When it comes to legal rights, in pertinent part, property rights, there are licensed professionals who offer help in exercising or protecting your rights: lawyers. For patents there are patent practitioners (agent or attorney) to deal with these special rights. This article is about patent agent legal services.
A patent agent is a professional who is licensed to practice before the United States Patent and Trademark Office (USPTO). Their main role is to assist inventors and businesses in securing patents for their inventions. Patent agents offer a variety of legal services related to patents, including conducting patentability searches, drafting and filing patent applications, and prosecuting patent applications before the USPTO.
Patent agents also provide advice on patent portfolio management, patent infringement, and patent licensing. Patent agents have technical backgrounds, typically in engineering or science, which allows them to better understand the inventions they are working with and to effectively communicate with patent examiners. Overall, patent agents play a crucial role in helping inventors and businesses protect their intellectual property rights through the patent application process.
Patents are Intellectual Property and Need a Patent Practitioner – not an Attorney
Patents are a kind of property, specifically intellectual property. A patent is the legal right claimed under Article I, Section 8, Clause 8 of the U.S. Constitution. A patent is a powerful property right, it is the legal right to prevent others from making, using, or selling your invention for the term of the patent. Property rights are your rights to enforce. You can do this yourself; however, usually it is far more effective and efficient to hire a professional as patent law is complex. An improperly filed and/or drafted patent application may prevent you from asserting your rights against potential infringers. Patent agent legal services can help prevent patent application errors.
The professionals that deal with personal property, real property, and intellectual property are lawyers. There is, however, one exception. Among the bundle of intellectual property types are patents. The United States Patent and Trademark Office (USPTO) issues patents and registers professionals to practice before the office. Being a lawyer does not permit them to practice before the USPTO. Registration requires a separate application and examination process. A lawyer (attorney) needs to take an additional “bar” exam to be allowed to communicate with the USPTO (“prosecute”) on a client’s behalf regarding a patent. Read more about the patent bar.
Patent Legal Services Require a Patent Agent or Patent Attorney
Regarding patent agent legal services, only those licensed to practice before the USPTO can prosecute a patent. Only patent practitioners (patent agents and patent attorneys) can prosecute patents; non-patent attorneys cannot. Whether a patent practitioner is a member in good standing of some state’s legal bar determines if they are an agent or an attorney. In other words, if they are a lawyer. Thus, while patent agents prosecute only patents, patent attorneys can also prosecute other legal rights.
Patent legal services such as questioning patent validity can be performed by a patent agent. But, for infringement an attorney is needed. Read about patent litigation.
Legal Advice on Patenting Comes from Patent Agents or Patent Attorneys
Generally, regarding patent agent legal services, patent agents are not authorized or licensed to give legal advice. With that said, the U.S. Supreme Court has held that patent agent activities incident to the preparation and prosecution of patent applications, even beyond the representation before the USPTO, like advising on potential patentability of an invention is permitted.
- Patent agents can give legal advice during the drafting and prosecution of patent applications, however, not open ended. The usual forms of this legal advice are opinions on prior art, novelty, patentability, patent validity, and infringement.
- Patent agents can provide guidance on the overall patent strategy, including portfolio management, licensing, and enforcement.
- Patent agents can offer advice on patent infringement, validity, and freedom-to-operate opinions.
- Patent agents can help with ownership and licensing by clearing up legal misconceptions about patents and recording assignments.
- Patent agents can also handle reexamination proceedings before the USPTO if the prior art shows that the claims should be narrowed or cancelled.
As a licensed professional who is trained in patent law, a patent agent is able to provide legal advice on patenting. Patent agents have specialized knowledge and experience in patent law and are familiar with the patent application process. They can assist inventors and businesses in determining whether their invention is patentable and can conduct patent searches to ensure that the invention is unique and does not infringe on existing patents. Patent agents can also help draft and file patent applications and prosecute them before the USPTO.
While patent agents are not attorneys and cannot provide legal advice outside of patent law, their knowledge and expertise in patent law make them a valuable resource for inventors and businesses looking to protect their intellectual property. Overall, the legal advice on patenting provided by a patent agent can be crucial in securing and protecting the intellectual property rights of inventors and businesses.
For Things like Infringement Lawsuits, an Attorney is Required
However, patent agent legal services have limits. For some patent related matters like lawsuits for infringement, assignments, or employer/employee rights, you should discuss these things with an attorney who specializes in that area. Your best attorney choice may not be a patent attorney. Patent agents maintain relationships with attorneys they trust should you need to engage an attorney and need a referral for non patent agent legal services. Read more in our article “What does infringement mean?”
Communication with a Patent Agent is Confidential (i.e. Covered by Client Controlled Privilege)
Regarding patent agent legal services, the advice and interaction with a patent agent is covered by the same confidentiality standard as an attorney. Client communication is held in confidence and is protected under privilege. Patent agents hold the same basic professional liability insurance as that held by attorneys, just limited to the practice of patent prosecution.
The only difference in the balance of patent agent vs patent attorney is the law license. (Maybe also the patent agent salary is lower.) There is more information available on the difference between a patent attorney and agent on our patent attorney page. If you are asking “Do I need a patent attorney to file a patent” the answer depends on the circumstances, but technically no. You can file your own patent application. (If you are, be sure to search for patent pro bono programs.)
Gregory D Carson, USPTO Registered Patent Practitioner providing patent attorney legal services. – verify Greg’s patent license at the USPTO. (Reg. No. 77847)
Inventor Tip: Only patent practitioners, either patent agents or patent attorneys, can represent inventions before the USPTO. Please remember to be careful, and check the license status of any patent professional that you hire. You can check our patent attorneys license below to find the locater on the USPTO website.