• info@aurorapatents.com
Aurora Consulting
  • Home
  • Services
    • Patent Portfolio Strategy
    • Patent Search and Analysis
  • About
    • Team
      • Ashley Sloat, Ph.D.
      • Kristen J. Hansen, M.S.
      • Ty F. Davis
      • Alisa McCarthy
      • Josh Sloat
      • Sophia Hsin-Jung Li, Ph.D.
      • David Jackrel, Ph.D.
    • Testimonials
    • Work Examples
  • Blog
  • Podcast
  • Careers
  • Contact
  • Home
  • Services
    • Patent Portfolio Strategy
    • Patent Search and Analysis
  • About
    • Team
      • Ashley Sloat, Ph.D.
      • Kristen J. Hansen, M.S.
      • Ty F. Davis
      • Alisa McCarthy
      • Josh Sloat
      • Sophia Hsin-Jung Li, Ph.D.
      • David Jackrel, Ph.D.
    • Testimonials
    • Work Examples
  • Blog
  • Podcast
  • Careers
  • Contact

​​Patently Strategic Musings

Patent Agent vs. Patent Attorney

3/13/2017

13 Comments

 
By: Ashley Sloat, Ph.D., President of Aurora Consulting LLC
Picture
So you have a great idea and you want to protect it with a patent. Your gut reaction is to seek out a patent attorney, but then wait - you also hear about another type of patent practitioner - a patent agent. You ask yourself “what is the difference?” and “why would I choose one over the other?” Well, at long last, we are here to answer your questions.

First, both patent agents and attorneys have taken and passed the patent bar, which is a test that measures knowledge of the laws and rules in the Manual of Patent Examining Procedures (MPEP). However, only patent attorneys have completed law school and very likely taken a state bar exam.

Thus, if you need any of the following services, a patent agent or attorney suffices.

  • Drafting: patent application (including international (PCT) or country specific patent applications); response to United States Patent and Trademark (USPTO) correspondence, response to office action; response related to appeals
  • Filing: patent application (including international or country specific patent applications); response to (USPTO) correspondence, response to office action; response related to appeals; general application paperwork (e.g., declarations, assignments, etc.)
  • In General: drafting and/or filing any patent-related USPTO response or correspondence

In fact, many law firms employ patent agents behind the scenes or client-facing patent agents to perform many of these services.

Outside of USPTO-related drafting and correspondences, patent agents can support due diligence efforts, perform prior art searches, communicate with foreign associates, and support foreign associates in responding to correspondences received from other countries, just like attorneys. However, formal opinions related to due diligence and freedom-to-operate need to be authored by an attorney.

Lastly, there is the issue of money. In general, due in large part to the overhead that comes with law firms, patent attorneys will be more expensive as compared to patent agents.

In sum, the following table should help streamline your decision making process.
Value
Patent Agent
Patent Attorney
Patent Applications
X
X
Responding to USPTO correspondences
X
X
Prior Art Searches
X
X
Due Diligence
Supportive Role
X
Freedom-To-Operate
Supportive Role
X
Correspondence with foreign associates
X
X
Budget conscious
X
Can Be
Regardless of the patent practitioner you choose - patent agent or attorney - you should always ask yourself the following questions:

  • How well does the patent practitioner stay abreast of new case law related to patents?
  • Does the patent practitioner have experience in your technology area or at least demonstrated ability to quickly learn and describe less familiar technologies?
  • Does the patent practitioner’s rates meet your budgetary needs?
  • Does the patent practitioner seem passionate about his/her career path (people who love their career will typically strive to exceed expectations)?

An excellent or even good patent practitioner, whether she has the title of agent or attorney, will know relevant and recent updates in case law, be able to learn new or less familiar technologies quickly, and work to meet your budgetary constraints. At Aurora, we are very passionate about what we do and take pride in our answers to these questions. Our clients resoundingly agree.
13 Comments
Marcus link
8/23/2017 05:48:17 pm

Thank you for mentioning how you should ask yourself if the patent attorney you want to hire has experience with your type of technology. It makes sense to think that someone that is familiar with the process needed to create a patent in the industry you work in can help the process be easier and faster. I can see how anyone looking into this would want to make sure they do some research and read online reviews to make sure the attorney they choose has a good reputation and has received the proper training to make your patent process bearable.

Reply
Ashley Sloat
1/18/2018 10:34:19 am

Hi Marcus - Glad we were able to shed some light on the process. If there any other topics you would like to see, please let us know! Similarly, if you would like to talk more specifically about a technology on which you are working, we'd be happy to discuss.

Reply
Kayla link
1/17/2018 08:02:43 pm

Thanks for discussing the difference between a patent agent and lawyer. My brother wants to patent his invention before mass production. My uncle suggested having a registered patent agent and shared this article with him.

Reply
Ashley Sloat
1/18/2018 10:35:35 am

Hi Kayla - Glad to hear that this post is getting some traction. I think it is an important point, but often misunderstood nuance. If your brother would like to talk to us in a free consultation, we'd love to hear about what he is working on!

Reply
Millie Hue link
4/5/2018 08:44:48 pm

I love how you mentioned that no matter how many exams a patent practitioner passed, if they are not updated with the changes or the new laws regarding patenting, then they are no good at all. My professor is working on something right now, and I think his concept is really good. I might advise him about these tips if ever he decides on getting an attorney to patent his work. Thanks for the information!

Reply
Gary Puntman link
6/21/2018 10:54:24 am

It's good to know that only patent attorneys have completed law school. It seems like this is important for more serious issues you might come across. You should take a look at what you need help with exactly and then choose either an agent or attorney based on that.

Reply
Amanda Curry link
11/9/2018 01:14:56 pm

Thank you, after reading this article I realize how important it is to have a patent attorney.

Reply
Angela Waterford link
5/8/2019 08:08:20 am

My brother has a great idea about biotechnology and wants to protect it with a patent. I think that a patent attorney from a good law firm can help him out a lot because they can give him opinions on due diligence. Thanks for reminding me that he should still stick with a patent professional that will fit his budgetary needs so I'll be sure to tell him that.

Reply
megan alder link
10/5/2020 06:31:58 am

It's interesting to know what tasks do lawyers do in difference to patent agents. My husband and I have been thinking about patenting our project once it's done, and we are looking for advice to do it. I will make sure I let my husband know that from my point of view a patent lawyer will be the best option so we get the whole package, and we'll start looking for one.

Reply
Tex Hooper link
10/14/2021 03:07:16 pm

I like your attorney tips. I need a lawyer. I just got a DUI.

Reply
rachel frampton link
10/20/2021 11:55:00 pm

If I were to launch a biotech product, I would make sure to hire a lawyer that will have the said product patented so it won't be stolen. Thank you for sharing here as well the importance of settings a realistic budget. Aside from this, you are also right that it would be an excellent idea to compare the rates first.

Reply
Ashley Sloat link
10/21/2021 06:51:41 am

Thanks for commenting, Rachel! We have very talented agents on staff here at Aurora that could handle your biotechnology needs should you decide to move forward. We tend to be more responsive and integrated into your team than your typical attorney, which usually individual inventors/small companies need.

Reply
Jeff Carbine link
3/29/2022 07:51:19 pm

It really helped me when you said that both patent agents and attorneys have passed the patent bar, which is an examination that assesses legal and procedural competence. I have a friend that is a graphic artist and he designs logos and other graphic materials. He asked me if I know somebody who can assist him with the copyright of his works. This is a good post for him in looking for a patent service in his area.

Reply



Leave a Reply.

    Ashley Sloat, Ph.D.

    Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey.

    Archives

    January 2023
    December 2022
    November 2022
    October 2022
    September 2022
    August 2022
    July 2022
    June 2022
    May 2022
    April 2022
    March 2022
    February 2022
    December 2021
    November 2021
    October 2021
    September 2021
    August 2021
    July 2021
    June 2021
    May 2021
    April 2021
    March 2021
    February 2021
    January 2021
    October 2020
    September 2020
    August 2020
    June 2020
    May 2020
    April 2020
    March 2020
    January 2020
    March 2018
    February 2018
    January 2018
    December 2017
    November 2017
    October 2017
    September 2017
    August 2017
    July 2017
    June 2017
    May 2017
    April 2017
    March 2017
    February 2017

    Categories

    All

    RSS Feed

AURORA

Portfolio Strategy Services
Patent Search Services
Contact
​
Events
Testimonials
Disclaimer
​Careers
Podcast
​
Newsletter
​RISE Award
​
Resources

TEAM

Ashley Sloat, Ph.D.
Kristen J. Hansen, M.S.
​Ty F. Davis
​Alisa McCarthy
Josh Sloat
​Sophia Hsin-Jung Li, Ph.D.
Aurora Consulting
© Copyright 2013-2021  |  Aurora Consulting LLC ​​