Patent Lawyers vs. Patent Agents

A lof of people ask me if I’m a patent lawyer. No, I’m a patent agent, and there is a significant difference, but some areas of overlap.

Both patent lawyers and patent agents can prepare and prosecute patents before the United States Patent and Trademark Office (PTO). Both have become licensed to do so by passing the PTO’s own bar exam. The area of patent law is so different from other aspects of law, with its own unique codes and procedures, that it has its own bar exam supervised by the Federal Government. People with a technical degree or technical experience can take the bar exam and become patent agents or, if they already have a law degree, they can become patent lawyers (patent attorneys).

A patent agent can only practice patent law before the PTO. When it comes to other aspects of the law, such as preparing an assignment of a patent, suing someone for infringing, or dealing with patent law before a court, patent agents are powerless. These matters require a qualified attorney.

Patent agents are often hired to assist attorneys or corporations in drafting patents or in supporting patent work. In my case, I was already employed in research and engineering, pursuing patents and patent strategy, when I saw a need to expand my skills. I began studying for the US PTO’s patent bar exam that I took and passed in 1996, with the help of an excellent patent bar exam course offered by Patent Resources Group. I completed additional requirements and became registered as an official US patent agent in 2007, the first employee of my company to become a patent agent, as far as I know. Doing so has opened many doors to me and has helped me be more effective in my research work and in my work to guide and develop patent strategy.

If you have a technical background and an interest in patents, I would encourage you to consider becoming a patent agent. And if you’re interested in a law degree, take the extra time to also become a patent attorney. There is great demand for skills in patent law, and it’s an exciting area to pursue.

By | 2016-10-24T05:58:02+00:00 October 27th, 2006|Categories: Career, Patent law|3 Comments

About the Author:

Jeff Lindsay, the Sheik of Shake Well, is an ordinary guy posing as another ordinary guy formerly from Appleton, Wisconsin, now living in Shanghai, China.

3 Comments

  1. acmelle June 5, 2007 at 2:31 pm

    I’m starting a PhD program in Neuroscience in August, and I came across the patent field after researching alternative careers for PhDs. I now would like to become a patent attorney in biotechnology, and I’m contemplating just going to law school instead of getting a PhD.

    From your experience do employers prefer PhDs over Bachelor prepared patent agents and attorneys?

  2. jeff June 5, 2007 at 5:48 pm

    I would say that most patent agents are hired to crank out patents or do other patent work at lower cost than attorneys. The Ph.D. makes you more expensive and may not help if you are marketing yourself as a patent agent. On the other hand, for R&D or for management where a Ph.D. is helpful, the patent agent aspect can be sold as an added benefit to help you be more effective in developing IP or guiding strategy. I have a Ph.D. and felt that later becoming a patent agent helped me a lot in terms of generating IP and helping to guide IP strategy.

  3. jeff June 5, 2007 at 5:51 pm

    More:

    It really depends on how your market yourself and what you want to do.

    You could just go to law school and forget the Ph.D., if you would rather write patents for others than doing the inventing yourself or leading R&D. Me, I’ve got invent!

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