Understanding the difference: Patent agent vs. patent attorney

Georgina Horváth
April 30, 2024
Reading time:
3 minutes

Patent agents and patent attorneys play a crucial role in the world of innovation and intellectual property protection. These highly skilled professionals use their strong backgrounds in the legal field to help inventors navigate the legal complexities of patenting their inventions. To overcome these challenges, it is often necessary to seek help from professionals such as patent agents and patent attorneys. 

The roles of patent agents and attorneys vary between countries. Our article aims to explain the differences according to U.S. regulations, helping you decide who exactly to contact for patent-related services.

Patent agents

A patent agent’s primary role is to prepare and file patent applications with the United States Patent and Trademark Office (USPTO) and to act as intermediaries, handling all necessary communications with the USPTO to ensure that your application process moves forward efficiently.

Other main responsibilities of patent agents usually include a thorough research to ensure that the invention doesn't infringe on existing patents, they can provide advice on which aspects of the invention to patent and the best type of patent application to file. It's often their responsibility to respond to requests for further information and make necessary amendments. And they can help with further negotiations with the USPTO to overcome rejections and get the broadest protection for the invention. 

The mandatory requirement to become a patent agent is to have a Bachelor's degree in any scientific or technical field from an accredited university, but they do not have to have a law degree. Furthermore, in the U.S., it is obligatory to pass the USPTO registration examination, commonly known as the “Patent Bar”.

Pros of hiring patent agents:
  • Patent agents offer a specialized focus on the patent application process, making them adept at navigating the technicalities of USPTO requirements.
  • They often present a more cost-effective solution for inventors primarily concerned with the application stage, avoiding the higher fees associated with patent attorneys.
  • Their technical skills should ensure an understanding of the invention and help facilitate a smoother application process.
Cons of hiring patent agents:
  • The role of patent agents is limited to dealing with the USPTO. They cannot give legal advice on patent infringement, negotiate patent agreements, or represent clients in court.
  • Inventors may need to hire additional legal services for comprehensive patent maintenance and enforcement strategies, potentially increasing overall costs.

Patent attorneys

Patent attorneys and agents share many similarities, including the ability to prepare, execute, and file patent applications with the USPTO. However, the key difference lies in their legal capacity. Patent attorneys have a broader scope of legal practice compared to patent agents. They are lawyers who review and understand the technology and explain it to judges, juries, and Patent Office examiners. Generally, they can prepare and negotiate patent applications in the United States and internationally, and they can represent solo inventors, large corporations, or anyone in between. 

Patent attorneys must have a law degree and provide legal services beyond patent prosecution. Further requirements for practicing as a patent attorney depend on several regulations around the world. For example, in the EPO, attorneys are required to pass the European Qualifying Examination, and in the U.S., they have to pass the Patent Bar similarly to patent agents. 

Pros of working with patent attorneys:
  • Patent attorneys handle both patent prosecution and the legal complexities of patent law, including patent licensing, and transfers
  • Their legal training provides them with the knowledge to develop patent strategies that protect against infringement and leverage patents for business advantage.
  • Patent attorneys defend patent holders effectively in both court and negotiation settings.
  • All attorneys are under an obligation to respect attorney-client privilege in all matters in which they have professional responsibility.
Cons of working with patent attorneys:
  • The extensive services offered by patent attorneys are reflected in their fees, making them a more expensive option compared to patent agents.
  • For inventors focused exclusively on the patent application, the broad range of skills of a patent attorney may be beyond what is necessary, potentially leading to a lack of utilization of services.

Making the informed choice

In summary, all patent attorneys can be agents but not all agents can be attorneys. A patent attorney can provide help in the same aspects as a patent agent, but a patent agent is limited in legal service and knowledge.  

The choice between a patent agent and a patent attorney depends on your specific patent needs. For straightforward patent applications, a patent agent may be your advocate, offering expert advice at a lower cost. However, for comprehensive strategic advice, a patent attorney will provide extensive support to ensure that your patents are not only filed but also fully utilized and protected.

In the next step, when it comes to maintaining a patent after it has been granted, it’s worth discovering different IP management solutions. Usually, patent attorneys outsource the IP renewal process to IP renewal providers, so they utilize a third-party in their processes, making the patent maintenance cost even higher. 

Handling your patent renewals directly with an IP management software will not only save you significant costs, but will streamline the process of IP renewals with automated steps, ensuring accuracy and compliance in a transparent and cost-effective way.

With the PatentRenewal.com software, you can manage your IP without worrying about deadlines and administration, enabling you to focus on creating new ideas and growing your business.

If you are an IP owner yourself, and want to achieve 30-50% savings on your patent renewal costs with an IP management software, book a demo with one of our experts or request a free price comparison.