Patent Agent vs. Patent Attorney: What Is the Difference?

Sources: the sections below; 37 C.F.R. § 11.6.

Registration entitles either to practice before the USPTO in patent matters (37 C.F.R. § 11.5(a)). That includes preparing and prosecuting applications, advising a client before filing, drafting the specification and claims, replying to office actions, and drafting papers for reexaminations, petitions, appeals and other proceedings before the Patent Trial and Appeal Board (§ 11.5(b)).

At the PTAB, lead counsel in a trial (inter partes review, post-grant review) must be a registered practitioner, agent or attorney (§ 42.10(a)). The USPTO's register lists both, and applicants may appoint either.

Sources: 37 C.F.R. § 11.5, § 42.10; Finding a patent practitioner.

• Courts. The USPTO says patent agents cannot argue patent cases in courts or perform services that local jurisdictions consider the practice of law; for example, an agent cannot draw up an assignment or license where the state treats drafting contracts as practicing law.
• Trademarks. Only attorneys may represent others before the USPTO in trademark matters; registration as a patent practitioner does not by itself allow it (§ 11.14).
• Beyond the USPTO. An agent's registration covers practice before the USPTO in patent matters only (§ 11.5(a)). Opinions on infringement, or on the validity of another party's patent for litigation or a deal, fall outside the patent-agent privilege (see below) and may be the practice of law under state rules.

Sources: USPTO, Applying for patents: attorneys and agents; 37 C.F.R. § 11.5, § 11.14; In re Queen's University.

A state cannot stop a registered agent from doing the work the USPTO authorizes. In Sperry v. Florida ex rel. Florida Bar, 373 U.S. 379 (1963), the Supreme Court held that Florida could not enjoin a non-lawyer registered agent from tasks incident to preparing and prosecuting patent applications, while the state keeps control of the practice of law otherwise.

Communications with a patent agent can be privileged. The Federal Circuit recognized a patent-agent privilege in In re Queen's University at Kingston (2016) for communications reasonably necessary and incident to prosecuting patents before the USPTO, but not, for example, an agent's opinion on the validity or infringement of another party's patent. In PTAB proceedings, communications with a USPTO patent practitioner within the scope of their authority get the same privilege as communications with an attorney (37 C.F.R. § 42.57).

Sources: Sperry v. Florida, 373 U.S. 379 (1963); In re Queen's University at Kingston, No. 2015-145 (Fed. Cir. 2016); 37 C.F.R. § 42.57.

An agent who is admitted to a state bar may ask the USPTO to register them as an attorney instead (37 C.F.R. § 11.7(l)); the path is in how to become a patent attorney.

Sources: 37 C.F.R. § 11.7(l); 37 C.F.R. § 11.1.

• Agent suits engineers and scientists who want to write and prosecute patents without going to law school. See open patent agent jobs.
• Attorney adds court work and trademark practice to everything an agent can do. Compare what agent and attorney postings offer on our salary page.
• Either way, the first step is the same: confirm your degree qualifies (patent bar requirements) and pass the patent bar.

Sources: USPTO, Applying for patents: attorneys and agents; 37 C.F.R. § 11.14. Which path fits you is our own view.