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Patent Agent? I thought I need a patent attorney?

I am a patent agent, not a patent attorney. What’s the difference?

A patent agent is someone who has passed the examination to practice before the USPTO (“the patent bar exam”), but who is not an attorney. That exam is the same for everyone. A state-licensed attorney, upon passing the patent bar exam, becomes a patent attorney. An engineer or scientist who passes the same exam and who is not an attorney becomes a patent agent. As far as the patent office is concerned they have the same rights and responsibilities to represent clients before the USPTO.

Why did I become a patent agent and not an attorney?  Quite simple: I did not spend the time and money to go to law school. I want to engineering school and to business school. I have a Master’s Degree in Electrical Engineering and a Master’s Degree in Business Administration. I have worked as an engineer and later manager for 20 years in the auto industry. I have managed teams with up to 100 engineers. I have been part of patent litigation, when my company sued a competitor. I worked with litigators and expert witnesses in ITC proceedings, in federal court, and overseas. I was a member of my company’s patent review committee. I decided which inventions to pursue and which applications to abandon. But I did not go to law school.

I designed products. I wrote engineering specification. I taught young engineers how to communicate technical information most effectively. I made engineering tradeoff decisions. I felt the pressure of getting product out the door. I like precision. And I like writing things down. Writing patent applications comes natural to me: Explaining, precisely and concisely, how a new invention works. And then putting the entire invention into a single sentence – the claim. Writing a patent application is one of the most demanding legal documents to write.

I like the thrill that years from now highly-paid attorneys will try to poke holes into the claim I am drafting today. I may spend a week drafting an application today, and an entire team of attorneys and experts may spend hundreds of hours trying to get their client off the hook for infringing the very claim I am writing. I have to outsmart a whole group of people who will use every word I write against me years from now. I find it the ultimate challenge in practicing law – and that most demanding form a legal advice I am providing my clients regarding their patent applications.

So I was a little surprised when I read a post online by a young patent attorney who has a very different view. She discusses the role of patent attorneys and patent agents and writes: “The bottom line is that patent attorneys are able to provide legal advice, but patent agents are not.” Well, that is just not correct. Patent Agents do provide legal advice related to the preparation and filing of patent applications – the practice of patent law before the USPTO. What Patent Agents don’t do is provide legal advice beyond that. A patent agent won’t fight a DUI or help in a divorce. You’ll need an attorney for that. Preferably someone who has dealt with a DUI or a divorce before.

And the young attorney concludes “If your company just needs someone to prepare and file patent applications, you may be able to get away with working only with a patent agent” but “if your company needs someone to draft […] non-disclosure agreements […] you need to hire a patent prosecution attorney.”  Yeah right: If its just about drafting the most complex legal paperwork there is an agent can do it, but if you need a boilerplate NDA hire a patent prosecution attorney.  It’s almost funny. But it is also wrong: Any attorney is authorized to draft an NDA, not just patent attorney. Patent Agents also can’t represent you in court in a patent infringement suit. If that case you need a patent litigator, who is almost certainly not the same person as the one drafting patent applications. In fact, some of the very best patent litigators are not patent attorneys. They don’t have to be, because they practice in court, not before the USPTO.

What is really comes down to is this: A patent application is a very difficult document to draft. If you have invented something, look for a patent practitioner (agent or attorney) who understands your invention. Someone who can recognize a good idea based on her own experience. Someone who can relate to you, the inventor. Someone who has the technical depth to understand the invention. Look for someone who likes your technology and your work. And stay away from someone who will sell you on her NDA drafting skills when you need a patent.