the USPTO limits to attorneys
Which one do you need?
If your goal is to get a patent application filed and through the USPTO, a registered patent agent is fully qualified for that work. Agents often charge less than attorneys for the same filing. If you are dealing with a lawsuit, a licensing deal, or a trademark, you need an attorney.
Lauren Edwards-Williams is a USPTO-registered patent agent (Reg. No. 83,695). Legacy Patents handles patent searching, drafting, filing, and prosecution at flat fees. See our services.