By: Ashley Sloat, Ph.D., President of Aurora Consulting LLC
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.
Responding to USPTO correspondences
Prior Art Searches
Correspondence with foreign associates
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.